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

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.