In May 2015 the accession of the U.S. and Japan to the Hague System for the International Registration of Industrial Designs took effect. These accessions significantly broaden the geographical scope of protection of industrial designs via the Hague System adding two of the world’s most important economies and increasing the number of countries and intergovernmental organizations (contracting parties) to 64. In this post we analyse the significant benefits, but also certain complexities which need to be considered when filing an international design application.
The Hague System provides for a cost-effective and efficient means of registration of industrial designs. Through one single application filed with the World Intellectual Property Organization (WIPO) or with the office of the applicant’s contracting party, the applicant can obtain design protection covering 64 contracting parties with the same effective filing date in each jurisdiction. The international registration has the same effect as national registrations with the national offices of each of the designated contracting parties – unless protection is refused by the respective national office for its territory.
A major advantage of the Hague System is the centralized management, not only enabling a centralized application of the international registration, but also centralized renewals and modifications.
Benefits of accessions:
Inclusion of the U.S. and Japan brings significant benefits for designers, in particular the following:
- Cost and filing efficiency: All contracting parties, including U.S. and Japanese applicants, can now file international design applications with one single international application designating the desired contracting parties using one language and paying one set of fees. Legal costs can also be reduced, because in many countries there is no requirement to instruct a national agent. This said, design applications designating the U.S. will still require a local agent.
- Representations of design: Under the Hague Agreement representations of the design can be filed in the form of “photographs or other graphic representations” with unclaimed subject matter being indicated by “dotted or broken lines or coloring”. This allows applicants to file international applications designating the U.S. with photographs, computer-aided drawing or solid model representations, whereas national U.S. design applications will continue to require formal line drawings. It is, however, not yet clear how examiners will treat applications which do not contain line drawings.
- Provisional rights: International design applications are published by the International Bureau of the WIPO. For applications that claim protection in the U.S., publication now entitles the applicants to provisional rights enabling them to recover damages from infringements occurring between publication and issuance. In contrast, U.S. national design applications are not published until they issue, and therefore do not give rise to such provisional rights.
- Extension of protection for U.S. designs: The accession by the U.S. has led to an extension of protection of designs in the U.S. from 14 to 15 years as international registrations afford protection in increments of five years up to a maximum of 25 years, depending on the law of the respective contracting party. The protection period in Japan is twenty years.
Complexities of accessions:
Despite these benefits, there is a lot to consider when filing an international design application. Hague applications are examined under the local rules of each designated contracting party which each have different standards and formal requirements. Accordingly, it may be difficult to file one single application that satisfies the legal standards of all designated contracting parties.
For example international applications designating the U.S. must identify the inventor, include a claim and an inventor’s oath or declaration as well as an information disclosure statement. Furthermore, International applications designating Japan should include a set of orthographic six-view drawings or representations.
The following differences in application systems must also be considered:
- Substantive Examination: Many contracting parties, including the EU, do not provide for a substantive examination procedure regarding design applications. This means that the office will not examine a design for which protection is sought against prior designs and assess whether it meets the requirements of novelty and originality before registering it. In contrast, the U.S. and Japan provide for such substantive examination procedure. Therefore, applicants wishing to obtain an international registration designating the U.S. or Japan will have to make sure that their application meets the strict examination requirements of these jurisdictions.
- Concept of Unity: Generally, the Hague Agreement permits up to 100 designs in one and the same application as long as all designs belong to the same Locarno Class. This means that for example in Europe a hammer and a screwdriver can be filed with the same application and go through the same application process before being registered as separate embodiments. This said, the U.S. and Japan have a much stricter standard of unity applying a single-design application system. Japan has meanwhile revised Japanese Design law so that an international registration including multiple designs will be considered as having been filed as multiple design applications in Japan for each single design. The application fees thus increase according to the number of designs in the international application. International applications designating the U.S. must still be directed to a single invention to avoid rejection.
The accessions of the U.S. and Japan shortly after the accession of South Korea in 2014 entail a significant expansion of the Hague System and support designers worldwide. Further countries such as Canada, Russia and China are also expected to join and the recent accessions may encourage further countries to consider joining. Accordingly, there is a growing potential in international design registrations, which will likely become a more important tool to obtain international protection. Still, applicants should carefully consider their global filing strategies weighing the pros and cons of the various filing systems.