A New Route to International Design Protection
May 13, 2015, marked the start of a new option for US applicants seeking to protect industrial designs abroad. On that date, the Hague Agreement, a treaty providing for the international registration of industrial designs, became effective for the US.
US patent law protects industrial designs through the grant of design patents, which accord exclusive rights to inventors of new and non-obvious designs for articles of manufacture. Design patents are intended to protect the ornamental appearance of an article, not its structural or functional features. While almost all countries provide protection for industrial designs, the US is one of only a few countries (China is another) that provide protection through patent law; most countries protect industrial designs through a sui generis registration system.
Prior to the entry into force of the Hague Agreement, US applicants who wished to obtain industrial design protection outside the country had to file an application in each jurisdiction in which they sought protection. Under the Hague Agreement, applicants can file a single international design application with either the USPTO or the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, and obtain protection in as many as 64 countries or intergovernmental organizations (for example, the European Union and the African Intellectual Property Organization) that are party to the agreement. Moreover, a single international application can provide for the registration of up to 100 related designs.
The Hague system works in a fairly straightforward manner. After an applicant files an international design application designating the countries and/or organizations in which the applicant desires protection, the International Bureau of WIPO examines the application to ensure that it complies with the agreement’s formal requirements. Assuming there is compliance (if not, applicants have three months to correct deficiencies), the International Bureau registers the designs in the international register, publishes the designs in the international design bulletin, and issues a certificate of registration to the applicant. Designated countries and organizations then have a period generally of 12 months to determine whether to refuse national registration. Some Hague countries, including the US, make that determination on the basis of substantive national law. Other countries grant national protection simply on the basis of the international registration. If national protection is refused, applicants have the same rights of appeal as if they had filed the application directly with the country or organization concerned. As a result of the Hague Agreement, all US design patents resulting from applications filed after May 13 will have a 15-year term.
Japan and Korea also recently joined the Hague Agreement. While the number of member countries is still small, US participation is prompting other countries – including China, Russia, Israel, Mexico, and the ASEAN states – to consider joining. The Hague system therefore shows considerable promise.
As with any new system, there will be early adopters and those who wait to see how participants fare in its initial use. Whether the Hague Agreement is right for you will depend largely on the nature of the designs you wish to protect, the countries in which you want protection, and whether or not you are willing to be an early adopter.