Design patent protection is territorial. A simplified process of protecting a design patent in multiple countries can be done via the Hague International Design System. This article explores the basics and what to expect when using the Hague International Design System.
To secure protection in a particular country or jurisdiction, one must file a design patent in each country or jurisdiction. There are two ways to file: directly or indirectly.
Direct versus Indirect Filing
Before the U.S. joined the Hague Agreement Concerning the International Registration of Industrial Designs in 2015, the only way for a U.S. entity to obtain design patent protection in a foreign country or jurisdiction was to file directly with each foreign country’s intellectual property office. This would require the assistance of a foreign associate in preparing and filing the application.
Since 2015, a U.S. entity can file indirectly utilizing the Hague International Design System, which simplified the process by permitting applicants to file one international design application and designate all interested member country or jurisdiction. The Hague International Design System is administered by the World Intellectual Property Office (WIPO). There are currently 75 contracting parties to the Hague Agreement.1 If design patent protection is desired in countries that are not signatories to the Hague Agreement, an applicant would still need to be file directly in those countries or jurisdictions.
The Hague international design application allows the inclusion of up to 100 designs in one application, so long as the designs all belong in the same Locarno classification.2 Each design may include multiple views (called reproductions). The reproductions can be lined drawings or photographs, may be black and white or in color, and can include both types in one application.
The cost of filing a Hague international design application will depend on the number of countries or jurisdictions designated, which country or jurisdiction is designated, the number of designs, and the number of reproductions, etc. As with direct filings, a Hague international design application can claim priority to an earlier filed U.S. design patent application. Note that it is not necessary to first file a U.S. design patent application (unlike the Madrid International Trademark System).
Review of the International Design Application
After filing a Hague international design application, WIPO will review the application for compliance with formalities. If WIPO determines non-compliance, it will issue a Notice of Irregularities and typically provide three (3) months to correct any irregularities. If the application is compliant, WIPO will issue an International Registration Certificate. If all things go smoothly, an International Registration Certificate can issue as little as a month. WIPO will also publish the International Registration in the International Designs Bulletin, typically 6 months after filing.
Examination by Designated Country or Jurisdiction
After publication by WIPO, each designated country or jurisdiction will review the design(s) and decide whether it meets the country‘s or jurisdiction’s domestic requirements to grant protection. This is the same process for applications filed directly with each country or jurisdiction. Some countries will substantively examine the application on unity, novelties, etc. (e.g., U.S., Canada), while others will review on formalities only (e.g., European Union). A country or jurisdiction must issue a refusal within 6 months (in some instances 12 months3) of publication of the International Registration and notify WIPO. A response must be filed directly with the country’s or jurisdiction’s intellectual property office in an effort to overcome the refusal, which typically requires the assistance of a foreign associate. If a country or jurisdiction approves the design(s), then it may explicitly issue a Statement of Grant and notify WIPO. For certain countries or jurisdictions, a Statement of Grant is issued for each design in the International Registration along with the country’s or jurisdiction’s own Certificate of Registration and/or Registration number. However, note that a country or jurisdiction is not required to issue a Statement of Grant and upon passage of 6 months (or 12 months) without a refusal, protection is deemed to be granted automatically for that country or jurisdiction.
Term of an International Registration
An International Registration is effective in those countries that have agreed to grant protection or did not timely refuse protection. The initial term of the International Registration is five (5) years from the filing date. It may be renewed at least twice for a term of fifteen (15) years, and for certain countries or jurisdictions, for a maximum term of twenty-five (25) years (e.g., Europe, Japan)4. Renewal is done centrally via WIPO. Similarly, assignment and change of address can also be done centrally via WIPO.
The Hague International Design System can be a very cost effective way to protect designs in multiple countries or jurisdictions. This is especially true when there are multiple designs involved. To maximize the benefits of the Hague International Design System, it is important to ensure the application is properly filed to minimize the possibility of refusal by a designated country or jurisdiction.
1 https://www.wipo.int/export/sites/www/treaties/en/documents/pdf/hague.pdf. China is working towards joining the Hague Agreement.
3 Canada, Democratic People’s Republic of Korea, Finland, Iceland, Israel, Japan, Kyrgyzstan, Lithuania, Mexico, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Spain, Syrian Arab Republic, Turkey, United States of America.