Insights: Alerts 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:
- 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.
- 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.
- Similar up-front official fees.
- One size does not fit all.
- Limited, albeit growing, membership.
- Insufficient experience to know where problems may arise.
While we are pleased to have you contact us by telephone, surface mail, electronic mail, or by facsimile transmission, contacting Kilpatrick Townsend & Stockton LLP or any of its attorneys does not create an attorney-client relationship. The formation of an attorney-client relationship requires consideration of multiple factors, including possible conflicts of interest. An attorney-client relationship is formed only when both you and the Firm have agreed to proceed with a defined engagement.
DO NOT CONVEY TO US ANY INFORMATION YOU REGARD AS CONFIDENTIAL UNTIL A FORMAL CLIENT-ATTORNEY RELATIONSHIP HAS BEEN ESTABLISHED.
If you do convey information, you recognize that we may review and disclose the information, and you agree that even if you regard the information as highly confidential and even if it is transmitted in a good faith effort to retain us, such a review does not preclude us from representing another client directly adverse to you, even in a matter where that information could be used against you.