[Patent attorney explains] What are the exceptions to the loss of novelty of a design? Covers application procedures and 2020 revisions

Patent offices often receive such inquiries from corporate representatives and creators.

In principle, a design can only be registered if it is a new design that is not yet known to the world. But there's no need to rush. Japan's Design Law has a powerful remedy called the ``Lack of Novelty Exception'', which allows a design to be registered even after publication if certain requirements are met and the correct procedures are followed.

In this article, for those who are considering registering a design, an expert patent attorney will provide an easy-to-understand explanation of the outline of the exceptions to loss of novelty, the changes due to the latest legal amendments, the specific flow of procedures, and the "serious risks" that you should definitely be aware of.

1. The major principle of design registration: "Novelty" and the risks of publication

In order to obtain design rights and protect your company's excellent designs from imitation, it is necessary to pass a strict examination by the Japan Patent Office. One of the most important requirements in the examination is "Novelty (Article 3, Paragraph 1 of the Design Act)".

Novelty means that the design is "objectively new and unknown to the world" at the time of filing. If a design has already been published before the application is filed and has become known to everyone (publicly known state), it is considered no longer new and, in principle, design registration will not be granted.

If the following acts are performed before the design application is completed, the design will be deemed to have "lost novelty" due to one's own actions.

2. What is the remedy "exception to loss of novelty of design"?

However, if we apply the principle of ``Publish it once and you're out'' too strictly, it will hinder modern business such as test marketing and seeing customer reactions at exhibitions.

Therefore, the Design Act provides a remedy called "exceptional provisions for loss of novelty (Article 4, Paragraph 2 of the Design Act)." This is a system in which, if certain conditions are met and the prescribed procedures are followed, the fact that the application was published before the application will be treated as something that did not occur and the examination will proceed.

"Absolute requirements" for application

Requirements ①

Apply within "within one year" from the publication date

You must complete your design registration application with the Japan Patent Office within ``one year'' from the date the design was first made public to the world. If even one day has passed, you will not be able to apply.

Requirements ②

Disclosure caused by the rights holder's own actions

The act of publication is by the person who has the right to receive the design registration (designer or applicant company), or the act of publication is against the will of the person (e.g., leakage by an employee).

3. [Important] Enforced in 2024! Significant relaxation of procedural requirements

The biggest benefit for everyone who is looking to register a design from now on is the legal amendment that came into effect on January 1, 2024. This has significantly eased procedural requirements.

❌ Issue before revision: Proof of all public facts is required

Under the previous system (applications until December 31, 2020), there was a strict rule that if you had performed multiple public acts before filing, you had to submit a certificate for each of the ``all public acts''.

Example: When published 3 times

① January 1st: Press release distribution → Certificate required
② January 10th: Posted on company website → Certificate required
③ February 1st: Exhibition at an exhibition → Certificate required

⚠️ If even one proof is omitted, there is a risk of rejection

✅ Benefits of the revision: Completed with proof of the "earliest day"

From applications filed on or after January 1, 2020,Article 4, Paragraph 3 of the Design Act will be newly established,If you submit a certificate only for the ``publication act that took place on the earliest day (first date),'' you can now omit submitting a certificate entirely for subsequent publications of the same or similar designs.

For the same example

① January 1st: Press release distribution → Submit a certificate (this is all you need)
② January 10th: Post on your company's website → Certificate Not required
③ February 1st: Exhibition at the exhibition → Certificate not required

💡 Effect:The effort required for procedures has been dramatically reduced, and the risk of losing design rights due to minor omissions in certification has also been significantly reduced.

4. Specific flow of exception procedure and how to write a certificate

Even though the procedures have been relaxed, strict procedures stipulated by law must be completed within the specified period.

STEP 1

Complaint to the Patent Office at the time of filing (special mention in the application)

When filing an application for design registration, clearly indicate in the "Application for Design Registration (Application)" that you "want the exceptions to apply."

