Today, February 13, 2015, the United States deposited with the World Intellectual Property Organization (WIPO) its instrument of accession to the Hague Agreement Concerning International Registration of Industrial Designs (the Hague Agreement). With the deposit complete, the Geneva Act of the Hague Agreement will officially enter into force in the United States on May 13, 2015.
The U.S. Introduction of the International Design Patent Application
Upon implementation of the Hague Agreement, any person who is a national of the United States, or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States, will be permitted to file international design applications with the U.S. Patent and Trademark Office. Similar to the process for filing for an International Trademark Registration under the Madrid Protocol, the Hague Agreement filing should simplify the process and, potentially, reduce the costs for securing protections for design rights in more than 60 other jurisdictions around the world. Once the Hague Agreement application has been reviewed for certain formalities, it will be automatically transmitted to the designated countries/jurisdictions, where it will proceed to examination and/or registration.
Foreign applicants will be permitted to designate the United States in any international applications they initially filed abroad, which will likely increase the number of U.S. design patent applications. Foreign applicants more accustomed to the simple registration system, such as the European Community, will face new challenges as they file for protection in substantive examination countries such as the United States.
Both foreign and U.S. applicants should see an initial reduction in costs because, in both instances, applicants will no longer need to hire local patent counsel to initiate the filing process in jurisdictions outside of where the international design application was filed. Applicants will also be permitted to include up to 100 designs within a single Hague Agreement application. The inclusion of multiple design embodiments in a single application will undoubtedly result in extensive restriction requirements once the U.S. application begins substantive examination. One added benefit U.S. design patent owners will realize, as a result of the U.S. entry into the Hague Agreement, is the extension of the design patent term from 14 years to 15 years for all new design patent applications filed after the effective date of the Act.
With the full implementation of the Hague Agreement, U.S. and foreign applicants will have the opportunity to greatly streamline their design patent/industrial design filing process for many countries, potentially reducing overall design prosecution costs around the world. At the same time, however, the implementation and use of the Hague Agreement will add potential new complexities to U.S. and foreign design patent/industrial design practice. Potential issues include:
- U.S. Hague Agreement filers, will need to exercise great care at the time of filing a U.S. design patent application to ensure that the filing meets the specific registration and examination requirements for all designated jurisdictions
- Filers based outside the U.S. will face similar problems, as they must prepare each Hague Agreement application so that, at the time of filing, it will satisfy the relatively stringent filing and examination standards in the United States
- Foreign applicants, more accustomed to a simple registration system, will need to adjust to the stringent U.S. examination rules and procedures, such as the Duty of Disclosure requirements and U.S. restriction practice, among others.