The Hague System for the International Registration of Industrial designs is an effective vehicle for centralized acquisition of design patents in multiple jurisdictions and subsequent maintenance thereof.
Generally, a single International Design Application (“IDA”) is filed with the International Bureau (“IB”) at the World Intellectual Property Organization (“WIPO”), designating a number of selected contracting jurisdictions, i.e., participating countries or regions, for registration. Filing of the IDA with WIPO streamlines basic filing requirements and bibliographic data.
Upon filing, the IDA is reviewed by the IB for mandatory formal requirements which must be included in every IDA, such as, for example, drawings, creator(s), a brief description or indication of the product(s) constituting the design, a claim and the designated contracting countries or regions. The IB also checks for any additional country specific requirements, which must be included with the IDA when that contracting country is designated. For example, applications designating the United States must include a signed inventor’s Oath or Declaration. If the IDA does not comply with the formal requirements, WIPO will notify the Applicant of the irregularity with an opportunity to correct. Otherwise, WIPO issues a Certificate of International Registration and publishes the IDA in the International Design Bulletin.
After publication, the IB transmits the IDA to each designated contracting country for prosecution on the merits. Non-examining Offices have six months to inform the IB of any refusal to grant. Substantively examining Offices have twelve months to inform the IB of any refusal to grant, e.g., due to an alleged lack of novelty or inventiveness of the design(s). If a contracting country refuses grant, a notice of refusal is issued with an opportunity to respond. A Response should be filed directly through the rejecting Office by a locally licensed practitioner.
If no refusal is issued by a respective Office, protection is deemed to be automatically granted in that respective jurisdiction under its established laws. The initial period of protection under the Hague System is five years, which may be renewed twice, thereby guaranteeing at least 15 years of protection. Individual contracting party legislation may allow for a longer duration of protection.
To date, the Hague System includes ninety-two countries. The United States joined the Hague System in 2015. Other notable contracting countries include the European Union, Japan and South Korea. One notable missing country is China.
A procedural timeline of the Hague system provided by WIPO is shown below.
- Martin Belisario, Partner | mbelisario[at]panitchlaw.com
- Ragi Elias, Associate | relias[at]panitchlaw.com
Compliments of Panitch Schwarze Belisario & Nadel LLP – a member of the EACCNY.