Designed for simplicity, the path to filing an international design patent application may not be straightforward

  • May 20 2015
  • |
  • Category: News

By Jason Scher

The Hague Agreement concerning the International Registration of Industrial Designs (the “Hague Agreement”) took effect in the U.S. on May 13, 2015.  Qualified Applicants can now apply for global design protection in the jurisdictions of Contracting Parties to the Hague Agreement by filing an international design application through the United States Patent and Trademark Office (the “USPTO”).

In the wake of United States patent law changes pursuant to the America Invents Act (e.g., first-to-file), Title I of the Patent Law Treaties Implementation Act, which carries the Hague Agreement into effect in the United States, serves to further harmonize United States and international patent laws.  Most significantly, the Hague Agreement allows a single design application to be filed simultaneously in the United States and any of the other 63 Contracting Parties to the Hague Agreement.  This single international design application may include up to 100 different industrial designs of the same Locarno class.  The application can be filed indirectly through the USPTO -with an additional processing fee- or directly through the World Intellectual Property Organization.  Despite the additional processing fee associated with Hague Applications filed indirectly through the USPTO, these filings will significantly limit costs associated with translations, file management, and foreign associate coordination.  Advantageously, the procedural benefits afforded by the Hague Agreement are clear: global filing simplicity with reduced costs.

Other notable changes provided by the Hague Agreement include:

  1. increasing the term of all issuing United States design patents filed on or after May 13, 2015 to 15 years from issuance, whether filed through the Hague Agreement or not;  and
  2. publishing of design applications to provide Applicants with provisional rights for obtaining reasonable royalties as of the publication date (e.g., 6 months from filing) from an infringer who had actual notice.  Beware, however, that while Hague filings may contain up to 100 different designs, provisional rights will only attach to a first elected embodiment.  Specifically, the provisional rights do not transfer to non-elected embodiments filed in divisional applications that claim priority to the initially-filed design application.

Although procedural aspects of U.S. and international patent laws are more harmonious, patent law, particularly on issues of scope and enforcement, remain far from harmonized.  The substantive rules governing design rights among the Contracting Parties remain quite variable.  Thus, while an Applicant may benefit from the Hague Agreement, one must remain mindful of the jurisdictional differences which impact the ability to enforce design rights and which may be negatively impacted by utilizing the new filing system.

The design rights offered by the Contracting Parties of the Hague Agreement, whether classified as a registration or a patent, vary greatly between Contracting Parties.  For instance, in contrast to the U.S. substantive examination of design applications, many of the Contracting Parties utilize a simple filing system that provides a design right without examination.    In addition, the Applicant may have inconsistent obligations for obtaining filing dates in different jurisdictions.  For example, to establish a United States filing date, all design applications must include a claim even though other foreign jurisdictions do not have this requirement – a measure that may plague foreign Applicants designating the United States.  Further, United States Applicants may jeopardize claim construction breadth of the designated United States application in order to meet the filing date requirements of some foreign jurisdictions that require a brief description (e.g., Romania).  In Pacific Coast Marine Windshields, Ltd. v. Malibu Boats, LLC, No. 13-1199 (Fed. Cir. Jan. 8, 2014), the Federal Circuit recently clarified that prosecution history estoppel applies to United States Design Patents.  Although an argument could be made that this estoppel may not apply equally to Hague filings, given the nascent disposition of the Hague Agreement with respect to the United States, one cannot be certain how a United States court would interpret wording provided in a brief description of a Hague filing.  Thus, Applicants would be wise to err on the side of caution, carefully formulating a filing strategy necessary to achieve desired objectives while keeping in mind the impact of providing a potentially limiting description on the U.S. filing.

Further despite harmonization of filing, the Hague Agreement does not provide a universal drawing standard.  The drawing standards of the Contracting Parties run the gamut with respect to shading, line style, and even the appropriate number of views.  Again, these discrepancies can impact the effectiveness and/or usefulness of Hague filings.

Although there are currently 64 Contracting Parties to the Hague Agreement, including the United States, Applicants should be sure to confirm that each sought after jurisdiction is a Contracting Party to the Hague Agreement.  Otherwise, a direct filing will be necessary to establish appropriate priority for those  jurisdictions that are not yet parties to the Hague Agreement.  China, Canada, and Australia are some of the more notable jurisdictions that are not currently Contracting Parties to the Hague Agreement.

In short, while some filing and procedural benefits exist, one must still carefully consider how and where to apply for design protection using the Hague Agreement.  Indeed, in some instances, it may not only be desirable, but actually necessary to file directly in jurisdictions to adequately and efficiently protect design rights: the United States may be one of them.  As the international standards for filing requirements and drawings become more universal, the benefits and usefulness of Hague filings will improve. But for now, the Hague Agreement provides just another filing tool, offering some efficiencies, while its use in many jurisdictions still requires strong local counsel to assist in complying with local requirements and to ensure proper scope and enforceability of resulting design rights.