On May 13, 2015, the U.S. Patent & Trademark Office (USPTO) will begin accepting U.S. design patent applications under the Hague Agreement. This agreement allows U.S. applicants to file up to 100 designs in over 64 member countries that are party to the Hague Agreement by filing a single International Design Application (“IDA”) with the USPTO. Among the current members are Japan, South Korea, and the EU. A complete list can be found here.
The Hague Agreement provides applicants a streamlined filing procedure that may translate into filing efficiencies and cost savings. This is because an IDA relieves applicants of the need to engage local counsel to file separate national applications in each of the territories where protection is sought. However, this cost benefit may be lost if an IDA does not comply with the substantive laws of each member territory. In that case, the applicant will need to engage local counsel to address any substantive objections or rejections. A reference guide of the preparation and prosecution nuances of some of the member territories is available HERE.
In addition to the potential filing efficiencies and cost savings under the Hague Agreement, IDA's will also enjoy provisional rights in the U.S., giving the owner the potential for damages for infringement from the time the IDA is published, which is typically six months after filing. All U.S. design patents issuing from domestic applications or IDAs filed on or after May 13, 2015 will have a 15-year term measured from the issue date, rather than the current 14-year term.
This article appeared in the April 2015 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.