Design patents can play an important role in protecting a tech startup’s innovations and creating competitive advantage, whether they are the only available protection or part of a larger patent strategy. Often overlooked and sometimes undervalued, design patents are typically easier and less costly to obtain than utility patents. While generally having a more limited scope of protection, design patents can still deter potential infringers in the U.S. and foreign countries.
As of May 13, 2015, U.S. emerging tech companies have a new option for design protection in foreign countries. The U.S. joined the Hague System for the International Registration of Industrial Designs on May 13, 2015, and U.S. design patent applicants can now take advantage of the Hague System to obtain protection for their inventive designs in foreign countries.
Simplified Design Patent Filing Process
The Hague System simplifies the procedure related to filing foreign design applications. Under the Hague System, applicants can file a single, standardized international design application in a single language for registering up to 100 designs in over 64 designated member countries and intergovernmental organizations (referred to as Contracting Parties). Applicants can thus avoid complexities related to filing separate national applications in multiple countries, such as, for example, foreign language translations, procedural requirements, fees, and deadlines for renewal. This streamlined process should reduce the barrier to entry for applicants to acquire geographically broader design protection through simplification and reduced costs.
In addition to the U.S., the Hague System also includes Japan and the European Union, among other Contracting Parties. Currently absent from the Hague System are China, Canada, Australia, and Brazil that may be of interest to U.S. applicants, but these countries are also likely to join the Hague System in the near future due to the recent addition of the U.S. and Japan.
A Streamlined Option for Protecting Multiple Designs in Many Countries
With the U.S. included in the Hague System, U.S. applicants can now file international design patent applications directly via the United States Patent and Trademark Office’s (USPTO) electronic filing system (EFS-Web) in English. Applicants can designate any of the 64 Contracting Parties, and can receive the same effective filing date in each jurisdiction.
Upon receipt of the international design application, the World Intellectual Property Organization (WIPO) will ensure that the application meets all basic procedural requirements and transmit the application to the Contracting Parties previously designated by the applicant. The WIPO will also publish the international design application, which is new to U.S. applicants, as the USPTO does not publish design applications until issuance.
The international design application is then registered or examined according to each particular designated Contracting Party’s substantive design patent or industrial design laws. It is important to note that, while the Hague System simplifies the filing of design applications, the international design application still needs to meet the substantive requirements of each designated Contracting Parties. For example, the U.S. will still require that applicants identify the inventor of the design, include a claim, and submit an oath or declaration from the inventor, while the laws of other Contracting Parties may not have these requirements. Accordingly, consulting with a patent attorney is advised to ensure that the international design application meets all substantive requirements in designated countries.
Overall, the U.S. joining the Hague Convention provides U.S. applicants a streamlined option for protecting multiple designs in many countries. Additional information concerning the Hague System, including geographic coverage and a guide for users, is available at WIPO’s website.