U.S. applicants will soon be able to use a streamlined international filing procedure for design patents similar to the Madrid Protocol for trademark registrations. Currently, U.S. applicants seeking to protect designs in multiple countries must file separate applications for each of the countries through their national or regional patent offices. Starting May 13, 2015, when the Hague Agreement Concerning the International Registration of Industrial Designs goes into effect in the U.S., applicants will be able to file a single international design application (IDA) for protection in up to 64 Hague system member countries.
The Hague system is expected to significantly impact design patent practice. Here’s what you need to know:
- How the Hague system operates
Applicants will file an IDA at the World Intellectual Property Organization (WIPO), either directly or through the United States Patent and Trademark Office (USPTO), designating countries or regions where protection is sought. WIPO will review the IDA only for compliance with formal requirements; it will not perform a substantive prior art review. Applications meeting the formal requirements are forwarded to the patent offices of the designated countries or regions. Each patent office will review the IDA under its own legal requirements just like any other design application it receives, and issue a design patent or registration if the requirements are met.
- The Hague system can be a more efficient and cost-effective way to file foreign design applications
The Hague system can reduce the cost and complexity of filing foreign design applications by enabling applicants to file a single design application for multiple countries or regions in one language, with payment of one set of fees in one currency, and with one office (WIPO). In addition, if a designated patent office raises no objections to the application, the applicant can potentially avoid the need to retain local counsel in that jurisdiction.
- Hague system member countries
Not all countries are members of the Hague system. Notable members include the European Union, Japan, Korea, and the African Intellectual Property Organization. China, Canada, Australia, Brazil, and Russia are not members, but may join now that the U.S. is a member.
- Applicants can still file conventional U.S. design patent applications
Applicants can file U.S. design patent applications as conventional applications or through the Hague system.
- IDAs are published
WIPO publishes IDAs about six months after they are filed, though an applicant may request delayed publication. The USPTO, on the other hand, does not publish conventional U.S. design patent applications; it only publishes issued U.S. design patents. Applicants may therefore want to consider the implications of their competitors obtaining advance information about their new products through published IDAs.
- IDAs offer provisional rights against infringers
IDAs offer provisional protection between the date of publication of the IDA and the date of issuance of a design patent. A patent owner can potentially obtain a reasonable royalty from infringers during that time period. Conventional U.S. design patent applications offer no provisional rights since they are not published.
- Term of U.S. design patents will be extended to 15 years
The term of all U.S. design patents will be increased from 14 years to 15 years after issuance for applications filed on or after May 13, 2015, to meet Hague system requirements.
- IDAs can contain multiple designs
Each IDA can include up to 100 different designs as long as the subject matter of the designs falls under a single class in the Locarno international design classification system. However, the USPTO and many foreign patent offices will require applicants to file separate additional applications for IDAs deemed to contain multiple inventive designs.
In summary, the Hague system will provide U.S. applicants a simple, cost-effective way of protecting their designs in multiple countries, and is expected to be widely used.