Understanding the International Design Application: What it is and what it is NOT

On May 13, 2015, the United States officially became a Contracting Party to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.  This mouthful is typically summarized as: the United States joined the Hague Agreement.

This is a long-awaited step towards international harmonization of U.S. design patent procedures, but what does it really mean?  And how can you know if you should file a national U.S. design patent application or an application under the Hague Agreement, known as an International Design Application or IDA.

What Is the Hague?

The Hague system is largely sold as simplifying the filing and maintenance of international applications—a “one-stop shop” for filing a single application in any of the member countries.

An international application is filed either directly with the International Bureau (part of the World Intellectual Property Office (WIPO)) or indirectly with the applicant’s home office.  The WIPO registers the application, checks the application for certain formalities, publishes the application, and then forwards the application to the other members that the applicant has selected, known as Designated Contracting Parties.  Each Designated Contracting Party may choose to substantively examine the international application, but if the Designated Contracting Party does not issue a refusal in a designated period (either six or twelve months), the international registration has the effect of that member’s grant of protection.¹

Some important procedural points:

• Hague is a “members only” club.  The Hague has over sixty-four member territories, including Japan, South Korea, and the European Union (EU).  Click here for a full list.  Only applicants who have a connection to a member territory can use the Hague system, and applicants can only file applications directed to countries in the Hague.  Notably absent from the list are China, Canada, Australia, Brazil, and Argentina, although at least China, Canada, and Australia appear to be making plans to join the Hague in the near future.

• Applications can be filed directly with the WIPO or at the U.S. Patent and Trademark Office (USPTO).  As noted above, Hague filers can choose to file directly with the WIPO.  But, the USPTO will also serve as an office of indirect filing, allowing Hague filings directly through EFS-Web, the USPTO’s electronic filing system.  Filers who choose to file through the USPTO can pay for all filing fees, for filing in any country, in U.S. dollars; the WIPO system only accepts Swiss francs.  Filers who choose to file through the USPTO will not be required to apply for a separate foreign filing license.

• Applications may include up to 100 different designs.  Under the Hague Agreement, filers will enjoy the convenience of electronic filing up to 100 different designs (provided they are in the same “Locarno class,” e.g., “articles of clothing and haberdashery” or “medical and laboratory equipment”) in a single initial application.  Still, over 90% of Hague applications have ten or less designs, and nearly 40% have only one design.²

• Although the filing is centralized, the design right will be examined (or not) according to the laws of each individual member.  After following its examination or registration procedures, each Contracting Party (e.g., country) will issue its own design right (either registration or patent), which will be enforceable in that jurisdiction.  However, under the Hague, every Contracting Party has agreed to accept figures with broken lines to designate unclaimed subject matter, even if its own laws had not permitted such a convention before.

Few Changes to U.S. Law Under the Hague

Despite the hubbub, joining the Hague changes few substantive U.S. design laws.  But there are two changes in U.S. law worth noting:

Term of U.S. Design Patents Lengthened to Fifteen Years.  As part of joining the Hague, the United States agreed to lengthen the effective term of a design patent from fourteen years of the date of the issue to fifteen years.  This new term will apply to all issued design patents, whether they are filed through the Hague system or through the traditional U.S. filing system.

Provisional Rights Possible with WIPO Publication Under the Hague . . . .  U.S. design patent applications are not published until the patent issues and, thus, until the adoption of the Hague, it was not possible to have provisional rights under 35 U.S.C. § 154(d).  Section 154(d) confers the right to obtain a reasonable royalty from a party that infringes the invention “as claimed in the published patent application,” from the time the patent application is published until the patent issues, provided the party had actual notice of the published patent application.  With the adoption of the Hague, the publication of the International Design Application will qualify the underlying publication for provisional rights. Design patent applications filed under the standard U.S. system will still not be published and thus not qualify for provisional rights.

. . . But, Provisional Rights Under the Hague Are Limited.  Restriction practice is much more common with single-claim U.S. design patents, and the USPTO plans to continue to apply these same rules to the international design applications.  As noted above, international design applications may contain as many as 100 different designs.  It is important to note that any provisional rights will attach only to the first embodiment elected in a multidesign international design application.  These provisional rights will not transfer to any later-filed divisional applications that claim priority to the international design application.  Therefore, when planning a Hague filing strategy, if provisional rights are of concern and multiple designs are disclosed, then the applicant must take care in picking which design will enjoy those U.S. provisional rights (or else file multiple applications).