[Example of application form]

[Special notes] Application for design registration applying the provisions of Article 4, Paragraph 2 of the Design Act

⚠️ Note:This request must be made "at the same time as the application," and additions later are generally not allowed.

STEP 2

Submit a "certificate" within 30 days from the application date

Submit a document objectively proving the fact of publication (certificate of exception application) to the Commissioner of the Patent Office within 30 days from the application completion date.

📋 Items to be included in the certificate

Description items	Description
Publisher	Corporate or individual name
Publishing date	Earliest release date (specified based on the 2020 revision)
Publication location/medium	Exhibition name, website URL, etc.
Contents of published design	Attach objective evidence (see table below)

📎 Evidence for each disclosure mode

Publication style	Recommended evidence
WEB site/SNS	Screenshot that includes posting date/time, URL, and image
Crowdfunding	Screen capture showing the project start date and content
Exhibition/Trade Fair	Official brochure, exhibitor list, exhibit photos (with date and time)
Catalog Press Release	Copy of page with publication date printed, delivery management screen

5.[Be careful] Three serious risks hidden in exception provisions

Although the procedures have been relaxed, the exception provisions are still ``exceptional remedies''. Postponing the application and publishing your design carries significant risks.

⚠️ Risk 1: You can't beat a third party's "first-to-last application"

Japan's design system is "first come first served". If you publish your design and a third party copies it and files a design application with the patent office before you do, your application will be rejected.

Exception provisions do not serve as a "barrier to prevent someone else from filing an application first."

⚠️ Risk 2: If a third party independently develops and releases it, relief is not applicable

If a third party happens to independently create the exact same design and publish it first before filing, the exception is only a remedy for "your own publishing act", so independent publication by a third party will not be relieved and will be rejected as lacking novelty.

⚠️ Risk 3: Design registration overseas (global expansion) will become extremely difficult

If you are thinking of exporting or selling to the sea in the future, it is dangerous to rely on Japan's exceptions easily. The requirements for the application of the rules varyquite from country to country.

Example: China etc.

Requirements are extremely strict, and "publication on your own website or SNS" will not be remedied at all. Once it is released in Japan, it is highly likely that it will be impossible to acquire the rights in the huge market.

If you are considering overseas expansion

"Finish the application first before publishing in any country"

This is the golden rule of intellectual property strategy

6. Summary: For reliable design applications, contact a patent attorney

The basic principle for registering a design is to file an application with the patent office before disclosing it to anyone. However, even if you are forced to disclose your design due to business reasons, there is still a path to obtaining a patent if you properly utilize the "exceptions to loss of novelty."

📌 Summary of main points of procedure

Within 1 year

Application deadline from publication date

Same time as application

Declaration of intention on application form

Within 30 days

Certificate submission deadline

Only the earliest day

Certificate target
(revised in 2020)

However, highly specialized knowledge and practical experience are essential, such as ``identifying which act of publication legally falls under the ``earliest date'''', ``collecting perfect evidence and creating logical certificates that will satisfy the patent office'', and ``managing strict deadline schedules''.

Do you have any of these problems?

• “I have already published images of my new product on SNS, but is there any way to protect my product by registering a design?”
• "The exhibition starts next week, so I would like some advice on how to protect my intellectual property as soon as possible."

Before you give up and think, ``It's already too late because it's already been published,'' please first consult a patent attorney who is an expert in design.

Start with a free consultation

At our firm, we fully comply with the law revisions that came into effect in 2020, and after carefully listening to our customers' business situations, we will propose the safest and surest path to acquiring rights. You can leave everything to our professionals, from the creation of complex certificates to representation at the patent office and strategic advice for future overseas expansion.

We protect your business's most valuable asset: great design.

AUTHOR

Takefumi SUGIURA （杉浦 健文）

EVORIX Intellectual Property Law Firm　Managing Patent Attorney

Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).

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