January 28, 2025
Mihoko Masaki

The number of Hague applications designating Japan has been growing annually. Hague applications are often rejected during the Japanese national phase substantive examination. However, demonstrated in the chart below, taking appropriate action through Japanese counsel drastically improves the rate of success in overcoming rejections and obtaining registration.

Below are three practice tips to ensure smooth substantive examination before the JPO.
(1) Applicants who do not have a domicile or residence in Japan are required to proceed through a registered JPO representative. English is the designated language for all procedures before the JPO.

(2) Confusingly, a notification of rejection from the JPO is sent via WIPO directly to the agent (or applicant) of the international application, but not to the local Japanese representative, even if a power of attorney for a Japanese representative has been submitted to the JPO. Therefore, applicants should relay the rejection to their Japanese representative as soon as possible after receipt.

(3) Finally, the requirements for the application of a novelty grace period (known in Japan as Exception to Lack of Novelty) are still more stringent than in most other countries, although they have been relaxed by a law amendment that came into force in January, 2024. If the applied-for design has been published or displayed in public before the filing date (or priority date, if priority is claimed), an application for the Exception to Lack of Novelty must be filed either at the time of filing the international application or within 30 days of the international publication.

We hope that the above tips will be of assistance in Hague applications designating Japan. If you have any questions, please feel free to contact us. We would be happy to provide assistance.