Final Rules Package Implementing Filing of International Design Applications Under the Hague Agreement in the United States Published

On April 2, 2015, the U.S. Patent and Trademark Office (USPTO) released the final rules implementing the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, better known as the Hague Agreement. The United States will fully implement the Hague Agreement when the rules go into effect on May 13, 2015.

While the rules are more than seventy pages long, there are four main points to understand about Hague filings, summarized below.

No. 1: The Term of U.S. Design Patents Extended to 15 Years from Issue

Starting on May 13, 2015, the term of all U.S. design patents will be 15 years from the date of issue. This is an extension of one year from the current 14-year term. 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.

No. 2: Hague Only Simplifies Filing; It Does Not Change the Substantive Examination or Design Rights in any Participating Country

Under the Hague Agreement, U.S. filers will enjoy the convenience of 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 over 64 territories through a single international application filed electronically. Other parties to the Hague include the European Union, South Korea, Japan, the African Intellectual Property Organization, and Switzerland. Here is a full list. Notably absent from the list are China, Canada, Australia, Brazil, and Argentina.

Hague filers can choose to file directly with the World Intellectual Property Organization (WIPO). But, the USPTO will also serve as an office of indirect filing, allowing Hague filings directly through the EFS-Web system (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, whereas the WIPO system accepts Swiss francs. Either way, filing through the Hague does not save filers money—in fact, there is an additional processing fee for filing through the USPTO. After examination or registration procedures, depending on the country, each contracting party (e.g., country) will issue its own design right (either registration or patent), which will be enforceable in that jurisdiction.

It is important to understand that the Hague only simplifies the procedure related to filing design applications. While Hague does afford some savings in translation costs, it does not lower the cost in terms of government fees.

Also, it does not change the substantive rules governing registration/examination or enforcement of the resulting design rights. For instance, the United States will still require that applicants identify the inventor of the design, include a claim, and submit an oath or declaration from the inventor. Only if a particular country allows the application as-filed, would applicants probably avoid having to retain local counsel. If, however, a particular country refuses to allow the application, then the applicant would need to address any issues directly with the applicable agency in that country, and retaining local counsel would likely become necessary.

No. 3: International Design Applications When Published by WIPO Will Enjoy Provisional Rights, But Only for One Embodiment

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 qualifying for provisional rights.

But 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 multi-design 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, then the applicant must take care in picking which design will enjoy those provisional rights.

No. 4: Hague Filers Beware—No “Universal Drawing Standard” Is Applied Throughout the Countries Participating in Hague

Crafting a single set of figures for an international design application for Hague filings that will 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 European Union 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 “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.

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, 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 design patent applicants will benefit from a slightly longer term for their newly issued patents. 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.