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International Design Patent Practice and Highlights of the New Hague Agreement

April 20, 2015 – On May 13, 2015 the US will join the Hague Agreement opening a new path for international design patent fillings.  The overall concept of the system implemented by the Hague Agreement is similar to that of the PCT for utility patent applications and Madrid Protocol used for the international trademark filings.  A US applicant will now be able to file a single international design patent application with the International Bureau and use that application to enter all jurisdictions which participate in the Hague Agreement.  With the recent joining by the US and Japan, Hague Agreement now has 64 member nations. Other notable members include almost all of Europe and Korea. Complete list of members can be found at http://www.wipo.int/hague/en/members/.

The Hague Agreement: What it does and does not do

            What it does:

            The Hague Agreement simplifies the process of filing international design patent applications.  Whether filing an international application through WIPO or an office of indirect filing such as the USPTO, an applicant will be able to file a single application and simply pay the fees associated with each jurisdiction they wish to enter.  In many jurisdictions it may be possible to limit or bypass the use of local counsel entirely thereby decreasing the overall cost of internal filing.

            The Hague Agreement also increases the term of US Design patents from 14 years to 15 years from the issue date on applications filed on or after May 13, 2015.  This extra year of term will be applied to all design patents regardless of whether they are filed through the new Hague system or not.

            For the first time, it is possible for design patents applications to be eligible for provisional rights in the US.  Published WIPO international design patent applications will be eligible for provisional rights assuming the other requirements of 35 U.S.C. § 154(d) are met, e.g., providing actual notice of the published patent application to relevant party.  Previously, provisional rights were not available to design patents as they did not publish until they issued.

            Other effects of the Hague Agreement include amending Rule 1.84(a)(2) to eliminate the petition and fee for color drawings or photographs in design applications.  Please note that it is still unclear how Examiners will treat applications which do not contain line drawings during examination.

            Rule 1.155 is also amended to provide expedited examination of US designated international design applications where the international design application has been published pursuant to Hague Agreement Article 10(3).

            Additionally, please note that international design application which designate the US are subject to the duty of disclosure under § 1.56.

            What it does not do:

            The Hague Agreement does not offer discounts for its use and therefore does not save applicants money in fees associated with each jurisdiction. 

             The Hague Agreement also does not affect the application requirements, drawing standards, or examination standards of any of the member jurisdictions.

            This is particularly relevant to applicants who are considering entering the US with an International Application under the Hague Agreement.  The US has the world’s strictest design examination standards, particularly with regards to specification and claim language and the content and quality of drawings.  Additionally, because of the sensitivity to adding new matter to an application in the US, it can also be difficult to correct rejected applications once on file.

            In view of the above, it may be prudent to confer with US counsel before filing international design applications that are intended to enter the US to guard against uncorrectable international application defects.  A positive side to the US strict requirements is that an international design applications prepared with a goal of meeting US requirements will most likely be acceptable in most of the other Hague Agreement member jurisdictions.

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