Effective Ways to Protect Your Intellectual Property: International Design Patents
The Hague Agreement Concerning the International Deposit of Industrial Designs (the “Hague Agreement”) is an international registration system by which an industrial design can be protected in multiple countries through the filing of a single international application. The Hague Agreement, therefore, provides an international application procedure for industrial designs that is similar to the Patent Cooperation Treaty (PCT) for patent applications.
The Hague Agreement is not new – it was first enacted in 1925, with the latest agreement constituted by two international treaties signed in 1960 and 1992. But it has only been available to U.S. applicants since 2015, when the U.S. joined, so it is still a relatively new option for U.S. industrial designers.
The main goal of the Hague Agreement is to make it easier and cheaper for industrial designers to protect their designs throughout the world. This is made possible through a single international design patent application, filed in a single language, with one set of fees. If properly prepared to meet the requirements of each country or region selected by the applicant, the application can proceed to registration or grant in each country/region without needing to hire a local representative in each jurisdiction, obtain translations, or prepare separate applications – potentially saving significant cost and time. This, however, can also be a trap, especially for non-US applicants that select the U.S., because the requirements for U.S. design applications are more stringent than requirements in many other countries and many problems cannot be fixed after the application is filed. All too often we have seen these problems first hand, when foreign applicants ask us to assist with responding to rejections from the U.S. Patent and Trademark Office (USPTO) in a previously-filed international design patent applications designating the US.
There are also a limited number of countries in which you can get a design patent or design registration via an international design patent application. As of December 2018, there are 70 countries or regions that are parties to the Agreement, including the U.S., Canada, the EU, Japan, Singapore, the UK, and South Korea. Unfortunately, China is not currently a member and so a separate design patent application must be filed directly with China’s State Intellectual Property Office to obtain protection there.
One big change for U.S. applicants is that international design patent applications are published six months after filing, whereas U.S. design applications don’t publish until grant, which is typically one to two years after filing. Applicants can also request immediate publication. This early publication creates the opportunity for design applicants to obtain provisional rights, which were previously only available to utility patent applicants. This could, however, be a drawback for applicants that would prefer to delay publication until the patent is granted.
Although an international design patent application can be filed directly with the World Intellectual Property Organization (WIPO) or indirectly via a contracting party, such as the USPTO, U.S. applicants should remember that a foreign filing license is required before filing an application for an invention made in the U.S. So, although it would seem to be more efficient to avoid the USPTO processing fee and file directly with WIPO, a U.S. applicant should file through the USPTO or obtain a foreign filing license from the USPTO before filing outside the U.S.