Upon implementation of the Hague Agreement, any person who is a national of the United States, or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States, will be permitted to file international design applications with the U.S. Patent and Trademark Office. Similar to the process for filing for an International Trademark Registration under the Madrid Protocol, the Hague Agreement filing should simplify the process and, potentially, reduce the costs for securing protections for design rights in more than 60 other jurisdictions around the world. Once the Hague Agreement application has been reviewed for certain formalities, it will be automatically transmitted to the designated countries/jurisdictions, where it will proceed to examination and/or registration.
Foreign applicants will be permitted to designate the United States in any international applications they initially filed abroad, which will likely increase the number of U.S. design patent applications. Foreign applicants more accustomed to the simple registration system, such as the European Community, will face new challenges as they file for protection in substantive examination countries such as the United States.
Both foreign and U.S. applicants should see an initial reduction in costs because, in both instances, applicants will no longer need to hire local patent counsel to initiate the filing process in jurisdictions outside of where the international design application was filed. Applicants will also be permitted to include up to 100 designs within a single Hague Agreement application. The inclusion of multiple design embodiments in a single application will undoubtedly result in extensive restriction requirements once the U.S. application begins substantive examination. One added benefit U.S. design patent owners will realize, as a result of the U.S. entry into the Hague Agreement, is the extension of the design patent term from 14 years to 15 years for all new design patent applications filed after the effective date of the Act.
With the full implementation of the Hague Agreement, U.S. and foreign applicants will have the opportunity to greatly streamline their design patent/industrial design filing process for many countries, potentially reducing overall design prosecution costs around the world. At the same time, however, the implementation and use of the Hague Agreement will add potential new complexities to U.S. and foreign design patent/industrial design practice. Potential issues include:
Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and our colleagues. If you have any questions about this update or would like to discuss this topic further, please contact your Foley attorney or the following:
Marshall J. Brown
Richard J. McKenna