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STRATEGY FOR INTERNATIONAL FILING
OF DESIGN PATENTS: HAGUE AGREEMENT
Often overlooked in the consideration for protecting intellectual property is a design patent. Many foreign jurisdictions provide a mechanism for obtaining design patents. Use of the Hague Agreement provides companies or individuals seeking design protection in participating foreign jurisdictions a mechanism for filing in multiple jurisdictions using a single application, often saving the company or individual time and money.
What is a Design Patent
While utility patents protect functional, or the mechanical components of a device, design patents protect the way the device looks. Typically, design patents are used to obtain protection for the shape of a device or surface ornamentation. Design patents are often obtained when 1) the underlying functioning of the device is not patentable, i.e. is not novel or nonobvious, or 2) when the underlying functioning of a device is patentable and the way the device looks is unique as well. In the situation outlined in 1, a design patent is the only option for obtaining patent protection. In the situation outlined in 2, an inventor may seek both a utility patent, i.e. protection of the mechanical aspects of the invention, and a design patent, i.e. the ornamental aspects of the invention.
Obtaining design protection is a valuable tool in any patent portfolio and provides an applicant many benefits. Design patents tend to be much faster to obtain. The average utility patent can take somewhere between 2-3 years to allowance. Design patents usually take between 9-14 months to allowance. Design patents are typically less expensive than utility patents to draft and prosecute. To begin the application process, all that is required is providing various views of the device. Often times the applicant is already in possession of such information, thus avoiding the need for lengthy application disclosures in order for the attorney to understand and draft a written description of the invention. While the protection may be limited to the look of the device, the short time to allowance provides the applicant a relatively quick mechanism to limit sales or manufacture of infringing devices and to seek monetary damages under an issued patent. In the U.S., design patents are enforceable for 15 years from the date of issuance, and no maintenance fees are required.
Hague Agreement and Design Patents
Just as patent laws of the United States provide a mechanism for protecting the shape or surface ornamentation of a device, many foreign jurisdictions, such as the European Union, China, or Japan, do as well. In fact, a broader array of protection may be obtained in many foreign countries under industrial design protection. Companies or individuals having design patent eligible subject matter should consider such protection if selling or manufacturing devices worldwide. While not new, an underutilized tool for obtaining design patent protection in multiple foreign countries is seeking protection through the Hague Agreement. The Patent Law Treaties Implementation Act of 2012 (PLTIA) was signed into law on December 18, 2012. The PLTIA was the basis for the implementation of the 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. The Hague Agreement took effect on May 13, 2015.
The Hague Agreement set up an international registration system, offering applicants the possibility of obtaining protection for up to 100 industrial designs in the designated member countries. Under the Hague Agreement, a company or individual may file a single international application in a single language either with the International Bureau of the World Intellectual Property Organization (WIPO) or through a proper governmental agency, i.e. USPTO. Filing under the Hague Agreement offers the applicant the advantage of avoiding the complexities of individual national procedures, which can be significantly different from country to country. Despite the requirement that the design patent must still be prosecuted and granted in each foreign county, the single application allows the applicant a means to save money as using a foreign agent in each country could be avoided in the filing stage. The Hague Agreement establishes the minimum content for the application. Once filed, the application is reviewed for compliance issues. However, each country may require additional content in the application. For example, foreign companies seeking patent protection in the U.S. must include a claim in the Hague Agreement application.
While the Hague Agreement allows an applicant a single filing, it is important to remember the application must still meet the requirements of patentability for each jurisdiction. If interested in filing a design application in multiple jurisdictions, consideration for the types and format of figures, and other filling requirements, is needed to ensure the use of the Hague Agreement is beneficial and results in granting of design patents in each of the jurisdictions.
By: David Zelner
Intellectual Property Attorney
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