Hague Agreement Rules Published by USPTO Creating Strategic Considerations for Applicants

On April 2, 2015, the USPTO published its final rules to implement the Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement), with an effective date of May 13, 2015. The Hague Agreement enables qualified applicants to apply for design protection in the contracting states of the Hague Agreement by filing a single standardized design application. The key benefits for applicants are the administrative ease of filing a single application for protection in multiple countries and avoiding the expense of hiring counsel to file these applications in each selected country, as is the current practice. This streamlined process should result in a reduced barrier to entry for applicants to acquire geographically broader design protection through simplification and reduced costs.

Summary of U.S. Rules to Implement the Hague Agreement

The U.S. design patent system is one in which the application must be substantively examined to ensure compliance with both the administrative requirements and the substantive legal requirements of design patent protection in the United States. However, many foreign countries do not provide substantive examination of design applications, operating a simple filing system instead. One challenge of the Hague Agreement is to develop rules to accommodate the more restrictive U.S. examination system and the dramatically different simple filing systems.

Some of the highlights of the major changes to the U.S. system implemented in the rules issued today include:

• Standardizing formal requirements for international design applications
• Treating an international design application that designates the United States as having the same effect from its filing date as that of a national design application
• Permitting an applicant’s failure to act within a prescribed time limit in an international design application to be excused as to the United States under certain conditions
• Providing a right of priority to international design applications
• Establishing a patent term for design patents, issuing from both national design applications and international design applications, from 14 years to 15 years from the date of grant
• Providing provisional rights for published international design applications that designate the United States
• Establishing the USPTO as an office that can accept international design applications
• Providing a system for substantive examination by the USPTO of international design applications that designate the United States

(See the Summary of Major Changes in the rules.)

In order to be entitled to a U.S. filing date under the Hague Agreement, many foreign applicants will need to alter the content of their foreign filing. Specifically, the U.S. laws require each design patent application to include a claim to the invention, e.g., “We claim the ornamental design for a BOTTLE as shown and described.” Foreign applications do not require the inclusion of a claim; but in order to secure a U.S. filing date under the Hague Agreement, all applications must include a claim. Therefore, foreign applicants may need to change the form of their original design filing.

Similarly, U.S. applicants may need to change the content of their filings in order to take full advantage of the Hague system. Specifically, some countries require the inclusion of a brief description of the characteristic features of the industrial design, but such a written description would typically not be included in a U.S. design patent application. However, in order for a U.S. applicant to be entitled to a filing date in some foreign countries, the application must include this brief description. (See Article 5(2) of the Hague Agreement.) At first blush, adding this language to a U.S. filing would appear to be a simple process; but the USPTO suggests that whatever language is included as part of this description of characteristic features can be used to define the scope of any resulting U.S. design patent.

These new rules will clearly require more thought and strategic drafting by both U.S. applicants seeking the benefit of the Hague Agreement outside the United States, and similarly require analogous thought and strategic drafting by foreign applicants seeking access to the U.S. system through the Hague. Foley’s Design Rights team of professionals will supplement this alert with more detailed analysis on the Hague rules in the coming weeks.

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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:

Kristin M. Anderson
Washington, DC
202.295.4482
kanderson@foley.com

Richard J. McKenna
Milwaukee, Wisconsin
414.297.5723
rmckenna@foley.com

Alexander J. Neuworth
Milwaukee, Wisconsin
414.319.7029
aneuworth@foley.com