As many of you may know, the U.S. rules regarding the international registration of industrial designs takes effect on May 13, 2015. Following is a brief summary of the features, advantages and disadvantages of this new system, along with links to helpful articles and websites for additional information regarding participating countries, international application filing form, and WIPO filing fees and fee calculator.
FEATURES
The Hague agreement greatly simplifies the process for filing a design application in many countries at once, but it does not change the substantive law in any country. In this way, the Hague is similar to the Patent Cooperation Treaty (PCT) for international utility patent applications.
An international design application (IDA) may be filed directly with the International Bureau (IB) of WIPO, or indirectly through the United States Patent and Trademark Office (USPTO) or other member country. The IDA may designate countries which are members to the Hague system. The IB conducts a formalities review before publishing the International Registration (IR) and forwarding the IDA to the designated countries, which will proceed to treat the IDA in accordance with their laws and procedures.
Once received by the USPTO, an IDA designating the U.S. is treated just as a standard U.S. design patent application, both requiring a declaration from the Inventor, and other formal documents from the inventor and/or applicant.
An IDA that designates the U.S. must include a claim, and the IB will not accord an IR date until a claim is filed. If an IDA does not have a claim, the IB will invite the applicant to submit a claim within a prescribed time.
In order to file indirectly through the USPTO, an applicant must either be “domiciled” in the U.S., or have a “real and effective industrial or commercial establishment” in the U.S.
Significant countries which do not currently belong to the Hague Agreement include China, Australia, Mexico, Canada, Hong Kong, and Taiwan.
ADVANTAGES:
A1. 15 year term (measured from issue date) for all U.S. design patents issued after May 13, 2015; no maintenance fees.
A2. Provisional rights to obtain royalties for infringement of one embodiment commence upon publication of IDA by WIPO (but see #D3 below).
A3. Can file up to 100 designs in the same Locarno class in a single IDA ( but see #D2 below)
A4. USPTO must issue first action within 12 months.
A5. Savings in translation costs as international applications may be filed in English, Spanish or French.
A6. Cost savings in that no requirement to initially retain local counsel in each country of interest. Need to retain US counsel upon receiving a Notification of Refusal (rejection) from USPTO.
A7. The USPTO will regard the priority date of all international design applications as the day they are filed at the IB.
A8. If filed indirectly at the USPTO, a foreign filing license will automatically be generated, which is required before foreign filing any design that was first “made” in the US.
A9. All maintenance fees may be paid at WIPO.
A10. All changes to Applicant or Ownership information, e.g. change of corporate name, may be made at WIPO.
A11. WIPO publication of the IR is prompt, generally within a few months after filing. Publication may be deferred.
A12. Relatively inexpensive official filing fees and publication fees. The cost per design and per country is generally under $100, and goes down as the number of designs in an application increases and the number of designated countries increases.
DISADVANTAGES:
D1. Strict drawing requirements of the USPTO are not changed; thus, pre-filing advice of US design counsel may be highly beneficial.
D2. Countering ability to file up to 100 designs (see #A3 above), the USPTO will continue to apply restriction practice, requiring an applicant to elect one group of embodiments that is deemed patentably distinct from other groups of embodiments. In the U.S., failure to file divisional applications claiming non-elected embodiments may have adverse legal consequences.
D3. Benefit of early publication ( see #A2 and #A11 above) must be weighed against providing competitors with early disclosure of new design.
D4. Continued Prosecution Applications (CPA) in USPTO are not permitted for Hague filers. CPAs are helpful in certain situations, e.g. when new prior art is discovered that must be disclosed to the USPTO.
PUBLICATIONS AND LINKS TO ADDITIONAL INFORMATION:
Main Features and Advantages of Hague Agreement (WIPO)
Application for International Registration (Form DM/I) and Annexes
WIPO Instructions for completing Form DM/I and Annexes (Form DM/I.INF)
Important: Revised Form DM/I and Annexes accounting for the United States and Japan becoming parties to the Hague Agreement will become available on WIPO’s web site on May 13, 2015
FEES:
Fees concerning the international design application to be paid to WIPO:
http://www.wipo.int/about-wipo/en/finance/hague.html
Hague System Fee Calculator:
http://www.wipo.int/hague/en/fees/calculator.jsp
Transmittal fee required for international design applications filed through the USPTO as an office of indirect filing: $120 (37 CFR 1.1031 (a))
Petition Fee to convert an international design application to a U.S. design patent application: $180.