On April 2, the U.S. Patent and Trademark Office (USPTO) issued Final Rules to implement the provisions of the Hague Agreement concerning the international registration of industrial designs. The Agreement is effective in the United States on May 13, 2015.

In contrast to utility patents, which are directed to the functional features of a product, design patents (generally referred to as industrial designs outside the United States) are directed to the ornamental features of a product. If a product has both ornamental and functional features, it is possible to file both design and utility patent applications for that product. Currently, to effect worldwide design protection, a separate application is required in each intended country. Typically, U.S. applicants file a U.S. design application and then file separate design applications in foreign countries within six months of the filing date of the U.S. application (the deadline for claiming priority to the filing date of the U.S. application).

Thus, in order to pursue worldwide design protection under current procedures, U.S. applicants are required to expend significant time and money on a design application in each respective country or region.

However, the Hague Agreement allows for the filing of a single design application with the International Bureau of the World Intellectual Property Organization (WIPO), or through the USPTO, that is effective in the United States and any other designated countries. The Agreement also provides for a single formalities examination that eliminates the need for each country to conduct its own formalities review. Thus, this new international process has the potential to yield significant gains in efficiency for companies that plan to protect their designs outside the United States.

The Agreement provides for the filing of an application that covers up to 100 designs, provided the designs are in the same class of the International Classification of Industrial Designs (Locarno Classifications). No translations are needed (filing of the application in English is sufficient), which saves time and financial resources. At the time of filing, the applicant must designate countries or regions where protection is desired, and there is a fee associated with filing in each designated country. So, the greater the number of designated countries, the greater the total fees; however, these fees are expected to be significantly less than the initial costs of filing directly in foreign countries.

The application can be filed electronically, either directly with the International Bureau of WIPO or indirectly through the USPTO. If the application is filed through the USPTO, the USPTO will transmit the application package to the International Bureau of WIPO on behalf of the applicant. After the application is transmitted to the International Bureau, the application is reviewed for compliance with formal requirements (there is no substantive, prior art review). If the application complies with formal requirements, then the application is published, and the published application is transmitted to the countries designated by the applicant.

Each designated country has six or 12 months from publication to refuse registration, depending upon the level of substantive examination provided under that country’s law. Such a refusal must be based upon substantive examination (not formalities objections). Some countries will conduct a full substantive examination, whereas other countries will simply allow the application to pass to registration. When the United States is designated, a refusal of registration will be provided in the form of an Office Action issued by the USPTO, and standard U.S. prosecution procedure would follow from that point.

Applicants that use the streamlined design application process of the Hague Agreement are expected to see significant cost savings, more predictable patent prosecution and maintenance costs, and improved consistency in foreign design application filings. Additionally, the publication of the international design application can give rise to provisional rights that do not exist under current U.S. design application procedures, which do not allow for publication of pending design applications.  Thus, this process may be appealing to applicants that plan to manufacture or sell products outside the United States.

However, at this time, not all developed countries have agreed to participate in this process. The list of participants currently includes the United States, the European Union, Korea, the African Intellectual Property Organization (OAPI), and Japan. Other countries, such as Canada, China, and Russia, are considering participation, and the process will become increasingly appealing as additional countries agree to the terms of the Agreement.

Ballard Spahr’s Intellectual Property Department comprises lawyers and counselors who are on the cutting edge of patent, trademark, unfair competition, copyright, trade secret, Internet, licensing, and trade dress matters. We have a deep bench of lawyers with advanced technical degrees who identify and protect our clients' global intellectual property interests, and offer strategic prosecution and due diligence guidance relating to strategic product development, mergers and acquisitions and licensing, and portfolio restructuring.

For more information, please contact John A. Chionchio at 215.864.8842 or chionchioj@ballardspahr.com, Joseph P. Anderson III at 678.420.9448 or andersonjp@ballardspahr.com, or the Ballard Spahr attorney with whom you work.


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