Starting on May 13, 2015, Applicants in the United States who file a single industrial design application at the United States Patent and Trademark Office (USPTO) in English have the opportunity to obtain protection for up to 100 different industrial designs across 44 countries and intergovernmental organizations. This change was published in the USPTO’s Final Rules relating to “Changes to Implement the Hague Agreement Concerning the International Registration of Industrial Designs” in April.
As a result, the United States now joins 63 countries and intergovernmental organizations in the Hague System. This allows US Applicants to enjoy a more streamlined process for obtaining protection for their designs globally, virtually eliminating what once was a tedious process of filing numerous industrial design applications across several dozen countries and intergovernmental organizations.
Closely resembling the process of filing Patent Cooperation Treaty (PCT) applications, interested Applicants file a single industrial design application at the USPTO, which is a designated receiving office. The application is similar to that of a US design patent application in that it contains drawings, a specification, and Applicant information. Once the application is received by the USPTO, the application is forwarded to the International Bureau of the World Intellectual Property Organization (WIPO). WIPO reviews the application for procedural errors and once accepted, forwards the application to the Applicant’s specifically designated countries and intergovernmental organizations for substantive examinations. The designated countries and intergovernmental organizations examine the application under the specific jurisdictions’ laws. Upon approval in the United States, applications filed on or after May 13, 2015, will have the benefit of 15 years of protection compared to the current term of 14 years.
The new streamlined process affords US Applicants substantial cost-savings. It eliminates the need for obtaining foreign counsel in each country where an industrial design application is to be filed, as Applicants can now file directly with the USPTO through a single application. The ability to file a single application in English reduces or eliminates translation costs. Further, the single international registration application fee is relatively low compared to the fees normally associated with filing in multiple individual countries.
Industrial design registration protects the ornamental or primarily aesthetic elements of useful products. Although varying slightly in scope, design patents protect two- and/or three-dimensional elements including texture, shape, pattern, and color. Neither a design patent nor an industrial design registration protects a design dictated solely by function.
As previously discussed by Arent Fox, along with design patents and industrial designs, companies may protect the nonfunctional aspects of their designs through trade dress. Each of these forms of intellectual property protection presents certain advantages and disadvantages which companies should consider before seeking protection and/or attempting to enforce any existing rights.