Hague Agreement

U.S. Continues to Delay Ratification of the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs

June 11, 2010

Brief History of the Hague Agreement

The Hague Agreement is part of the legal framework of the Hague System -- a system that provides a simplified mechanism for registering industrial designs in contracting states. Under the Hague Agreement, an industrial design can be registered in any number of designated contracting states by filing a single international application, in a single language, with a single set of fees, and in a single currency.

Patent Law Treaties Implementation Act of 2012

December 10, 2012

S. 3486 (the "Act") has passed the House and the Senate, and awaits signature by the President.

The summary of this Act reads, with emphasis added:

Hague Agreement: A New Chapter for Protection of Industrial Design for the United States

March 7, 2013

On March 1, 2013, Teresa Stanek Rea (Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO) addressed the implementation of U.S. participation in the Hague Agreement on the Director’s Forum blog in "A New Chapter for Protection of Industrial Design for the United States."

The Patent Law Treaties Implementation Act of 2012, signed by President Obama, serves as the implementing legislation for both the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“the Hague Agreement”) and the Patent Law Treaty.

Hague Agreement (Guest Post)

April 10, 2013

Further to our prior coverage of the implementation of the Hague Agreement, we are pleased to publish the following from Audrey Pastoret, a guest of ours from France.

The Patent Law Treaties Implementation Act of 2012 signed by President Obama on December 18, 2012 implements the Hague Agreement in the United States. It is intended to provide industrial designs with protection in states and governmental organizations parties to this arrangement through a single international application effected at the WIPO. Before the Hague Agreement, an application had to be filed in every country where protection was desired, resulting in several applications being filed for a single design patent. Under the Hague agreement a single application can provide protection in multiple countries.

Proposed Rules Published: Changes to Implement the Hague Agreement concerning International Registration of Industrial Designs

December 20, 2013

The Patent Law Treaties Implementation Act of 2012 has resulted in new rules being proposed for implementing the Act.

On October 21, 2013, 78 FR 62367 was published as a final rule to implement the Patent Law Treaty, which generally does not affect design patents, but does provide restoring the right of priority after the 6-month period to claim priority, within 2 months from the expiration of the 6-month period and upon grant of a petition that shows the delay was unintentional.

IPO submits comments regarding Proposed Hague Rules

February 4, 2014

As previously reported, on November 29, 2013, 78 FR 71869 was published as a proposed rule to implement the Hague Agreement.

On February 4, 2014, the Intellectual Property Owners Association (IPO) submitted comments on the proposed Hague rules.

USPTO Updates PAIR User Interface to Provide Access to Hague Agreement Design Application/Patent Information

November 11, 2014

The U.S. Patent and Trademark Office (“USPTO”) recently updated its public and private Patent Application Information Retrieval (“PAIR”) graphical user interfaces to provide access to information regarding design applications filed pursuant to the Hague Agreement. Such information will not be available, however, until entry into force of the Hague Agreement with respect to the U.S., which will occur three months after the U.S. deposits its instrument of ratification with the International Bureau of the World Intellectual Property Organization (“WIPO”), unless that instrument specifies a later date.

Generally speaking, the Hague Agreementestablishes an international registration system which facilitates protection of industrial designs (i.e., design patents) in member countries and intergovernmental organizations (“Contracting Parties”) by way of a single, “standardized” international design application filed either directly with the International Bureau of WIPO or indirectly through an applicant’s Contracting Party.

Hague Agreement Will Soon Enter into Force in the U.S. and Japan

February 13, 2015

On February 13, 2015, the United States deposited its instrument of ratificationto the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“Hague Agreement”) with the International Bureau of World Intellectual Property Organization (“WIPO”). As such, the treaty will go into effect for the United States three months from the deposit date, on May 13, 2015. Japan is also understood to have deposited its instrument of ratification and is expected to become a member in the same time period as the United States.

As indicated previously on this blog, the Hague Agreement, generally speaking, establishes an international registrationsystem which facilitates protection of industrial designs (i.e., design patents) in member countries and intergovernmental organizations (“Contracting Parties”) by way of a single, “standardized” international design application filed either directly with the International Bureau of WIPO or indirectly through an applicant’s Contracting Party (which will now include the U.S. Patent and Trademark Office (“USPTO”)).

As for how the USPTO will process and examine international designs filed pursuant to the Hague Agreement, the USPTO has indicated they will soon publish their Final Rules in this regard, which are expected to go into effect on May 13, 2015 and apply to such international design applications filed on or after May 13, 2015. Among other things, U.S. design patents resulting from international design applications filed on or after May 13, 2015 pursuant to the Hague Agreement will have a 15-year term instead of the current 14-year term for U.S. design patents.

