A First: U.S. Design Patent Issues Based on Hague Agreement Design Application

As we previously reported, the USPTO has been accepting International Design Applications (“IDA”) under the Hague Agreement since May 13, 2015. On April 26, 2016, the USPTO issued U.S. Design Patent D754,922, for a Cosmetics Applicator, the first U.S. design patent based on a Hague Agreement filing.

Other than in the notation in paragraph 80, “Hague Agreement Data”, the remainder of the patent looks just like a standard design patent. Paragraph 80 indicates that the application has the same “International Filing date” as its U.S. filing date. Paragraph 80 also indicates the International Registration Publication Date, which would be the date by which provisional rights may be available under 35 U.S.C. § 154(d).

D922 is also notable because the application was filed directly by the applicant, a German company, and because the application was a first-action allowance and no IDS was filed, the applicant never needed to involve a U.S. representative in the prosecution of the application.

Hague applications must be filed either directly with WIPO or indirectly with the USPTO, as an Office of Indirect Filing. The USPTO forwards applications to WIPO for a procedural formalities review and publication. After publication, WIPO then forwards the IDA to each contracting party (e.g., country) designated by the applicant for substantive examination (where applicable). Each contracting party will issue its own refusals (the Hague Agreement term for “rejection”).

As reported at this year’s USPTO Design Day on April 19, the USPTO reported that it has received 834 IDAs who filed with the USPTO and 193 who filed directly with WIPO. The USPTO allowed 16 applications and refused 27 applications. In light of the disparity between applications filed with the USPTO and those that came directly to WIPO, the WIPO representative at the USPTO Design Day stated that this was likely due to the requirement that applicants have a foreign filing license (either from an earlier-filed U.S. application or by separate request) prior to filing directly with WIPO. Many applicants may choose to file with the USPTO as an office of indirect filing because the USPTO will conduct its review and provide the foreign filing license before forwarding the IDA to WIPO for publication. But, Applicants who do have the foreign filing license and choose to file directly with WIPO can take advantage of the error-checking features built into the WIPO online filing system. Thus, WIPO recommends for applicants to file directly when possible.