Published 04/05/2018 by
The Hague System for Protection of International Designs
Among the intellectual property services provided by the World Intellectual Property Organization (WIPO) is the international registration of designs. Over 68 members, known as Contracting Parties, constitute the Hague Agreement Concerning the International Registration of Industrial Designs, commonly referred to as the Hague System, through which a single international design patent application can be used for registering up to 100 designs. Generally, two Acts, the 1999 Act and the 1960 Act, constitute this agreement.
An “industrial design” is defined legally as the ornamental or aesthetic aspect of an article. This can be made up of three-dimensional features, such as the shape of the article, or can also include two-dimensional features such as patterns, lines, or color. Like a utility patent, an owner of a registered design patent has the right to prevent others from making, using, or selling an article that embodies their protected design. In order to begin the process of protecting a design, a person or entity may apply to several of the Hague Contracting Parties through a single international design patent application filed with WIPO. To be able to file an international design patent application under the Hague Agreement, a natural persons or legal entities must have a real and effective industrial or commercial establishment, or a domicile, in at least one of the Contracting Parties to the Hague Agreement, or must be a national of one of the Contracting Parties (or of a member State of an intergovernmental organization that is a Contracting Party). Under the 1999 Act, an international design patent application can also be filed on the basis of habitual residence in one of the Contracting Parties. The Contracting Party through which one of these requirements is fulfilled is then referred to as the “applicant’s Contracting Party” (under the 1999 Act).
Filing an International Design Application with the Hague System
Prior national application for or registration of a design patent is not required, and application to protect an industrial design can be done through the Hague Agreement to apply for protection at the international level before any other step. To claim priority to an earlier filed application for a design patent, the international application must be filed within six months of that earlier filed application.
A single international application can be a “multiple application” which has several different designs (up to 100). However, this may differ according to which Contracting Party is designated. Also, all designs included in the same application must be monoclass, meaning that they must all belong to the same class of the international classification of Locarno.
The application for patent can be electronically filed directly through the International Bureau or indirectly through, for example, the USPTO, and must contain a reproduction of the design to be protected, and the designation of the Contracting Parties in which the protection is sought. The application must be in English, French, or Spanish.
When the International Bureau receives the application, it will review it to ensure that the appropriate fees have been paid and that all formal requirements have been met. If so, the application will be given a filing date, and the industrial design will be registered and published in the International Register. If the requirements are not fulfilled properly, the applicant will be invited to correct the issues within a time limit.
The applicant may request a deferment of publication, but the period cannot exceed 30 months from the date of filing or from the priority date, if priority is claimed.
Examination of the International Application
Next, the offices of the designated Contracting Parties in the design patent application will then proceed with examination if such examination is required under their laws. If the examination results in a refusal of protection of the design, the office may notify the International Bureau. This notification should occur within six months from the date of the international registration publication (or up to 12 months depending on the particular office’s regulations).
Following this, using the USPTO as an example, the applicant may receive a non-final rejection, a final rejection, or an allowance.
A list of the Contracting Parties can be found at http://www.wipo.int/hague/en/members/
Further information about the Hague Agreement Principles from the MPEP can be found at https://www.uspto.gov/web/offices/pac/mpep/s2901.html and further information about fees from the MPEP can be found at https://www.uspto.gov/web/offices/pac/mpep/s2910.html
The fee calculator can be found at: http://www.wipo.int/hague/en/fees/calculator.jsp
A comprehensive guide to the Hague System can be found at http://www.wipo.int/hague/en/guide/ and http://www.wipo.int/treaties/en/text.jsp?file_id=285214
The Locarno Classification can be found at http://www.wipo.int/classifications/locarno/en/
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