Design Protection Goes Global: The Hague Agreement Will Change Industrial Design Strategies

Tuesday, February 24, 2015

The Hague Agreement Concerning the International Registration of Industrial Designs, more commonly known as the “Hague Agreement,” is a treaty that establishes an international filing system for industrial design applications. Although the United States signed the treaty in 1999, implementation of the system in the U.S. has taken over 15 years. First, Congress enacted the Patent Law Treaties Implementation Act of 2012, which introduced several Hague Agreement reforms into the Patent Act. In November 2013, the U.S. Patent and Trademark Office (“USPTO”) proposed new regulations covering applications eventually filed under the Hague Agreement. Most recently, on February, 13, 2015, the U.S. took a major step towards making the new system available by depositing an instrument of ratification with World Intellectual Property Organization (“WIPO”) in Geneva. As a result, the Hague Agreement will go into effect for applicants residing in the U.S., and foreign applicants designating the U.S. in their international applications, on May 13, 2015. The final step of the implementation process will be promulgation of final USPTO rules, which should happen in the near future. Thus, beginning on May 15, U.S.-based applicants seeking industrial design protection will have the option of filing applications under the Hague Agreement system.

Instead of filing a separate application in each of several jurisdictions, an applicant proceeding under the Hague Agreement initiates the patenting process by filing a single international application with WIPO, either directly or through the USPTO as a designated filing office. The Hague Agreement framework is an alternative to the existing U.S. system for filing design patent applications, but does not replace it. The international filing system is available to any person who is a national of a contracting country or contracting international organization (such as the European Union), is domiciled in that country, or has a “real and effective industrial or commercial establishment” in a contracting country. As a result, all U.S. residents will be able to file international design applications beginning May 13.

The Hague Agreement international application may be in English (or French or Spanish) and can be filed electronically. The application must contain a reproduction of the design and a list designating the jurisdictions implementing the Hague Agreement in which the applicant plans to seek protection. After the WIPO International Bureau reviews the application for formal requirements, it is published in the International Bulletin. Then each country designated in the application performs a substantive review of the application by applying each country’s own national legal requirements. The resulting design protections (such as a U.S. design patent) are issued by the individual designated countries.

Availability of the Hague Agreement for U.S. entities will result in some major changes to design patent law and procedures. In addition, non-U.S. applicants may designate U.S. protection in international applications filed after May 13. Here are some of the major changes:

  • WIPO will publish international design applications after a formal review by the International Bureau, although the applicant may request delayed publication. U.S. design patent applications are not published prior to issue.
  • Upon publication, applicants may have provisional rights against infringers using the design despite actual notice of the application, if the application subsequently issues as a patent. Currently, U.S. design patents are not eligible for provisional rights.
  • Each international application may include up to 100 designs, as long as they all fall in a single class. Applications with multiple designs examined for protection in the United States likely will be subject to restriction requirements forcing the applicant to elect a subset of those designs for initial examination. Divisional applications will be available for any unelected designs.
  • The U.S. design patent term has been expanded from 14 years to 15 years, measured from the date of issue.
  • All fees are paid through WIPO in swiss francs.
  • A U.S. design patent application, or an international application, may claim priority based on an earlier-filed international application. In addition, an international application may claim priority based on an earlier filed U.S. application.

The Hague Agreement will reduce the complexity of filing for design patent protection, since all jurisdictions will accept a uniform format, single-language international application, the application may be filed at WIPO or a designated office, all fees are paid at one place in a single currency, and multiple related designs may be included in a single application. However, all substantive review of applications will take place at the national level and national requirements for legal protection are largely unaffected. For example, applications designating the U.S. will need to include a claim, brief descriptions of the views in the drawings of the design, and an inventor oath or declaration. As a result, while the Hague system will streamline the process of filing and paying fees, applicants will still need to retain counsel in each designated jurisdiction. An international application may have strategic advantages in some situations. For example, an international application may trigger provisional rights, permitting the patentee to recover reasonable royalty damages for infringing use that occurs before a patent issues. Also, the Hague system will allow clients with consumer products sold in worldwide markets to obtain protection in multiple jurisdictions more efficiently and, potentially, more cost-effectively than pursuing individual applications in each country.

Applicants seeking design patent protection should evaluate whether the Hague Agreement is appropriate for their IP strategy. Although final USPTO rules are not yet available, the availability of an alternative international filing system beginning May 13 may create new opportunities to enhance industrial design protection.