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IP Alert
IP Alert: U.S. Applicants May Now File Design Applications Under the Hague Agreement

May 14, 2015

As of May 13, 2015, U.S. patent laws have been amended to implement provisions of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, July 2, 1999 (“the Hague Agreement”). U.S.-based applicants may now file a single international design application that designates one or more “contracting parties” where design protection is sought. The “contracting parties” are the individual countries that have acceded to the Hague Agreement, along with two multinational groups, the European Union and the African Intellectual Property Organization. Additionally, non-U.S. applicants may now designate the U.S. for protection in international design application filings. 

Under the Hague Agreement, applicants file a standardized application directly with the International Bureau of WIPO (“the Bureau”) or through certain contracting parties as offices of indirect filing. The Bureau will review the application for compliance with certain formal requirements. Specifically, the Bureau will confirm that (a) the application was filed in English, Spanish, or French; (b) the official form provided by the Bureau has been completed; (c) the application includes reproductions of the design or designs sought to be patented; (d) the application specifies the countries where protection is sought; and (e) fees are paid. Notably, fees must be paid for each designated contracting state at the time of filing. This is unlike the practice under the Patent Cooperation Treaty for utility patents, where individual country fees may be delayed for up to 31 months from the priority date. 

If these formal requirements have been satisfied, the Bureau will register the design in the International Register. The Bureau will publish the application within about six months, absent an alternative request by the applicant. Upon the initial filing of the application, applicants may request immediate publication of their international registration. Applicants in some cases also may elect deferred publication. Certain contracting parties do not permit deferred publication, so applicants may not elect deferred publication when those parties are designated. Other contracting parties limit the period of deferment of publication to 6 or 12 months. Absent one of these restrictions, the deferral period may extend up to 30 months from the priority date.

Upon publication, the Bureau will transmit a copy of the published application to each designated contracting party. Each such party will then begin substantive examination of the application according to its own individual laws. Substantive prosecution generally proceeds as it would if the application was filed directly with the patent office of that contracting party. Accordingly, filings designating the U.S. will be examined for compliance with 35 U.S.C. §§ 102, 103, and 112, and applicants must submit inventor declarations and comply with the duty of disclosure. Also, while a single Hague design application may include up to 100 different designs in the same Locarno Classification, such applications will be subject to U.S. restriction practice.

Notably, while the official form provided by the Bureau does not require a written specification, the U.S. Patent and Trademark Office (USPTO) will continue to require a brief description of the drawings section of the application. Therefore, inclusion of such a description should be included in the international application when the U.S. is designated. Similarly, the official filing form does not require a title. If an international application designating the U.S. is not filed with a title, the USPTO has stated that it may look to the particular article specified in the claim and establish a title. Therefore, applicants likely would prefer to include such information in the initial filing to avoid having the USPTO select the title for them.

The Hague Agreement provides that the designated states have up to 6 or 12 months from the date of publication—with the deadline varying among contracting parties—to issue a refusal. If no refusal is issued within that time period, the international registration is deemed to have the same effect as a granted design under the law of that contracting party. The USPTO stated in the Federal Register that the USPTO does not regard the failure to timely send a notice of refusal as conferring enforceable patent rights; while seemingly inconsistent with the Hague Agreement, applicants should assume that the USPTO’s interpretation will be correct.

If a contracting party issues a refusal, the refusal is transmitted to the Bureau, which then transmits the refusal to the applicant. Where the U.S. is the contracting party, prosecution will then be handled directly with the applicant according to normal U.S. practice, with the applicant filing any necessary response with the USPTO and any further USPTO correspondence being sent directly to the applicant. It appears that other contracting parties will handle prosecution correspondence similarly. 

Although much of the prosecution of an international application designating the U.S. will track that of a typical direct U.S. filing, there are a few notable distinctions. 

First, information disclosure statements will be considered by the USPTO if submitted to the USPTO within three months of publication of the international registration. Information disclosure statements filed after that time period will considered as provided for in 37 C.F.R. § 1.97.

Second, continued prosecution applications (“CPA”) are not permitted for international applications. For example, a continuation application rather than a CPA may be required in order to file an information disclosure statement if the time periods under 37 C.F.R. § 1.97 are not met. 

Third, all U.S. design patents, whether filed as an international application or directly in the U.S., will now be accorded a term of 15 years from date of issuance. Design patents in other countries or regions may have a nonrenewable term as in the U.S. or a five-year term from the date of international registration that is renewable in additional five-year increments. 

Overall, the Hague Agreement seeks to standardize the design application process. Still, applicants should not expect that substantive prosecution of the applications will be standardized as well. Also, it is not clear that the use of the Hague Agreement will result in any significant cost savings, particularly in light of the requirement that fees be paid for each designated state with the initial filing and the likely need to enlist the assistance of foreign patent counsel during substantive prosecution.

For more information, please contact Fitch Even partner Calista J. Mitchell, author of this alert.


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