The Hague System is a procedural arrangement regulating acquisition of rights in more than one country on Design/Design Patents by a single step consisting of an application for a “bundle of rights”. The implications of being a “bundle of rights” affect the actual practice and strategical choices of the users due to the perception of the unity of the system while, in contrast, the governing law of each geographic extension is the applicable law of each designated Contracting Party. The interest in registering international designs has reached a peak in these months because of the ratification of the Republic of Korea, Japan and United States of America. Currently, the Hague Union is composed of 64 Contracting parties New potential accessions, which would generate a massive geographic coverage, are China, which is showing a strong interest in design registration, Russian Federation, Israel, Mexico and ASEAN countries.
The prerequisite entitling an applicant to file an International Design Application is a link with one or more Contracting Parties to the Hague Agreement namely, being a national of a State that is a Contracting Party or having a domicile in the territory of a Contracting Party, or having a real and effective industrial or commercial establishment in the territory of a Contracting Party, or having a habitual residence in a Contracting Party. (Applicable to Geneva -1999- Act only). The Hague system is simple and cost effective. Unlike direct national applications - generating many registrations entirely prosecuted by national offices without being linked to each other – the Hague System allows for one Application in one language and only requires one set of fees to be paid. However, at the time of the application the applicant must select the Contracting Parties since no additional territorial extensions may be filed on a later date.
OHIM and USPTO adjustments into Hague System
Although the basics of the Hague System are very encouraging, there are controversial issues, in particular, those dealing with harmonization. On the one hand, the practice of many offices, including the OHIM, is very lenient towards design application requirements, allowing the registration of designs that would never be allowed in other jurisdictions. Methodologically, the approach of OHIM and USPTO towards design registration is very dissimilar. The leading difference is first terminological; “Design” and “Design Patent” indicating that the nature of the protection as well as the two different tools are made on a distinct basis even if aiming at the same purposes. The OHIM requirements of protection are the following:
A representation of the design, which must be novel and have individual character.
On the other hand, unlike the OHIM, for a Design Patent to be granted at the USPTO it is required to be new, original, ornamental and for an article of manufacture. Also, it has to be fully and clearly described and has to be claimed in only one independent and distinct design.
Although the International Bureau as well as the OHIM allows application for multiple designs within the same Locarno Classification, the USPTO might still issue a refusal due to lack of unity of design, requesting that the multiple design registration be divided into different designs. Deferment of Publication: Theoretically, the international registration is published six months after the date of the international registration. In fact, through the Hague System applicants may request that the publication be deferred for a period which may not exceed 12 months (under the 1960 Act) or 30 months (under the 1999 Act) from the filing date. Nonetheless, under the 1999 Act, whether deferment is possible or the maximum deferment period allowed, is subject to the law of each Contracting Party.
In this particular case, since deferment of publication is available at the OHIM and not at the USPTO, designating OHIM and United States will result in no deferment because, the publication will take place at the expiry of the shortest period (as a national requirement) among the Contracting Parties designated. Photographs and colors as features of the Design Application: Unlike the OHIM practice where colors and photographs are acceptable in the drawings submitted, the USPTO does not allow colors and photographs unless it is explained why the color drawings or photographs are necessary. In any case, the requirements relating to the submission of photographs and colors are so strict that it is almost impossible for a Design Patent to be granted on such a basis.
Change in ownership and “lapse” of the International Designs: crucial tips
The governing law entering into the merits of each possible legal enforcement of changes in the ownership is the law of the Contracting Parties.
Notwithstanding, there are two relevant points having a huge impact on the fate of the International Design Registration of which it is crucial to be aware of beforehand (See territorial requirements):
- The new owner MUST be entitled to file an international design application
- There must be a common treaty between the new owner and each of the designated Parties
These requirements might affect the further validity of the Designs not necessarily at the time of the changes but potentially afterwards. At first sight, the impact of not being able to record a change in ownership does not seem to be so severe even if most of the larger entities would need such an amendment to be recorded for purposes unrelated to Intellectual Property rights. However, the main problems would arise at the time of renewals. In fact, renewals of an International Design Registration whose holder is an entity that does not own it anymore, in theory, would result in an invalid renewal.