President Obama signed into the law the Patent Treaties Implementation Act of 2012, which will make the U.S. a party to the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague System). The Hague System is an international registration system that allows applications to file for design protection in several jurisdictions by means of a single international application filed with the International Bureau of The World Intellectual Property Organization (WIPO).
The U.S. will formally begin using the Hague System on December 18, 2013. After that date, foreign applicants can file an international design application (IDA) with WIPO that designates the U.S. The IDA must contain a design reproduction, which can be in the form of drawings, photographs and/or specimens. WIPO will then examine the design reproduction to ensure that it meets certain formal requirements. However, after the design reproduction meets WIPO’s formal requirements, it is later examined for U.S. substantive requirements by the U.S. Patent and Trademark office. The U.S. substantive requirements are amongst the strictest in the world.
Here are a few strategies to make sure that the design reproductions filed with WIPO also meet U.S. substantive requirements:
- Show the three-dimensionality of the design.
The U.S. requires that the design reproduction show the three-dimensionality of the design. The easiest way to do this is to submit drawings that show top, bottom, left, right, front, back and perspective views. If one of these views is left out, U.S. Examiners might consider the design to be indefinite. Thus, omission of a view that is needed to show the three-dimensionality of the design can be fatal to the application.
- Consider filing drawings rather than photographs.
The U.S. does not ordinarily permit photographs as the design reproduction in design patent applications and will only accept photographs if they are the only practicable medium for illustrating the design. Because of this rule, many U.S. Examiners require photographs in the design reproduction to be converted to drawings. In turn, U.S. Examiners often reject the converted drawings as showing new matter. As such, it can be very difficult to convert photographs to drawings without obtaining a new matter rejection. The best way to avoid this is to file drawings in the first place.
- Consider depositing a specimen.
U.S. Examiners are often very picky about inconsistencies in drawing views and about the drawings not having enough views to adequately show the three-dimensionality of the design. As a result, U.S. Examiners commonly issue indefiniteness rejections of the drawings. Sometimes these indefinite rejections are not curable. However, if a specimen has been filed, it might be possible to prepare a new set of drawings based on the specimen and that cures the indefiniteness rejection, without adding new matter. As such, filing a specimen as a safety net can help to avoid incurable indefiniteness rejections.
If your design patent filing strategy includes filing in the U.S., be sure to consult with U.S. patent attorneys before filing your design reproduction with WIPO to make sure that the design reproduction will also satisfy U.S. substantive requirements.