On April 2, 2015, the USPTO published its final rules to implement the Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement), with an effective date of May 13, 2015. The Hague Agreement enables qualified applicants to apply for design protection in the contracting states of the Hague Agreement by filing a single standardized design application. The key benefits for applicants are the administrative ease of filing a single application for protection in multiple countries and avoiding the expense of hiring counsel to file these applications in each selected country, as is the current practice. This streamlined process should result in a reduced barrier to entry for applicants to acquire geographically broader design protection through simplification and reduced costs.
Summary of U.S. Rules to Implement the Hague Agreement
The U.S. design patent system is one in which the application
must be substantively examined to ensure compliance with both the
administrative requirements and the substantive legal requirements
of design patent protection in the United States. However, many
foreign countries do not provide substantive examination of design
applications, operating a simple filing system instead. One
challenge of the Hague Agreement is to develop rules to accommodate
the more restrictive U.S. examination system and the dramatically
different simple filing systems.
Some of the highlights of the major changes to the U.S. system
implemented in the rules issued today include:
- Standardizing formal requirements for international design applications
- Treating an international design application that designates the United States as having the same effect from its filing date as that of a national design application
- Permitting an applicant's failure to act within a prescribed time limit in an international design application to be excused as to the United States under certain conditions
- Providing a right of priority to international design applications
- Establishing a patent term for design patents, issuing from both national design applications and international design applications, from 14 years to 15 years from the date of grant
- Providing provisional rights for published international design applications that designate the United States
- Establishing the USPTO as an office that can accept international design applications
- Providing a system for substantive examination by the USPTO of international design applications that designate the United States
(See the Summary of Major
Changes in the rules.)
In order to be entitled to a U.S. filing date under the Hague
Agreement, many foreign applicants will need to alter the content
of their foreign filing. Specifically, the U.S. laws require each
design patent application to include a claim to the invention,
e.g., "We claim the ornamental design for a BOTTLE as shown
and described." Foreign applications do not require the
inclusion of a claim; but in order to secure a U.S. filing date
under the Hague Agreement, all applications must include a claim.
Therefore, foreign applicants may need to change the form of their
original design filing.
Similarly, U.S. applicants may need to change the content of their
filings in order to take full advantage of the Hague system.
Specifically, some countries require the inclusion of a brief
description of the characteristic features of the industrial
design, but such a written description would typically not be
included in a U.S. design patent application. However, in order for
a U.S. applicant to be entitled to a filing date in some foreign
countries, the application must include this brief description.
(See Article 5(2) of the Hague Agreement.) At first blush,
adding this language to a U.S. filing would appear to be a simple
process; but the USPTO suggests that whatever language is included
as part of this description of characteristic features can be used
to define the scope of any resulting U.S. design patent.
These new rules will clearly require more thought and strategic
drafting by both U.S. applicants seeking the benefit of the Hague
Agreement outside the United States, and similarly require
analogous thought and strategic drafting by foreign applicants
seeking access to the U.S. system through the Hague. Foley's
Design Rights team of professionals will supplement this alert with
more detailed analysis on the Hague rules in the coming weeks.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.