Insights: Alerts 4 Key Takeaways: The Hague Agreement & Design Filings – Things You Need to Know & Do

Written by Babak Kusha

Kilpatrick Townsend partner Babak Kusha, along with a panel of other thought leaders, recently presented a Knowledge Group webinar on the topic of “The Hague Agreement and Design Filings.” The Hague Agreement is an international treaty that provides a design protection registration system for designated member countries and intergovernmental organizations.

Key takeaways from the presentation include:

  • The Hague System is short for the WIPO-administered Hague System for the International Registration of Industrial Designs.
    • Hague Convention Treaty went into effect for the U.S. on May 13, 2015.
    • U.S. design patents resulting from applications filed on or after May 13, 2015 will have a 15-year term.
    • U.S. applicants are allowed to request design protection in the European Union and 66 contracting parties of the Geneva Act of the Hague Agreement.
    • Non-U.S. applicants can file a Hague design application designating the U.S. for
      examination by the USPTO.
  • Worldwide Hague International applications grew by over 35% in 2016.
    • The high growth is due to the Hague System’s expansion to:
      • Japan
      • U.S.
      • The Republic of Korea
    • The Hague System continues to expand geographically:
      • 66 members
      • 83 countries
    • The Hague Agreement offers a simplified procedure for filing in all member countries, there are some advantages:
      • A single set of formalities.
      • A single set of drawings is used in all designated countries.
      • Drawing requirements may be different in some countries.
      • Local examination process and legal standards remain unchanged.
    • Advice: Carefully plan and select countries where product is sold or sourced and consider strengths/issues for enforcement.
  • Here are two views of The Hague System.
    • Applicant’s view – what is good:
      • A cost-effective way to get design protection in many countries.
      • Can include many designs in one application.
      • Single, unified process.
      • Overcome some shortcoming in national systems – due to harmonization.
    • Attorney’s view:
      • Will need to know laws in every jurisdiction.
      • Local associate is now out of the loop.
      • O.K. if national or regional office does not substantively examine.
      • Likely to be much more expensive to fix, so D.I.R.F.T. (do it right the first time).
      • Getting the best design rights.
      • Should know the laws in every designated country.
      • Minimize challenges for enforcement.
      • Push past formalities.
  • Should clients use the Hague Convention?
    • Yes, when it makes business sense for the client.
    • Benefits:
      • Minimizes law firm fees – avoid multiple filings, one fee to be paid.
      • Minimizes administration – bypasses additional 6-month inquiry.
      • Broader and quicker initial coverage.
      • Application will publish, but publication can be delayed.
    • Challenges:
      • Similar up-front official fees.
      • One size does not fit all.
      • Limited, albeit growing, membership.
      • Insufficient experience to know where problems may arise.

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