New ‘One Stop Shop’ for Worldwide Design Protection May Not Increase Convenience
by James Hayne
On May 13, 2015, the United States joined the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement). In doing so, the United States is now one of 64 Contracting Parties to a collection of agreements relating to the intellectual property (IP) rights that protect the look or appearance of an item or product. In theory, the Hague Agreement will allow a simpler, more cost-effective way for U.S. parties to gain design protection across the world, while also making it simpler and easier for foreign parties to gain design protection in the United States. In reality, the benefits for United States applicants are questionable and of only limited value.
To provide a little background, designs are protected in the United States through design patents which are issued after a rigorous examination by a Patent Examiner at the U.S. Patent Office. Some other countries have similarly thorough examination, while others have a simpler registration process without a full, or in some cases any, substantive examination. In the United States, design patents protect the aesthetic appearance of an object or article of manufacture, such as its shape, texture, surface patterning, etc., rather than functional characteristics of the object (e.g., how it operates, what it accomplishes, etc.), which are protected by the far more common utility patent. Furthermore, design patents, like utility patents, only provide protection within the specific country where the patent is granted. Each country also has its own standards of examination, scope of the rights granted, and enforcement policies for patent applications and patent enforcement. Not surprisingly, two identical design patent applications, filed in two countries, can result in two very different levels of protection.
Prior to the United States joining the Hague Agreement, in order to seek foreign design protection, a U.S. applicant would have had to file a separate design application in each individual country. Each of these foreign applications was then treated individually and design patents were granted or rejected in each respective country independent of the outcomes in any other country.
Now, under the Hague Agreement, it is possible to prepare and file a single application with the International Bureau of the World Intellectual Property Organization (WIPO) to begin the examination process for multiple countries. The International Bureau first examines the application for completeness and correctness (i.e., examination on formalities), and if the application is acceptable, the International Bureau will publish an International Registration. Copies of the publication are then sent to each country designated in the application. Each country then examines the International Registration according to local procedures and laws. Allowance or rejection at each individual country is communicated back to the International Bureau, and for countries where the application is found allowable, protection is granted within that country for a minimum of 15 years from the date of the International Registration with renewal fees due to the International Bureau every five years.
Under the Hague Agreement, a single application can include up to 100 different designs, so long as they are all in the same class of goods. Although this appears to provide a much simpler means of getting a family of related designs examined in multiple countries, it should be noted that while all Contracting Parties are required to accept the International Registration, each is still free to examine, and possibly reject, the application on substantive issues. As such, prior to filing, it is still best practice to engage local counsel in each desired country to ensure that the application will not run afoul of any local standards, such as quirks in drawing interpretation. For example, the use of dotted lines or shading lines in a figure contained in a design application can convey different meanings in certain jurisdictions.
Filing fees under the Hague Agreement depend on a multitude of factors including the number of designs, the number of figures, the number of words used to describe the design, as well as which countries are designated. With regard to designations, calculating filing fees is not simply a matter of multiplying a set cost by the number of designated countries. There are three basic tiers for designation fees that a country falls under depending on the type of examination which occurs at the national level, but certain countries also have additional fees due at the time of filing. Because the filing costs are highly variable and dependent on the countries of interest, under some situations there may be cost savings as compared to filing multiple national applications, but that may not always be the case.
Although the Hague Agreement allows up to 100 designs in a single application, it also allows Contracting Parties to limit the national examination of an application to a single design. As such, filing a single International Application with multiple designs may provide some upfront cost savings, but once national examination begins, that one application will be split up, resulting in additional costs for each design. This cost deferment certainly can be beneficial, but it is not the great cost savings that a 100-design application sounds like it will provide.
Another perceived benefit of the Hague Agreement is that a Contracting Party is required to send the International Bureau a notification of refusal within six or 12 months of publication of the International Registration. Supposedly, without receiving such a refusal, the application is assumed to be granted within that country, and perhaps in some countries that will be the case. The U.S. Patent Office, however, has expressly stated that a failure to send notification of refusal by the 12-month “deadline” does not confer any patent rights. Of course, without the U.S. Patent Office first issuing the design patent, there is no way to enforce the design patent in the United States.
Furthermore, the 12-month deadline is just for an initial refusal, with additional examination still permitted. In the United States this means that to comply with the “deadline” an Examiner merely has to issue within 12 months of the publication a first office action including a restriction, a rejection, or even an objection on grounds other than the formalities already examined by the International Bureau. The Examiner can then shelf the pending application indefinitely while still meeting the requirements of the Hague Agreement.
For each country where the application is found allowable, the Hague Agreement requires a minimum term of protection of 15 years from the International Registration date. Accordingly, the United States has now increased its term of protection from 14 years to 15 years from the issue date. This increased term applies to all design patents though, and not exclusively to those applications which enter the United States through the Hague Agreement.
The Hague Agreement now allows an applicant to file one international application for worldwide effect. When preparing that application, however, you still need to consider varying national standards. When filing the application you still pay fees for each designated country upfront, and for each country designation you still go through examination in that country individually. This lack of clear benefits is partially why for the first 70 years of its existence, the Hague Agreement has seen very little use. However, since the year 2000, the number of Contracting Parties has more than doubled, and with the addition of the European Union in 2008, the United States as well as Japan last week, and with Canada, Russia, and China currently working towards accession, the potential benefit of the Hague Agreement will likely increase. Moving forward, if you are considering filing a design application outside of the United States, it probably is worth the time to consider the Hague as an alternative to filing multiple national applications.