Utilizing Chain of Associated Designs
Designs similar to a pre-filed design can be filed as “Associated Designs” of the first base design or other associated design under the Amended Design Law enforced in 2020. Associated designs can be filed within 10 years and last 25 years from the filing date of the first base design.
◇Exceptions to Novelty Loss
If design A is filed, publication or public sale of the similar design X does not affect the registrability of associated design B being later filed (“EXCEPTION” to novelty loss).
Problem 1: “Domino of Rejection”
Case: Associated designs are filed sequentially, starting with A as the base, then B, C and D. Right after filing each, the applicant sold products that represent the filed design.
☞ If publicly sold design X is considered dissimilar to design A, the EXCEPTION does not apply, and B is rejected because of X, C is also rejected by the sales of B because C cannot be associated with rejected B, and EXCEPTION does not apply. Then, D is rejected by the sales of C because D cannot be associated with the rejected C, and EXCEPTION does not apply (Domino of Rejection).
Problem 2: A design similar to multiple unassociated designs that are publicly known cannot be registered
Case: After unassociated designs A and B are registered and published, you would like to file a design X similar to both A and B.
☞ A design can be associated with only one design. In addition, EXCEPTION only applies to the associated design group or their similar designs. Here, X is rejected even if X is associated with A because EXCEPTION does not apply to the published B not associated with A.
RYUKA’s Suggestions
1. Filing associated designs quickly without relying on the 10-years
This avoids rejection based on other known designs and the Domino of Rejection. We recommend filing associated designs together with the base design, if possible.
2. Filing an intermediate design C when filing dissimilar designs A and B to associate all designs
If A and B are in an associated group thanks to C, X can be registered because EXCEPTION applies to both A and B. However, you cannot register C anymore once you file A and B.
3. Filing an intermediate design C if the JPO may deny the association of designs A and B. If the JPO denies the association, arguing the similarities
This secures X registrability and expansions of protection scope.
If you have any questions, please feel free to let us know.
