Hague international design patents

Hague countries, by L. tak: CC-BY-SA-4.0

The Hague system allows you to use one application to file design patents in many countries simultaneously, but it is quirky and doesn’t work everywhere.

Thinking of filing your US design patent application outside the US?  Although for some countries like Canada, China, and India, you will have to file locally, for Europe (EU), Japan, and Korea, consider using the Hague system.  In either case, think fast, because the deadline is often just six months after your initial filing.

What is the Hague system?  The Hague system (Hague Agreement Concerning the International Registration of Industrial Designs) is a series of international treaties allowing applicants from participating countries to directly register design patents in other participating countries.  If you or your company is not a resident of a participating country, you are out of luck.  You must get international coverage the hard way by finding a local representative and filing with the local patent office.

The US signed up in 2015.  Other countries are also in the process of joining but are not in yet. There are presently 66 countries participating.  So as the map shows, coverage is still rather uneven.

The rules are not totally uniform. The drawing requirements and extent of post-filing examination can vary between countries.  The EU, for example, limits design drawings to a maximum of seven views, but otherwise, acts as a registration system that doesn’t require much subsequent effort.  By contrast, like the US, Japan also requires examination as well, and the applicant must thus do additional activities and pay additional fees.

Unlike US design patents, the Hague system allows for multiple related designs to be registered at the same time in one application.  However for those thinking of gaming the system for US design patents, realize that the USPTO will require you to select just one design, and pay extra to examine any other versions.  Still, if you are feeling indecisive, this is an interesting option to consider.  However, note that the Hague system also publishes all design applications within six months of filing, while the US does not, so there can be less confidentiality.

Hague system registrations must be renewed every five years, and can generally be renewed up to a total of 15 years total coverage. By contrast, after a US design patent has issued, the USPTO will give you 15 years of coverage with no maintenance fees.

Like other patents, the USPTO will accept Hague system patent applications and forward them on to the international office in Switzerland.  This should be the default method for US applicants because even design patents must pass a security review and get clearance before the applicant has permission to apply elsewhere.

International Trademarks: Madrid Protocol

Madrid Protocol countries
Madrid Protocol countries (US color or darker is “in”)

For US companies, the Madrid Protocol can be a low-cost and time efficient way of getting international trademark protection.

The internet makes it almost trivial to sell products and services internationally.  But how do you manage the IP for these products and services? The legal system has been lagging here. Although the 1970’s (pre-internet) PCT system simplifies the process of filing international patents, the underlying international patent system still remains cumbersome and expensive.  In the end, you still have to hire local law firms in each country and work with the local patent offices.

What is the situation in trademarks?  Almost reasonable!  This is because, in the early post-internet era, the international trademark system got a major upgrade, called the Madrid Protocol. So if you are a startup wanting to protect your trademark rights internationally, the Madrid Protocol is a reasonable and cost-effective way to do so.

The Madrid Protocol is a 1996-era refinement of an earlier 1891 Madrid trademark agreement.  The US and over 90 other countries (EU included) are presently members (see the darker countries on the world map), with Canada expected to join in the 2017 to 2018 timeframe.

The main advantage of the Madrid Protocol is that the applicant needs to only file once in the WIPO Madrid system in order to apply for trademark applications in a variety of different countries (such as the entire European Union at a single time).  The application fees, at least by patent standards, are reasonable (e.g. about $1600 to apply for full EU coverage).  This system minimizes the hassles and expense of hiring local law firms and dealing with local trademark offices in each country.

There are a few catches – the applicant must be associated with a Madrid subscribing country, so US based companies can do this; but Canadian companies — not quite yet.  You can’t start from scratch – rather you should have at least one national trademark application pending (and preferably issued), to form the basis of your Madrid application.  US applicants, for example, can use their pre-existing US trademark to file for Madrid coverage through the USPTO. The USPTO will check this Madrid application, and then forward it to the WIPO office in Geneva, Switzerland.

Some other cautions — in the event that your original national trademark application fails within the first five years after filing, your other Madrid filings will likely also fail. Additionally, the various local countries that you designate do have the right to refuse your trademark on an individual basis within the first 12-18 months after filing.

So additional research before filing is recommended.  At a minimum, check the Madrid ROMARIN database for conflicts. Check if your US trademarks might be “generic” or otherwise inappropriate in your Madrid target countries.  Madrid Protocol filings must be renewed every 10 years, so remember to put this on your long-term calendar as well.

International design patents

Good news for US inventors who are interested in filing international design patents.

Design patents are for unique designs for something that otherwise functions according to prior art.  In the US, inventions that function differently from prior art are covered by “utility patents”, while the unique ornamental appearance of a design is covered by a “design patent”.  Design patents are relatively easy to get, and presently last 14 years.

Although the Patent Cooperation Treaty (PCT) has provided utility patent inventors and owners with a simple (if expensive) way to begin to file their utility patents in various countries, the PCT system does not provide a mechanism by which an American design patent can be filed internationally.  This was a nuisance, because design patent standards can differ substantially from country to country, which made the process of obtaining international design patents (industrial design applications) complex and expensive.

Fortunately this is about to change.  On December 19, the Hague Agreement Concerning the International Registration of Industrial Designs was signed into law in the US.  The Hague Agreement can be viewed as a “PCT-like application” for design patents.

In addition to providing a standardized procedure for international filings, the Hague Agreement also extends the life of design patents to 15 years.

This agreement has actually been in the works for some time.  The original Hague Agreement was established in Geneva in 1999, and was ratified by the Senate in 2007!