Hague Agreement on Industrial Designs
The Hague Agreement on industrial designs provides an efficient way for an applicant to register and protect an industrial design in multiple countries.3 min read
2. Filing Strategies
3. Implementation of the Hague Agreement in the United States
The Hague Agreement on industrial designs provides an efficient way for an applicant to register and protect an industrial design in multiple, designated countries, referred to as “Contracting Parties.” If you want to register your design patent in more than one country, it is important that you have some knowledge of this agreement.
The Hague Agreement
This agreement ensures that the application process for registration of design patents is as easy as possible: not only are you able to apply in one language for all countries, but no translations are needed, which saves time and financial resources. You can file your application either through the office of your contracting party or the International Bureau of the World Intellectual Property Organization (WIPO).
It is possible to include up to 100 different designs in one application (as long as they all belong to one class in the International Classification of Industry Designs), and you are also free to designate any number of countries or international organizations.
A fee is payable for each country or region that you designate, which means that the more countries you choose, the higher your fee will be. This cost, however, will probably be significantly less than the amount you would have paid, had you filed your application directly in the foreign countries.
Currently the members of the Hague Agreement amount to over 66 countries and entities, including the U.S. and the E.U. Canada has also recently joined the agreement.
In order to afford your design patent maximum protection, there are three key elements to take into consideration when you are developing a filing strategy.
- Firstly, it is important to know that you are able to file for the registration of different variants of the same design concurrently, or that you can do so within the scope of a year.
- Secondly, you are able to choose the level of generality at which your patent or design is classified. There are limits though: if the level is too general, your design may not be considered valid, and if it is too specific, it may need to be protected against designs that are similar.
- Lastly, you should know that the level of protection your design will enjoy is dependent on the interpretation of the registration, and specifically on the images that you include.
Implementation of the Hague Agreement in the United States
The Hague Agreement became effective in the U.S. on May 13, 2015. Before the implementation of this agreement, a separate application had to be made in each designated country by the applicant. Typically, the U.S. applicant had to file an application in the U.S. first, and then had to apply in all the other intended countries within six months of the date of the initial application. The application for patent registration in multiple countries thus used to require a lot of the applicant's time and money.
After the implementation of the Hague Agreement in the U.S., a U.S. applicant is now able to file a single application through the WITO, or the USPTO, for registration in multiple countries. Furthermore, only one formalities examination, instead of one in each designated country, is now required. This ultimately makes the process far more efficient.
You can file an application electronically, either directly with the WIPO or through the USPTO. If you decide to apply through the latter, then the USPTO will forward the application to the WIPO on your behalf. After the WIPO has received the application, it will be reviewed to ascertain that it complies with all the formal requirements. If so, the application is published and then forwarded to all relevant countries. In the designated countries the application is appraised according to each country's laws, and every country then has the right to refuse registration either within six or 12 months.
The Hague Agreement and its accompanying implementation legislation has affected quite a few amendments to the U.S. law with regards to design patents. Some of the changes, for instance, are:
- An extended patent term of 15 years.
- The publishing of international design applications.
- The formation of tentative rights based on published applications.
If you need further help in understanding how the Hague Agreement can help you register design patents internationally, you can post your legal need on the UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers on its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.