IP information in JP
- Restrictions of Multi-Multi Claims
- Design Act Revision 2019 July 7, 2020
- About the abolition of signatures in Japan Patent Office procedures
The Partial Revision of the enforcement regulations of the Patent Act and the Utility Model Act has been enforced on April 1, 2022. After the enforcement, it is no longer allowed to include Multi-Multi Claims (※) in the claims of patent applications and utility model registration applications.
※ Multi-Multi Claim: any dependent claim that refers to more than one other claim in the alternative ("multiple dependent claim") which depends from any other multiple dependent claim.
2. Main revisions
In patent applications and utility model registration applications filed after the enforcement date, if the claims include Multi-Multi Claims, it will be considered a violation of Article 36(6)(4) of the Patent Act (requirements for stipulating the description format of patent claims) or Article 6-2 of the Utility Model Act. Regarding Multi-Multi Claims and claims that refer to them in patent applications, requirements other than those related to delegated ministerial ordinances regarding Multi-Multi Claims will not be examined.
In response to a Notice of Reasons for Refusal for violating the requirements regarding Multi-Multi Claims, if the Multi-Multi Claims are amended properly, examination becomes necessary for the amended claims, and as a result, only the Reasons for Refusal related to the amendment that need to be notified shall constitute the Final Notice of Reasons for Refusal.
However, this provision does not apply to divisional applications that retroactively claim the filing date before the enforcement date or PCT applications whose international filing date is before the enforcement date and are transferred to Japan after the enforcement date. On the other hand, even for applications with a priority date before the enforcement date, if the filing date is after the enforcement date and claims priority rights, this provision will apply.
Regarding the international stage of PCT applications, Multi-Multi Claims will continue to be subject to international search and international preliminary examination as before.
Reference / Source:
The Act on the Partial Revision of the Design Act, promulgated on May 17, 2019, was enforced on April 1, 2020.
2. Main revisions
The main revisions are as follows. For items (1) and (2), please refer to the detailed descriptions on the next page and after.
(1) Expansion of the scope of protection
An image not recorded/displayed on an article and the exterior/interior of a building were newly defined to be within the scope of protection of the Design Act.
(2) Change in provisions in the related design system
(a) The period in which an application for a related design can be filed was extended to before the date which has elapsed 10 years from the application of the principal design.
(b) Registration will be allowed for the designs similar only to the related design.
Please refer to the attached sheet for details.
(3) Change in the duration of design rights
The expiration of the design rights will be the date on which has elapsed 25 years from the filing date.
(4) Simplification of design registration application procedure
(a) Introduction of collective application for multiple designs
(b) Elimination of the article classification table
(5) Expansion of indirect infringement acts
Subjective elements, such as “knowing that the articles and the like are used for implementing the design” is defined, so that dividing infringing articles into components and manufacturing and importing them to avoid control can be regulated.
3. Our comment
We believe that this design act revision has largely improved the convenience of the Design System. In particular, the provision for the graphic image and the change in the related design system should have such a huge impact on corporate IP strategies that if one could take advantage of the new system then it could be highly advantageous in the game.
If there is anything you do not understand about the revision, or if you have any questions regarding the use of the Design Act Revision, please feel free to contact us.
The seal and signature have become unnecessary for some of the documents submitted to the Japan Patent Office for which a seal was formerly required.
As of January 2022, it is possible to omit the seal and signature of the applicant on, for example, the power of attorney (the document proving the authority of representation) and the proving document for the procedures for exceptions to lack of novelty (Patent Act Article 30(3)).
However, a signature is necessary for procedures to which damage caused by falsifying documents is significant, such as deeds of assignment attached to notifications of change in applicant and applications for registration of transfer of rights.