February 16, 2015

International Design Applications Under the Hague Agreement: Q&A for Companies Designating the U.S.

In early February 2015, the U.S. announced that it had deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) with the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. The Hague Agreement will become effective for the U.S. on May 13, 2015. While the U.S. Patent and Trademark Office (USPTO) has not yet published its final rules for implementation of the Hague Agreement, the basic framework for how the Hague System will work for the U.S. is set forth by the Hague Agreement and its accompanying rules and administrative instructions, Title I of the Patent Law Treaties Implementation Act of 2012 (Dec. 18, 2012) and the USPTO’s Notice of Proposed Rulemaking (Nov. 29, 2013).

Currently, U.S. design patent applicants must file separate design applications in each country where protection is sought, often within a relatively tight six-month priority window measured from the filing of an earliest priority application. Filing requirements and procedures often differ widely by country.

1. How will the Hague System work?

In terms of operation, the Hague System is like a hybrid of a Madrid Protocol international trademark application and a Patent Cooperation Treaty (PCT) utility patent application. A U.S. applicant would file a single international design application (IDA) and pay registration fees to the International Bureau (IB), currently WIPO, for the contracting parties designated by the applicant. The international registration date for an IDA that complies with the filing date requirements will be the filing date of the IDA.

For example, a single IDA is filed designating countries A, B and C. The applicant would pay a registration fee to the IB specific to the designation of countries A, B and C. The applicant would include in the IDA everything required by the Hague Agreement, as well as any additional requirements which countries A, B and C have submitted to the IB in the form of permitted exceptions to the default requirements of the Hague Agreement. For example, the USPTO plans to require that any IDA designating the U.S. include a claim, an identification of the creators (inventors) and a declaration of inventorship.

While some countries will still conduct further processing / examination / invalidity oppositions of IDAs, such countries will not be able to reject the IDA based on formalities if the IDA complies with the formalities requirements of the Hague Agreement. Renewal fees may also be paid through the IB, which for most designated countries will be due within five and 10 years after the registration date for a minimum protection period of 15 years.

2. Which other countries or offices are participating?

Current Hague System participants where U.S. companies tend to file more frequently include the European Union, Switzerland, Norway, South Korea and Singapore (full list available here). Japan also just joined. With the U.S. on board, it is widely expected that the network will grow more rapidly in coming years.

3. Who can file an IDA with the USPTO?

In general, applicants who are companies must have certain ties with one of the contracting parties to the Hague Agreement. In order to file an IDA at the USPTO, companies must be domiciled in the U.S. or have a have a “real and effective industrial or commercial establishment” in the U.S. The USPTO can receive an IDA as an office of indirect filing, and would then forward the IDA to the IB.

Although IDAs can also be filed directly with the IB, filing the IDA with the USPTO as the office of indirect filing for designs created in the U.S. will cause a foreign filing license to be generated before the IDA is forwarded to the IB. This is similar to the current process for PCT applications for U.S. inventions filed with the U.S. Receiving Office — nothing gets forwarded to the IB until national security review procedures are completed. Why do U.S.-created applications for ornamental design still require national security clearance review? Ask Congress!

4. Is the U.S. still going to substantively examine international design applications designating the U.S.?

Yes. Once the IDA is properly filed designating the U.S., the U.S. will place it into queue for substantive examination, which the USPTO intends to complete within one year of the IDA’s registration date. Because prior art rejections of U.S. national design applications are rare, this substantive examination in the U.S. will likely focus on whether the design drawings “disclose fully the industrial design.” The US also intends to maintain a duty of disclosure requirement for IDAs that designate the U.S.

5. Does this law improve anything for U.S. design applicants?

In order to implement the Hague Agreement, Congress lengthened the term of U.S. design patents (granted from both national applications and IDAs) from 14 to 15 years from the date of grant, which adds a year of protection for all U.S design patents. This applies to any U.S. design application filed on or after May 13, 2015.

Also, the Hague Agreement (and its rules and administrative instructions) permit design representations in the form of “photographs or other graphic representations” (color or black-and-white) and permit unclaimed subject matter to be indicated by “dotted or broken lines or coloring.” This presents one of the most exciting benefits of an IDA over a U.S. national design application: companies will be able to file IDAs designating the U.S. with photographs or computer-aided drawing or solid model representations, whereas regular U.S. national design applications will continue to suffer from the pre-digital age requirement for formal line drawings. This will save time and expense for companies that already create high-quality product representations or photographs as part of their design process, because they may no longer need to hire a technical illustrator to create patent-specific formal line drawings for all design applications. However, it remains to be seen whether the USPTO will use its substantive examination process for IDAs to discourage, as a practical matter, the use of anything other than line drawings for IDAs designating the U.S.

6. Will non-U.S. applicants be able to navigate the USPTO requirements?

The Hague Agreement reads like a smoothly operating registration-based design law treaty, to which numerous carve-outs have been added to accommodate examination-based systems like the U.S. In fact, it would appear that most exceptions were inserted to allow the U.S. to make declarations permitting it to deviate from the default procedure for IDAs that designate the U.S. The Notice of Proposed Rulemaking for the U.S. implementing regulations has a similar tone. As one example, an IDA may properly include up to 100 different designs as long as they are part of the same Locarno international classification, but the USPTO has indicated that it will only permit one claim per design patent granted from an IDA (and thus one set of drawings).

As such, non-U.S. based applicants for IDAs who want to designate the U.S. may find it beneficial to consult U.S. counsel at the filing stage, rather than waiting until an Invitation to Make Required Corrections is generated by the IB based on a filing date issue, or before a Notification of Refusal is generated by the USPTO.

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