On December 5, 2012, the U.S. House of Representatives passed Senate Bill S.3486, Patent Law Treaties Implementation Act of 2012, in part to implement the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs (“the Hague Agreement”). The Hague Agreement is an international treaty that allows the filing of international design applications eligible for protection in all of the currently 60 member states and intergovernmental organizations, including the European Union. Ratified by the Senate five years ago, the bill is expected to be signed by President Obama before the end of the year. Although the provisions of the new law would not take effect for another 12 months, the promise of a more unified system for obtaining international design protection is a welcome change for those frustrated with the time, cost and inconvenience of filing multiple national design applications across the globe.
One Application to Register Them All
If signed into law, the accession of the United States would represent a significant addition to the Hague Agreement, similar to the addition of the European Union in 2008. Although the President’s signature would have no immediate practical impact in the design community, it would prompt the United States Patent & Trademark Office (USPTO) to begin drafting rules and procedures to implement the Hague Agreement’s international application system one year later.
Under the Hague Agreement, an applicant may file an international design application designating any or all member states and organizations. This system enables the filing of a single application for a design with the World Intellectual Property Organization (WIPO). The international design application can be filed with a domestic receiving office, which will forward the application to the International Bureau of WIPO. The single application will be eligible for protection both domestically and abroad in all designated member states and organizations.
Procedurally, an international design application filed under the Hague Agreement is first examined by WIPO’s International Bureau to ensure formal requirements have been met. The application is then published by WIPO, although applicants may in some instances opt to defer publication for up to 30 months.
Next, the application enters a refusal period, during which each designated member state will assess the claimed design’s eligibility for registration under its own domestic criteria. As an example, the USPTO would review international design applications designating the United States for both novelty and nonobviousness, just as it would with a regular design application filed under 35 U.S.C. § 171. Unity of the claimed design may also be restricted by the member states. For example, the United States can require that restriction of patentably distinct multiple embodiments or separate designs be included in the international design application. During the refusal period, any member state may refuse an international application not meeting its own criteria for a protectable industrial design. In this way, each member state remains able to regulate the designs for which they afford protection in accordance with their own domestic laws.
After the refusal period, the international design application may be registered in all member states not issuing a refusal of the application. The resulting registration provides the same protection in each member state as if the design had been individually registered under that state’s domestic system. In essence, applicants can file one application to register in all designated member states and organizations.
Less Work, More Protection
For U.S. applicants seeking global protection for their industrial designs, this new international application procedure would present numerous advantages. Most notably, U.S. applicants could prepare a single, English-language application, with only one set of documents, to pursue design protection globally. For U.S. applicants, foreign filing requirements would require the initial filing with the USPTO as a receiving office for WIPO. Design inventions created outside of the United States could be filed directly with WIPO.
In contrast to potential future design filings under the Hague Agreement, the current situation requires filing numerous national applications in various formats and languages around the world. This process is timeconsuming, expensive and inconvenient, not only in terms of the legal fees associated with preparing the domestic application and associated foreign filing documents, but also in terms of the fees for foreign counsel required to shepherd each foreign application through its respective examination. Although an international design application would still require designation fees for each designated member state and the potential involvement of foreign counsel to the extent protection is refused in a particular member state, the savings associated with preparing a single international application alone is likely to significantly reduce the cost of obtaining global design protection.
In addition to simplifying the application and examination process, renewal fees for registered international designs are handled centrally by WIPO. Under this system, the task of tracking and paying maintenance fees in various regional patent offices is essentially eliminated. Moreover, to comply with the Hague Agreement, S. 3486 includes a revision to 35 U.S.C. § 173 extending the term of design protection in the United States an additional one to 15 years from grant (for applications filed under the domestic or international system).
With the addition of the European Union to the Hague Agreement in 2008, the expected addition of the United States is poised to become a catalyst for additional countries, such as Japan, South Korea, China, Canada, Australia and Brazil, to also assent to the Hague Agreement in the near future. Many in the international community are hopeful that bringing these additional countries under the Hague Agreement will further strengthen the international design application system and, ultimately, reduce the barriers to obtaining global design protection.