U.S. Implementation of the Hague Agreement

The Patent Law Treaties Implementation Act of 2012 (the “PLTIA”) includes provisions to implement the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague Agreement”). Proposed rules for administering the PLTIA were published in the Federal Register on November 29, 2013. However, final rules have not yet been issued, and the United States has still not deposited the instruments of ratification necessary for bringing the new law into effect.[1]

The objective of the Hague Agreement is to provide a way in which a single design application can give rights to protection for that design in several countries while preserving the rights of those countries to exclude from protection any designs that do not qualify for protection under their own laws.  Thus, if in compliance with the national laws of a designated country, an international design registration will have the same effect as a national design registration or design patent in that country.

The Hague Agreement is in some ways similar to the Madrid Protocol for trademarks in that there is no need for separate national filings. Once an international application is filed, the World Intellectual Property Organization (WIPO) as the administrator of the treaty will transmit the application to the countries designated in the international application. After an examination for irregularities is conducted by the International Bureau, registration will occur and unless postponement of publication is requested, publication will normally occur six months after registration. The designated countries can submit any objections to the application under their national laws and if this occurs, the international design will have no effect in such country.

Protection under the Hague Agreement is only available to citizens, domiciliaries or corporations of countries that are members of the agreement. The effect of an international filing is the same as if the applicant had filed the application in each of the member countries that are designated in the application.[2] Applications may be filed either directly with the International Bureau in Geneva, or in the national office of those member states that permit it.[3]

Features of the Hague Agreement explained in more detail are as follows:

1)         International design protection is confined to applicants who are nationals of a contracting country, domiciled in a contracting country, or have an effective industrial or commercial establishment in a contracting country.[4]

2)         An international design application may be filed either at the applicant’s national office or directly with the International Bureau of WIPO.[5]  The application can be filed in English or in French.[6]  Applications filed in national offices will be forwarded to the International Bureau for further processing. Applications will normally have to include photographs or “other graphic representations” of the design.[7] However, in cases where the design is two-dimensional and the applicant wishes to defer publication (as discussed below), specimens of the design may be supplied instead.[8]  This provision should be of special interest to the textile industry.

3)         The International Bureau carries out an examination of whether the technical requirements of the agreement are satisfied, and if no irregularities are found, the application will proceed to registration. Publication will normally occur six months after registration, but may occur earlier if the applicant so requests.[9] However, where any of the designated countries provides for deferment of publication, provision is made that in some circumstances publication may be delayed up to 30 months from the earlier of the filing date or the priority date of the application if the applicant so requests.[10]

4)         Once the registration has been published, the International Bureau will send a copy of the publication to each of the designated countries who will then advise the International Bureau within six months of whether the registration meets the requirements of their national laws.[11] Designated countries that substantively examine design registrations[12] or that allow the filing of oppositions will have one year to advise the International Bureau of whether an international registration meets the requirements of their national laws.[13]  Registrations that do not satisfy the requirements of the national laws of a designated country will have no effect in that country.¹¹ If any country gives notice that a registration is not in compliance with its national laws, the applicant shall have the same rights in that country to seek re-examination or appeal as it would have had if the application had been filed as a national application in that country.[14]

5)         The treaty provides that multiple designs may be included in the same application, however all products to which such designs relate must be in the same class under the Locarno classification. Moreover, national offices are allowed to retain unity requirements for design registrations such that if an international application does not comply with the unity requirements of a designated country, that designated country can require that the registration be divided into separate registrations.[15]

6)         Invalidation proceedings may be brought against any registration on the ground that it does not qualify for protection under the national law of a designated country. If a competent authority declares under such invalidation proceedings that an international registration does not qualify for protection, such authority may hold that the registration ceases to have effect in that designated country.[16]

7)         The initial term of protection is five years from the registration date, and two additional five-year renewal periods are provided. Renewal for longer periods may be possible in designated countries that provide for longer periods of protection under their domestic design laws. Renewal may be done for some or all of the countries originally designated. Renewal fees are payable to the International Bureau.[17]

In the United States, implementation of the Hague Agreement is effected by new Chapter 38 (sections 381 – 390) of Title 35 of the United States Code.

