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How does the 2016 Amendment of the Examiner’s Guidelines for Designs in Japan work for GUIs?

by Kozo Yabe (Yuasa and Hara, Japan)

Demand for GUIs has been growing in relation to mobile/portable digital devices such as smartphones and tablets, etc. As a result, the Japan Patent Office (“JPO”) responded to such situation with the 2016 Amendment of the Examiner’s Guidelines for Designs for graphic images on screen which are post-installed/recorded. However there are still some limitations under the Design Act.

1. Examiner’s Guidelines before the 2016 Amendment

The Design Act already adopted protection for graphic images on screen after the 2006 Amendment of the Design Act. As a result of that, the Design Act can extend an exclusive intellectual property right over a registered design for a graphic image even on screen. Provided however, the definition of the “Article” subject to the design is still interpreted to exclude the following images under the Examiner’s Guidelines for Designs by the Japanese Patent Office (“JPO”):

1) Post-installed/recorded on the “Article”; and

2) Any view/image appearing after installing software on certain PCs and other computer devices as the “Article(s)”.

This was because a design right should be given to a creative design only in relation to a certain “Article” and should thus be limited to a clear graphic image fixed thereon in relation to the Article’s function according to the JPO’s understanding (Art. 2, paras. 1 and 2, Design Act.).

With respect to this difficult bar for graphic image protection, the Design System Sub-committee of the Intellectual Property Committee at the Industrial Structure Council conducted research and announced the findings of its report in December 2015. Amongst some of the recommendations and advice given by the Council, the JPO decided to change their Examiner’s Guidelines for Designs as a first step in expanding protection over graphic images on screen as industrial designs without further amendment of the Design Act. This is because the JPO should make efforts to work not only for the protection of graphic images on screen but also towards other measures for international design protection under the Hague Convention

2.2016 Amendment of the Examiner’s Guidelines

According to the amended Examiner’s Guidelines for Designs after April 1, 2016 (Secs. 74.4.1.1.1.1.1., 74.4.1.1.1.1.2., 74.4.1.1.1.2.3. and 74.4.1.1.1.2.1., Examiner’s Guideline for Designs), the following practice was adopted:

1) Any graphic image can be registered as a “Design” whenever it is installed/recorded on the “Article” if it becomes an inseparable function thereof; and

2) Any graphic image that appears by installing certain concrete functional software on a computer can be additionally recognized as a “Design” for the computer (including a PC, a tablet, a smartphone, but not limited to) as the “Article”; but

3) Other graphic images appearing by signals coming from outside of the “Article” and independent content separate from the “Article” are not included.

Even after the 2016 Amendment of the Examiner’s Guidelines for Designs, TV program images, game content images, movie images and photographic images of software which are not a part of the “Article” but available via cloud computing, still have no protection under the Design Act (“Points of Amendment of Examiner’s Guidelines for Designs including graphic images”, Material for Explanatory Session by the JPO regarding Amendment of the Design System, March 9, 2016.).

The 2016 Amendment intends to include updated graphic images which any digital device originally had and recorded. However, an updated graphic image which may have updated functions for application software on digital devices can be subject to further discussion for their protection under the 2016 Amendment above. This is because they may not be a part of the “Design” of the “Article” by signals coming from outside of the “Article” and independent content separate from the “Article”.

These issues are left for further consideration by alternative legislation as discussed by the Council’s report as set forth above.