'; International Design Protection Under the Hague Agreement

International Design Protection Under the Hague Agreement

December 7, 2015 Chicago Daily Law Bulletin

The Patent Law Treaties Implementation Act of 2012 (PLTIA) was signed into law on December 18, 2012, and took effect on May 13, 2015. The PLTIA sets forth provisions implementing the 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs ("Hague Design Agreement"). While this may be old news, we now have several months of experience with the Hague Design Agreement, and invoking its benefits can be tricky.

By way of background, the Hague Design Agreement is an international registration system, which affords an applicant the option of obtaining protection for up to 100 industrial designs in designated member countries and organizations by filing a single international application, in a single language. The international design application can be filed either directly with the International Bureau of the World Intellectual Property Organization (WIPO), or through the national Office in the applicant's country. Similar to the international systems currently in place for filing utility patent applications, often called simply “PCT applications,” the international design application will, in due time, undergo an examination process in each designated country or region, and thus must comport with each jurisdiction’s requirements. If done correctly, the option of international design applications can be more expedient and cost-effective for companies based or doing business in the U.S. by maximizing the value of their designs through registered protection worldwide.

More specifically, and similar to the Madrid System in use in the U.S. since 2003 for the registration of trademarks, the Hague Design Agreement provides a means through which design patent applicants in the U.S. can file a single design patent application, in a single language, and request design patent protection or registration in any of the 64 contracting states, and for up to 100 different industrial designs. One advantage of this system is that the applicant can avoid, at least at the outset, the fees and complexity involved in concurrently filing multiple design patent applications, in multiple countries or regions, using a local counsel in each country or region.

While the streamlining provided by the Hague Design Agreement is advantageous, substantive laws and regulations concerning design registration in each of the contracting states still apply. For those unfamiliar with design patent prosecution in various countries, it is worth noting that the drawing requirements can widely vary from country to country. For example, while an application under the Hague Design Agreement can contain up to 100 different designs, only one design is allowable for a national design application in the U.S. and, thus, only one design will typically be examined. Other countries have similar limitations. Unexamined designs remaining in an international application may be pursued, at least in the U.S., by filing divisional applications directly with the United States Patent and Trademark Office. Moreover, while acceptable designs may be presented in various incarnations in the international application including, for example, use of photographs, only line drawings with specific depiction of edges and shading are typically acceptable in the U.S.

Other important limitations of the Hague Design Agreement should also be kept in mind. It is notable that certain restrictions apply to various countries, and those restrictions attach to their citizens as applicants. Canada and China are currently not members of the Hague Design Agreement; this means that design registration in those countries, and other non-member countries, will require the direct filing of a national application. Perhaps more importantly, applications that include Canadian or Chinese citizens, or citizens of other non-contracting states, as inventors cannot be filed under the Hague Design Agreement.

Procedurally, international designs filed with the International Bureau will be recorded in the International Register, and published without a substantive review or examination. A copy of the publication will then be sent to each designated country or region. While publication of the designs occurs six (6) months after the date of international registration, publication may be also be deferred where permitted. Substantive examination follows in each designated country, which can either approve or refuse registration of the design(s) in the same fashion as designs are examined in applications filed nationally in each of the designated jurisdictions. Notably, while the international design application may rely for priority on prior-filed applications under the Paris Convention, such priority is determined depending on the laws of each designated state. Following registration of the design, no difference exists in the legal force and effect of a registered design that originated under the Hague Design Agreement or from a national filing in each designated contracting country or region.

Providing an avenue through which a design can be submitted to multiple countries simultaneously affords an applicant a simple and cost-effective tool for pursuing design protection in multiple jurisdictions. Nevertheless, caution should be taken to ensure that the particular requirements for each jurisdiction are met before the application is filed. This requires familiarity with the particular laws and regulations in each jurisdiction, which should come as no surprise to those already using the international systems currently in place for utility patents under the Patent Cooperation Treaty (PCT), and for trademarks under the Madrid Protocol.

Done correctly, design protection under the Hague Design Agreement stands to pay off in the long run for applicants, by providing a single vehicle that standardizes formal design application requirements, provides a right of priority in contracting states, has the same effect as national applications in the contracting jurisdictions, and increases the patent term to a standard 15 years. The idea of providing a unified filing system for designs, which joins existing systems covering utility inventions and trademarks, is certainly an advantageous step forward in today’s global economy. Reconciling drawing requirements may prove to be a drawback for applicants based in the U.S., and it may be the case that U.S. applicants, particularly those who regularly seek design rights in the Canada and China, will pursue direct national or regional filings in lieu of the Hague Design Agreement.