Under 35 U.S.C. 382, international design applications may be filed in the United States Patent and Trademark Office (USPTO), and the USPTO “shall perform all acts connected with the discharge of its duties under the treaty, including the collection of international fees and transmittal thereof to the International Bureau.”[18] Furthermore, subject to US secrecy requirements, “international design applications shall be forwarded by the Patent and Trademark Office to the International Bureau, upon payment of a transmittal fee.”[19]

Under 35 U.S.C. 383, the requirements for filing an international design application in the USPTO include compliance with the normal requirements for design patent applications, and that the designated countries be indicated in the application.

U.S. law further provides, under 35 U.S.C. 384, that the filing date of an international design application in the United States is the effective registration date. However, an applicant may request review of the filing date in cases where the original international filing does not meet U.S. design patent requirements such that the effective registration date is delayed. Under 35 U.S.C. 385, an international design application designating the United States has the same effect (from its filing date) of a U.S. design patent application originally filed in the United States, and 35 U.S.C. 386 provides for priority claims involving international design applications.

U.S. law further provides, under 35 U.S.C. 389, that the USPTO will examine international design applications designating the United States for compliance with the general requirements of U.S. design patent law (Chapter 16 of Title 35 of the United States Code). When examination is successfully completed such that the requirements of U.S. design patent law are held to be satisfied, the USPTO will issue a design patent based on the international application.

Under 35 U.S.C. 390, the publication of an international design application designating the United States is deemed a publication under 35 U.S.C 122(b). Therefore for an international design application designating the United States, unlike national design patent applications, there is the possibility of obtaining compensation from others who use the design prior to the grant of a patent if notice is given to infringers. Also, an international publication will make an application prior art as of its filing date.

Other changes to U.S. law required for implementing the Hague Agreement include an amendment to 35 U.S.C. 171 to change the term of a design patent to fifteen years from grant rather than fourteen from grant. This will apply to all design patents granted on applications filed after the law comes into effect. Additionally, 35 U.S.C. 171 is also amended to provide that the filing date for design patent applications will be the date on which a specification and drawings are filed. This is consistent with the practice in other member countries of the Hague Agreement who do not require claims for design applications. It seems, however, that although a claim will not be required to secure a filing date in the United States, a claim will nevertheless have to be eventually filed within a prescribed period of time as set out in amended 35 U.S.C. 111.

The Hague Agreement, and its implementation in the United States, offers exciting opportunities for parties seeking to register designs in multiple countries by providing a more streamlined and cost effective process. Moreover, the implementation of the Hague Agreement by the United States and other member countries has also led to further integration and harmonization in one of the least harmonized areas of intellectual property.

End Notes:

[1] The Hague Agreement-related provisions of the PLTIA will go into effect when the treaty enters into force in the United States. This will occur three months after the United States deposits its instrument of ratification or at any later date indicated in the instrument of ratification.

[2] Hague Agreement Article 7. Article 5 requires that the applicant designates the countries for which protection is sought at the time of filing.

[3] Hague Agreement Article 4.

[4] Article 3.

[5] Article 4.

[6] Rule 6.

[7] Article 5. If a designated country requires information relating to the identity of the creator of the design, a brief description of the features of the design or a claim, the international application must include such items.

[8] Article 5(1)(iii).

[9] See Article 10, Rule 17.

[10] Ibid.

[11] Article 12, Rule 18.

[12] This group includes the United States.

[13] Rule 18(1)(b).

[14] Article 12(3).

[15] Article 13.  In the United States, because design protection is afforded under the Patent Act and protection is determined by the claim which always reads, “The ornamental design for a  …. as shown,” it is necessary to limit the application to designs that share common features of patentability.  As long as this requirement is complied with, multiple embodiments are possible.

[16] Article 15.

[17] Article 17.

[18] 35 U.S.C. 382

[19] Ibid.