The Japan Patent Office (JPO) began to accept online submission of priority documents for Design registrations from January 1, 2020. This makes filing of Design applications (in addition to patent applications) from abroad into Japan simpler (though note our warnings below, as well). Please note that this change does not apply to trademark applications.[3]
Formerly, the JPO required an original copy of the certified Priority Document for a priority Design application, This involved ordering the certified document from the priority application’s receiving office and forwarding it to the JPO. Now, however, the JPO is using the World Intellectual Property Organization (WIPO) Document Access System (DAS) for Design registrations.[3] One can now avoid the above paperwork for (a) Design registration applications filed on or after January 1, 2020 at the JPO and (b) international Design applications registered on or after January 1, 2020. In order to do so, the applicant must request that the JPO access the priority document digitally and files the access code given by the receiving office of the priority application.[1]
Please let your patent attorney in Japan know if you wish to use DAS to file your recent Design application more conveniently in Japan.
What are the risks and drawbacks of using DAS for Design applications?
There is a risk that in the case that even if for some reason the JPO cannot access the Design priority document via DAS, JPO will not issue a warning to the applicant. (It does issue a warning for Patent and Utility Model applications.[2]) Therefore, it is important to monitor the filing of the priority document with the JPO, for example by calling the JPO or filing for permission to view the file wrapper (a burdensome option). Otherwise, if there is fear of the priority document’s somehow not reaching the JPO, it is best to keep acquiring and filing the certified priority documents in hard copy.
Also, of course, please verify that your priority application’s receiving office is WIPO DAS participating (depositing) office.
Applicants with US priority Design applications
For those whose office of first (priority) filing was the USPTO, they will need to make sure they have (do) not opt-out of authorization for DAS on the Application Data Sheet when filing the application at first. (If opt-out was inadvertently chosen, it will be necessary to file a form SB39 to correct the statement and give authorization to use DAS.) [2]
The USPTO’s Filing Receipt will give a four-number code as “Confirmation No. ####.” (See a sample from the JPO.) That four-number code is what the applicant files with the JPO when requesting use of DAS for the Design application in Japan. [2]
* The information provided on this website is for informational purposes only and is not intended as legal advice.
** For questions or consultation, please contact us for more information.
Saki Kimura, Taro Yaguchi
Sources
[1] Japan Patent Office, “意匠の国際出願におけるWIPOデジタルアクセスサービス（DAS）対応について [Using WIPO’s Digital Access Service (DAS) for international design applications].” Updated January 16, 2020. Accessed March 24, 2020.
[2] ________. “米国特許商標庁との優先権書類の電子的交換について [Digital exchanges of priority documents with the USPTO].” Updated December 13, 2019. Accessed March 24, 2020.
[3] ________. “優先権書類の提出省略について（優先権書類の特許庁間における電子的交換について） [Removal of requirement for submission of priority documents (electronic exchange of priority documents among patent offices].” Updated December 13, 2019. Accessed March 24, 2020.
