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.