In the United States, design patents protect the ornamental appearance of an article of manufacture or product. The recently-implemented Hague Agreement is an international treaty that provides a streamlined, procedural system for filing one standardized international design patent application (IDA). Once an applicant files a standardized IDA, it can be transmitted to and processed by Hague member countries worldwide. Currently there are 62 member countries, plus the European Union (EU) and the African Intellectual Property Organization (AIPO).
On May 13, 2015, the USPTO rules implementing the Hague Agreement went into effect, marking a sea-change for U.S. design patent practice and HRFM clients. Prior to this, most U.S. applicants had to file separate design patent applications in individual foreign countries, often times resulting in multiple foreign agent and administrative costs at the front-end of the filing process, in order to preserve their international design rights.
For those familiar with the Madrid Protocol for trademarks, or the PCT application process for utility patents, the procedural aspects of the Hague Agreement are similar. That is, the upfront administrative filing process is streamlined by providing for a single application that can be filed through the USPTO (or directly through International Bureau (IB) of WIPO) in one language. This single filing provides the applicant with one effective filing date. All formal requirements are reviewed by the IB first, and if satisfied, the IB publishes the application and then sends it to each designated country. The IDA is then registered, or examined for substantive requirements, according to the rules of each designated country.
While this new system has the potential to greatly benefit HRFM clients, it also has pitfalls for the unwary and, in certain circumstances, filing through the Hague Agreement may not be the best option. This is because it merely harmonizes the logistics for filing a design application in several countries all at once. It does not change the substantive laws for design patents in each country. Therefore, counsel must understand the IDA process, including its benefits and its risks, to carefully advise whether to file an IDA under the Hague Agreement or take the traditional route for U.S. and/or foreign design protection.
The following provides a brief list of advantages and potential pitfalls to consider:
- The term for ALL design patents issued after May 13, 2015 in the U.S. has been extended by one year, from 14 years to 15 years. No maintenance fees are required.
- Standardized formal requirements for international design applications (IDA).
- U.S. applicants may file an IDA either indirectly through the USPTO (preferred) or directly with WIPO.
- If filed through the USPTO, a foreign filing license is automatically granted. This eliminates the need to file a prior U.S. application for any design that is first “made” in the U.S. In other words, when necessary, U.S. applicants can apply for international protection as a first filing.
- IDAs are published by WIPO within 6 months of filing, or sooner, thus providing provisional patent rights in the U.S. Provisional patent rights are the ability for damages to accrue upon publication. This will only apply to published IDAs that designate the U.S. and to a single embodiment only. Traditionally filed U.S. patents still will NOT publish.
- An IDA may include a request to defer publication of the design for up to 30 Months. But this does not apply to an IDA that designates the U.S.
- An IDA can include up to 100 designs in a single application (but see Disadvantage below).
- Expedited examination of IDAs. In certain countries, a first action must be issued within 6 months. For IDAs that designate the U.S., the USPTO must issue first action within 12 months. This has no effect on traditionally filed U.S. patents.
- Potential Cost savings:
- Translation costs (may be filed in English, Spanish or French)
- No requirement to retain local counsel in each country upon initial filing (cost deferral)
- Potential for savings on official filing fees and publication fees (but need to be careful, see Disadvantages below)
- Color drawings and photographs no longer require a special USPTO petition and fee (for design patents only).
- Centralizes all downstream administrative issues. For example, changes to applicant information or corporate name, and/or one renewal fee every 5 years (where required), can all be done through WIPO in one transaction.
- The Hague Agreement does not implement uniform drawing standards between member countries. Therefore, each country still has different substantive drawing requirements and different drawing sets may be needed depending on which countries are designated. (e.g. orthographic projection requirements (Japan); surface shaded or unshaded requirements (Korea); contouring requirements; partial design requirements; multiple view requirements). If you do not satisfy each designated countries’ requirements upon filing, you risk losing rights in certain countries.
Legal advice of foreign counsel, and/or a review of each countries drawing requirements, is still recommended prior to filing and country selection should be strategically considered.
- An IDA can include up to 100 designs in a single application. However, if an IDA designates the U.S. but includes more than one design, U.S. restriction practice will apply. Failure to file divisional applications could have negative effect on design rights in the U.S. (i.e. prosecution estoppel).
- U.S. foreign filing license still required before directly filing a Hague application through WIPO. Thus, filing through the U.S. is preferred.
- Early publication could provide competitors with a head-start advantage (e.g. disclosure of a new design will occur sooner, so copying can occur sooner). Consider option of deferring publication (but see Disadvantage No. 5).
- If IDA designates the U.S., deferred publication is not an option.
- Some countries require a “written description” of the characteristic features of the design. Failure to include could preclude a filing date in certain countries. On the other hand, including such a description could have the negative impact of narrowing the scope of claim in the U.S.
- Hague Agreement allows member countries to wait out the applicable refusal period (6 or 12 months), instead of granting protection. Formal acknowledgement of patent right is not required.
- Under certain circumstances, the Hague Agreement fees can add up and applicants must be cautious. For example, each designated country requires additional filing fees upfront (like the Madrid Protocol), each additional design requires additional fees, and there are excess page fees. Similarly, there will be a “tipping-point” where filing via the Hague Agreement will be more expensive than the traditional route. For example, if an applicant is filing one design in one designated country, it may be more expensive to file an IDA than it would be to file directly in that one country.
- ALL applicants must be entitled to file an IDA under the Hague Agreement. If one co-Applicant does not qualify, then an IDA cannot be filed.
- Similarly, an IDA can only be assigned to an entity that qualifies under the Hague Agreement.
- Applicants will still need to file individual national applications for countries that are not a party to the Hague Agreement. At the time of this writing, this includes Canada, China, Brazil, Australia, Russia, Taiwan, Israel and Singapore. Japan joined the Hague Agreement on the same day as the United States, i.e. May 1, 2015.
- Continued Prosecution Applications (CPA) are not allowed for IDAs designating the U.S.
If foreign agents are consulted in advance of a Hague Agreement filing to ensure substantive compliance with individual country rules, the above-cited disadvantages should not dissuade clients from foreign filing via the Hague Agreement. This is because most of the disadvantages apply to IDAs that designate the U.S., rather than IDAs that claim priority to a first-filed U.S. application and are being used for foreign (non-U.S.) protection. Even so, the take away is that using the new Hague Agreement for design protection requires careful planning and strategy with your patent counsel.
And, for those who are skeptical, the traditional path of preparing a first-filed U.S. design patent application, followed by separate applications in individual countries 6 months later, remains available.