The Hague Has Some Important Caveats

The Hague is not a cure-all for the intricacies of foreign filing for design protection.  There are five important caveats to understand:

1. International Applications Are Published.  While this publication may be deferred, it is not possible to keep an application away from public view until the design patent issues, as is possible if an applicant files a U.S. design patent application.  This difference is important for companies that prefer to keep their designs secret (but still apply for protection) before a product launches.
2. Substantive Examination Procedures Remain the Same.  First, filing under the Hague does not change the substantive examination procedures of any member country.  The Hague only centralizes the filing, formalities examination, and annuity fees (in those countries that require them).  For instance, the United States will still require applicants to identify the inventor of the design, include a claim, and submit an oath or declaration from the inventor.  In Japan, applicants will still be required to submit the proper certification if they wish to take advantage of the grace period for prefiling public disclosures.
3. Filing Through the Hague Won’t Save Tons of Money.  Filing through the Hague does not generally save filers money in terms of government fees—in fact, there is an additional processing fee for filing through the USPTO.  Although filers may save money in translation costs (which generally aren’t required, provided the application is filed in English, French, or Spanish) and potentially in foreign counsel filing costs, depending on the quality of the application that is originally filed, the overall costs might not be lower.  For instance, only if a particular country grants the application as-filed would applicants probably avoid having to retain local counsel.  If, however, a particular granting authority refuses to allow the application as filed, then the applicant would likely need to address any outstanding issues via local counsel.
4. Enforcement Will Stay the Same.  Filing under the Hague does not change the substantive rules governing enforcement of the resulting design rights.  So if an application includes broken lines as a method of indicating that certain subject matter is not claimed, then these broken lines would still be subject to the local interpretation at the time of enforcement.  As we learned from the Apple v. Samsung cases, the meaning of broken lines may be different in the EU than in the United States.  Filing though the Hague would not change this situation.
5. No “Universal Drawing Standard” Is Applied Throughout the Countries Participating in the Hague.  Crafting a single set of figures for an international design application for Hague filings that satisfy all the participating countries will likely be difficult.  Those who regularly file for design rights in many parts of the world know that different jurisdictions have different rules and practices.  For instance, although the EU permits multiple designs in a single registration, each design is limited to only seven “views” (or figures).  In the United States, on the other hand, the rule is that a design must contain a “sufficient number of views to constitute a complete disclosure.”  So there may be some designs that need more than seven views to be deemed completely disclosed by the USPTO.  Other differences include preferences regarding shading of line drawings, the acceptance of photographs and computer-generated figures, and the number of perspective views versus orthographic (“straight on at eye level”) views that may be permitted.  These are just some examples of the differences in drawing standards and disclosure requirements in different countries, and the corresponding difficulties that applicants may encounter.

Bottom Line?  The Hague Is a Good First Step

Implementation of the Hague Agreement in the United States represents the largest change to U.S. design patent prosecution practice in recent memory.  In the future, the Hague could have a substantial impact on the U.S. design patent practice.  In 2014, 14,441 designs were filed through the Hague system, as compared to 23,657 U.S. design patents issued during that same year.  In the short term, all U.S. design patent applicants will benefit from a slightly longer term for their newly issued design patents. Applicants who desire provisional rights can file through the Hague and designate their application back to the United States.  In the long term, if drawings standards are harmonized between participating countries, then having the Hague system in place would be immensely helpful to filers who wish to file for worldwide rights.  As more countries join the Hague, there will likely be increased pressure to harmonize the drawing standard.  But only time will tell.

¹ http://www.uspto.gov/sites/default/files/documents/FINAL%20HAGUE%20FORUM%20SLIDES%204-29.pptx, at slide 12 (last visited June 13, 2015).

² http://www.wipo.int/edocs/mdocs/hague/en/wipo_hs1_15/wipo_hs1_15_1.pdf, at slide 24.