How to efficiently protect intellectual property by utilizing the accelerated examination/accelerated trial system for design registration applications

Design rights are essential for many companies as a means of protecting important intellectual property such as product designs. However, the examination of a typical design registration application may take time, and it may not be possible to keep up with the speed of business. For this reason, we would like to take advantage of the "accelerated examination/accelerated hearing system."

What is the accelerated examination/accelerated trial system?

The accelerated examination and hearing system provided by the Japan Patent Office allows applications that meet certain conditions to be examined and heard earlier than normal examination and hearing. This system was introduced on December 15, 1987, and is being operated to meet the social need for early protection of designs.

Applications eligible for accelerated examination

Applications eligible for accelerated examination are mainly classified into two types:

1. Implementation-related applications that require urgent rights acquisition

Those that meet all of the following conditions:

• The applicant or the licensee is implementing, or is substantially preparing to implement, the design in the application
• There is an emergency that corresponds to one of the following:
  • A third party is working the design in the application or a design similar to it without permission
  • Received a warning from a third party regarding the act of implementing the applied design
  • A third party has requested a license for the applied design

2. Foreign related applications

This is an application for design registration in which the applicant has filed an application for the design with a patent office or intergovernmental organization other than the Japan Patent Office.

Procedure for requesting accelerated examination

To request accelerated examination, the following steps are required:

1. Documents to be submitted: Submit "Explanation of circumstances regarding accelerated examination" (one copy required for each application)
2. Submitted by: Applicant
3. How to submit: online, in person at the patent office, or by mail
4. Submission time: After the date of application for design registration (after obtaining application number)
5. Fees: Free

About the early trial system

The accelerated trial system applies to appeals against decisions of refusal related to design registration applications. Similar to accelerated examination, implementation-related applications and foreign-related applications are eligible. The procedure is the same as for accelerated examination, and it is necessary to submit a ``statement of circumstances related to accelerated examination''.

Notes on accelerated examination/accelerated trial system

• Bulletin application procedures for multiple designs based on the 2019 Design Act revision (those with procedure numbers 〇〇〇〇-3〇〇〇〇) are not eligible for accelerated examination.
• Designs related to buildings and images, and designs related to interior design, which were newly subject to protection due to the revision of the Design Act in 2019, are not eligible for accelerated examination in order to ensure the quality of examination.

Effects of accelerated examination/accelerated trial

For cases that have been requested for expedited examination/trial, the examiner will promptly begin the examination, and once the examination has begun, the process will proceed without delay. In addition, applications that are subject to accelerated examination/accelerated trial will be indicated in the design gazette as "application subject to accelerated examination" or "application subject to accelerated hearing," and "early" will be indicated in the registered design table of contents.

Advantages of requesting a patent office

To apply for accelerated examination/accelerated hearing, it is necessary to prepare a "statement of circumstances." This document must include the following:

• Explanation of implementation status
• Description of the urgent situation
• Prior design search
• Description of the design in your own design registration application

These entries require specialized knowledge, and if there are any deficiencies, your application may not be accepted. By hiring a patent office, you will receive the following benefits:

1. Appropriate documentation based on expertise: A well-established patent firm will be able to prepare an appropriate statement of circumstances that meets the requirements of the patent office.
2. Implementation of prior design searches: We conduct appropriate searches of Japanese design gazettes and publicly known materials.
3. Expediting the process: An experienced firm will help you proceed with the process efficiently and help you obtain rights quickly.
4. Risk Reduction: Professional procedures reduce the risk of your offer being rejected.

Summary

If early acquisition of design rights is important for your business strategy, the accelerated examination/accelerated trial system can be a very effective tool. You should consider using this system, especially if you are in a field where competitors are active or if you need to expand overseas quickly.

By entrusting a patent office with specialized knowledge and experience, requests for accelerated examination and early hearing can be made smoothly, and design rights can be effectively obtained early. Please consult with a reliable patent office and protect your design promptly.

At our office, we support the acquisition of design rights using the accelerated examination and early trial system. Please feel free to contact us.