The 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs ("Hague Agreement") allows a qualified applicant to file a single international design application to obtain protection in any contracting state. Presently, there are sixty-five contracting states to the Hague Agreement. The Patent Law Treaties Implementation Act of 2012 (PLTIA), which took effect on May 13, 2015, implements the Hague Agreement in the United States. While the Hague Agreement streamlines the international filing of industrial designs, the substantive laws and regulations of each contracting state still apply during the national examination phase for each contracting state. This includes drawing requirements, which this article examines more closely for several of the contracting states.
According to the WIPO, in 2015, a total of 16,435 international design applications were filed. International design application filings in 2016 are on track to surpass that amount as a total of 5,141 applications have already been filed in the first quarter of 2016. The United States, European nations, Japan, and the Republic of Korea represent the contracting state of the applicant in over 92% of these applications. Accordingly, for a practitioner seeking to file international design applications, it is beneficial to examine the drawings requirements of the United States, the European Union, Japan, and the Republic of Korea.
With respect to drawing views, the United States does not require or limit the number of views in a design application provided that there are sufficient views to constitute a complete disclosure. The European Union, on the other hand, limits the number of views to a maximum of seven for each design. Drawings submitted in excess of seven are disregarded for registration and are not published. In Japan, at least six orthographic views are generally required. Additional views may be required if the design is not fully disclosed by the six views, for example when the intricacies of a design require section views for full disclosure. For symmetrical designs, the six orthographic views may be substituted with a minimum of three views that are symmetrical to another view. Three of the six orthographic views may be substituted with an isometric or oblique view as long as the design is fully disclosed by the three remaining orthographic views in combination with the isometric or oblique view. Similar to the United States, the Republic of Korea does not require or limit the number of views provided that there are enough views to show a clear representation of the design. Even though the drawing requirements for these four contracting states differ with respect to drawing views, in practice, a single set of drawings could generally meet those requirements for all four contracting states.
With respect to unclaimed matter in a drawing, the Hague Agreement requires each contracting party to accept figures with broken lines to designate unclaimed subject matter. In the United States, broken lines may be used to show environment and unclaimed matter; broken lines may not be used to show hidden matter. In contrast, in the European Union, broken lines may be used to show hidden matter as well as the environment and unclaimed matter. In Japan, partial designs are permitted as long as the environment is shown; broken lines may be used to show environment and unclaimed matter. The Republic of Korea makes no mention of the use of broken lines in its national drawings requirements, but broken lines should be permitted through the Republic of Korea’s acceptance of the Hague Agreement. Accordingly, the use of broken lines to show unclaimed matter is permissible for all four contracting states.
With respect to surface shading, in the United States, drawings should be provided with surface shading to clearly show contour of all surfaces of the design as well as to distinguish between solid and open elements. In the European Union and Japan, surface shading may be used, but it is not required. In the Republic of Korea, surface shading is generally not allowed, except for the case where surface shading is in a reference view such as a perspective or isometric view. The difference in drawing requirements in the United States and the Republic of Korea with respect to surface shading represents the greatest conflict in filing an international design application designating the two states with a single set of drawings. The path forward when designating both the United States and the Republic of Korea, may be to file a set of drawings with surface shading and amend the drawings if an Office Action is issued in the Republic of Korea, file a set of drawings without surface shading and amend the drawings if an Office Action is issued in the United States, or file two sets of drawings, one with surface shading and one without. The actual path pursued should be based on the design on a case-by-case basis.
While dealing with the differing drawing requirements of each contracting party may appear daunting at first, for many design applications, the same set of drawings, as if prepared for a domestic United States design patent application, may generally suffice for an international design application. The biggest challenge appears to be with respect to surface shading. If the national law of any of the designated contracting states in an international design application does not allow for surface shading, like the Republic of Korea, multiple sets of drawings may become necessary.