WIPO – update for Hague design applications designating Japan

In this respect, previously for Hague design applications designating Japan, in instances where the application either contained a priority claim, or was seeking to rely on the novelty grace period in Japan, it was necessary for the priority documents, and/or the accompanying documents explaining why the novelty grace period was applicable, to be submitted directly to the Japanese Patent Office within three months (priority document) or 30 days (for documents relating to the novelty grace period) from the date of publication of the international registration. In other words, it was necessary for these documents to be submitted outside of the confines of the Hague design filing process, which thus often necessitated appointing a local agent in Japan to submit these documents on the applicant’s behalf to the Japanese Patent Office. This therefore greatly reduced the effectiveness of the Hague design registration system in these instances, since not needing to appoint a local agent in each designated territory was one of the key advantages which the Hague design system otherwise sought to provide.

Conscious of the above, and following this welcome change in procedure for Japan designations in a Hague design application moving forward, priority documents, and/or documents justifying any application of the novelty grace period in Japan for a given Hague design application, may now be submitted directly to WIPO, via the eHague online filing system, and as part of the initial design application process. It is to be noted however, at this stage, that any post-filing of these documents (that is, after the Hague design application has been initially submitted) via WIPO does not appear possible. Thus in these latter instances, appointing a local agent in Japan to submit these documents to the Japanese Patent Office may still be necessary.

In any case however, this change in procedure now better aligns any Japan designations from a Hague design application with the existing procedures for South Korea designations, where submitting documents to WIPO relating to a priority claim, or relating to a novelty grace period, for a South Korea designation are already in place. Indeed, in case a Hague design application now designates both Japan and South Korea, a single document for a given priority claim, or for a given request to use a novelty grace period, can now be used to cover both the Japanese and South Korean designations, if required.

For completeness as well, in case a corresponding priority design registration application is filed with a design registry which is a part of the WIPO DAS scheme (such as the EUIPO, or the USPTO), the relevant DAS code for the priority document can be submitted in support of the priority claim for any Japanese or South Korean designation from a Hague design application, so long as the DAS code is submitted to WIPO as part of the initial filing of the Hague design application (that is, not after the initial filing).