USPTO Publishes Final Rule on Changes to Implement the Hague Agreement Concerning Industrial Designs

April 2, 2015

On April 2, 2015, the U.S. Patent and Trademark Office ("USPTO") published its Final Rule on Changes to Implement the Hague Agreement Concerning the International Registration of Industrial Designs ("Hague Agreement"). 80 F.R. 63, pp. 17918-17971. These changes go into effect on May 13, 2015. Some of the changes only apply to patent applications filed on or after September 16, 2012 (e.g., power of attorney, application by assignee, inventor’s oath/declaration, and application data sheet). Other changes only apply to patent applications filed on or after December 18, 2013 (e.g., continuing applications and filing of a certified copy of a previously-filed application).

Recap of USPTO's Design Day 2016

April 26, 2016

The USPTO's Design Day 2016, held April 19th, started off with a welcoming address from the Commissioner for Patents, Andrew Hirshfeld. Commissioner Hirshfeld noted the increasing importance of design patents, as U.S. design patent application filings have increased from 11,000 in 1987 to 37,000 in 2015. Commissioner Hirschfeld encouraged everyone to submit comments and examples for the application of the Written Description Requirement in Design Applications, which was published on April 15, 2016 (reported here). Commissioner Hirshfeld also announced that 15 design examiners will be working out of the USPTO's San Jose satellite office.

Recap of USPTO's Design Day 2017

May 8, 2017

The U.S. Patent and Trademark Office (USPTO) held its 11th annual Design Day on April 25, 2017. Andrew Hirshfeld, Commissioner for Patents, again kicked off this year's presentations with a welcome address and highlights. Commissioner Hirshfeld also introduced Karen Young, Technology Center (TC) 2900's new director, who took over TC 2900 upon the retirement of former TC 2900 Director Robert Olszewski.

Director Young took the opportunity to introduce herself to the design patent community in attendance and wish former TC 2900 Director Robert Olszewski well in retirement. Director Young then discussed the state of TC 2900, including statistical breakdowns of various metrics such as number of design patent application filings, backlog, pendency, and workforce, and a showcase of the design examiners in the Silicon Valley and Detroit satellite offices.

David Gerk, Attorney-Advisor for the USPTO's Office of Policy and International Affairs, followed Director Young and discussed developments in international design protection. Among other topics, Mr. Gerk discussed trends and developments in the Hague Agreement; various online resources pertaining to the Hague Agreement (e.g., Hague Express Database, USPTO, WIPO); topics from a recent meeting of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) surrounding graphical user interfaces (GUIs)/icons/typeface; and ongoing projects for the Industrial Design 5 Forum (ID5) (ID5, generally speaking, is a forum focusing on "improving consistency in registration policies, cataloging office practices, promoting interoperable procedural frameworks, and protecting emerging designs such as graphical user interfaces (GUIs), animations and other new technology designs.").

Next, Todd Hunter, Director Copyright and Industrial Design Branch of the Canadian Intellectual Property Office (CIPO), provided statistics relating to industrial design application filings in Canada and discussed similarities/differences between industrial design practice in Canada and design patent practice in the United States.

Richard Stockton next presented on the topic of seeking early dismissal in design patent litigations.

The final discussion before the lunch break involved a panel of design examiners and design practioners discussing design patent prosecution best practices. Notable issues addressed by the panel included why a preliminary amendment (PA) might be filed when filing a design patent application, objections/rejections based on broad titles and possible ways to prevent or overcome such objections/rejections, how to disclaim aspects of a photographic image, and appendices filed with design patent applications.

The next presentation, after the lunch break, was given by Matthew Zacherle and Thomas Boshinski of WestRock Company, indicated to be the second largest paper packing company in the world. This presentation gave us a peek into the design process (from Mr. Zacherle, Senior Designer for WestRock) and some of the legal issues of working with designers (from Mr. Boshinski, Senior Counsel for WestRock).

The next presentation also focused on the interaction between industrial designers and intellectual property protection. Specifically, this presentation was a panel that explored how the fashion industry uses intellectual property to protect fashion designs, which can change and evolve very rapidly. Several of the presenters noted that fashion designers and fashion brands are investing in design patents.

After a short break, the presentations resumed with a mock argument that explored how prosecution can affect in claim interpretation and enforcement of design rights. The mock arguments were very well done and solicited quite a few laughs from the audience. However, the underlying message was serious; in each case, a seemingly inconsequential event during prosecution resulted in a judgement that was counter to the result that the audience expected. The takeaway was to always be thinking of how the decisions made in prosecuting a design application could affect future enforcement of the corresponding design patent.

The final presentation for Design Day 2017 was a summary of recent decisions by Joseph Anderson. Mr. Anderson provided an overview of decisions involving design patents from the Court of Appeals for the Federal Circuit and district courts, as well as the Patent Trial and Appeals Board.