"I was so happy to complete the new product design that I published it on my company's Instagram before filing the design application..."
"After we started raising funds through crowdfunding, we wanted to obtain the design rights"
"I announced a new product at an exhibition, but will I have time to register the design now?"
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.
📢 Latest information
Due to the legal amendments that took effect on January 1, 2024,
procedural requirements have been significantly relaxed
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.
📑 Table of contents of this article
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.
| Publication mode | Specific example |
|---|---|
| Internet/SNS publication | Post images and videos on your own website, EC site, Instagram, X (formerly Twitter), etc. |
| Crowdfunding | Publishing the project on Makuake etc. |
| Real presentation | Physical display at exhibitions and trade shows |
| Media/Printed Materials | Press release distribution, catalog distribution, etc. |
⚠️ Principle:The basic principle of design law is that even if you have a completely original design developed in-house, if it is made public before the application is filed, it will be rejected even if the application is filed.
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.
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).
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.
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
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.
Even though the procedures have been relaxed, strict procedures stipulated by law must be completed within the specified period.
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.
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.
| 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) |
| 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 |
Although the procedures have been relaxed, the exception provisions are still ``exceptional remedies''. Postponing the application and publishing your design carries significant risks.
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."
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.
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
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?
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).