Through the series of ongoing lawsuits between Samsung Electronics Co. Ltd. and Apple Inc. that started in 2011, many have come to realize the meaning and value of design patents. Similar to utility patents, design patents have been a form of IP protection since the mid-19th century in the United States. The number of design patent applications filed, however, has consistently trailed far behind that of utility patent application filed in the U.S. Conceivably then, while the U.S. became bound in 1973 by the Patent Cooperation Treaty (PCT), which facilitates the procurement of utility patents globally, only in 2015 did the U.S. enter the Hague Agreement Concerning the International Registration of Industrial Designs (“Hague Agreement”), which similarly facilitates the procurement of design registrations worldwide. In this article, we provide an introduction to the relatively unfamiliar approach to global design protection through the Hague system.
As an initial matter, what is a design patent? It is a form of legal protection of the design of an article (e.g., the way the article looks) and is obtained when the design is patented. A design patent is one of the strongest forms of protection you can get if you are worried about competitors copying the visual aspects of your product. With a design patent, you have the right to prevent others from making, using, selling, or importing articles that have your design. A design patent starts with a design patent application. An international design application enables you to obtain design patent protection worldwide, including patent protection wherever available, in a more streamlined, efficient manner.
The Hague Agreement, which is administered by World Intellectual Property Organization (WIPO), provides a centralized system for you to file a single international design application (“Hague application”) as a vehicle to obtain design protection in its contracting parties around the around. The Hague Agreement is similar to the PCT. The PCT, which is also administered by WIPO, provides a centralized system to file a single international utility patent application (“PCT application”) as a vehicle to obtain utility protection in its contracting states around the around.
There are currently 74 contracting parties, including the U.S., Canada, Japan, and the European Union (excluding the U.K.), to the Hague Agreement. While the Hague system is a relative new option in the U.S. for design owners, the U.S. became the second biggest user of the system in 2020, after Germany. The number of Hague applications filed in the U.S. grew by 62.7% in 2020, and the number can keep growing as more people in the U.S. become familiar with the Hague system and more countries or regions become contracting parties of the Hague system thereby expanding the scope of impact of a Hague application.
To use the Hague system, you must be affiliated with (e.g., be a reside of) a contracting party. Similar to filing a PCT application, you can file for a Hague application directly with WIPO’s International Bureau (IB) or indirectly with a local intellectual property (IP) office of a contracting party, such as the United States Patent and Trademark Office (USPTO). The local IP office will forward your Hague application to the IB for further processing. The design may then be protected in as many contracting parties as you desire based on the same Hague application. As further discussed below, publication of your Hague application in the International Designs Bulletin automatically triggers examination by local IP offices of designated contracting parties under their local laws. While some local IP offices perform substantive examination, other local IP offices merely perform a similar review performed by the IB. If any IP office of a contracting party determines that your design is not registrable, then the IP office must notify the IB that your registration is refused by the contracting party. If an IP office of a contracting party does not issue a refusal to the IB within a prescribed time limit, then the international registration takes effect and provides protection as if the design had been registered or patented under local laws of the contracting party.
If you wish to seek protection in a country that is not a contracting party of the Hague Agreement, such as Taiwan, which is also not a contracting state of the PCT, you need to file directly in that country.
While the PCT system and the Hague system each provide a streamlined filing process, there are several notable differences between the two systems. For example, a PCT application is required to cover a single inventive concept. In contrast, a Hague application may cover up to 100 designs belonging to the same International Classification of Industrial Designs (Locarno Classification), regardless of whether the designs are similar in appearance. However, some contracting parties, such as Japan and the U.S., have a unity of design requirement. Pending compliance, they may refuse the effects of an international registration.
Another difference between the two systems is when indication of contracting states or parties in which IP protection is sought occurs. A PCT applicant indicates member states in which the PCT application is to be processed at the time of national phase entry, which is 30 or 31 months after the earliest claimed priority date. In contrast, a Hague applicant designates contracting parties in which the Hague application is to be processed and pays corresponding fees at the time of filing.
The examination processes under both systems are also different. During the international phase, a PCT application is substantively reviewed against the prior art to generate a search report by a designated international search authority (ISA) and optionally evaluated further for patentability. A PCT applicant can decide in which contracting states to enter the national phase based on at least the search report. The PCT applicant than fulfills filing requirements for national phase entry into each of those contracting states. During the national phase, the local IP office conducts its own formal examination and possibly also substantive examination, although it often relies on the international examination.
A Hague application, on the other hand, is not substantively reviewed during the international phase. Rather, the IB conducts an initial review to make sure that the Hague application conforms to formality requirements. When the formality requirements are met, the IB registers the design in the International Register. The IB generally publishes the design in the International Designs Bulletin six months (except when publication deferment is possible and requested) after the international registration date, which is the later of the international filing date or the date of when irregularities in the Hague application are corrected (e.g., when formality requirements are met). No national stage filings are required as publication of the design triggers necessary substantive examination by local IP offices of the designated contracting parties under local laws. For example, the Hague application will be examined by the USPTO according to the U.S. standards of patentability. Even though the Hague application may include up to 100 designs, the USPTO will issue a restriction requirement if the application discloses more than one patentably distinct design, whereafter divisional applications can be filed for non-elected designs.
When the design is not refused by the IP office of a designated contracting party within a prescribed time limit, the international registration automatically affords protection in that designated contracting party, where the scope of protection depends on the local laws. In the U.S., for example, when the Hague application is not refused, the USPTO grants a design patent. With those contracting parties that do not require substantive examination, the international registration may automatically become effective and affords protection in those contracting parties.
More specifically, an international registration is valid for at least 15 years of protection. The international registration is valid for the first five (5) years from the date of international registration and can be renewed up to the maximum duration of protection allowed in each of the designated contracting parties, with some contracting parties providing for a duration of protection of more than that established under the Hague system. In the U.S., the term for design patents resulting from applications filed on or after May 13, 2015, is 15 years from issuance. Payment of the fees for renewing the international registration ("renewal fees") is not required to maintain a U.S. patent issuing on an international design application in force.
Priority deadlines under the two systems are different as well. A PCT application must be filed within one year of an earlier filed application in order to claim the benefit of priority. However, a Hague application must be filed within six months of an earlier filed application in order to claim priority to that earlier filed application.
A difference between Hague applications and U.S. design applications that is worth noting is that Hague applications are published as early as six months after the international registration date, while U.S. design applications are not made public until issuance. A benefit of the publication of a U.S.-designated Hague design application is provisional rights to obtain damages for infringement that occurred between the publication date of the design and the issue date of the U.S. patent. Consequently, however, any U.S. design application to which the Hague application claims priority will be made available for public access.
While the Hague system simplifies the application procedure through a single, unified process, it may be deficient in several ways at this point. Not only are there no uniform drawing standards among the contracting parties, but some contracting parties have fundamentally different requirements. Such fundamental differences can mandate changes to be made after filing or even result in unintended effects on the scope of protection where features of design representations are interpreted in an unexpected manner. In addition, a number of large markets, such as China and India, are not currently contracting parties to the Hague agreement. These deficiencies may be contributing to certain reluctant use of the Hague system.
In pursuing global design protection, there are many factors to consider in deciding whether and when to file a U.S. design patent application, a foreign application for design rights, or a Hague application. The timing, cost, and scope of protection associated different approaches are among the factors to take into consideration. As your counsel, we can assist with your protection strategy and actual filings. If you have additional questions or require assistance with your intellectual property matters, please do not hesitate to contact our office.
 See https://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm, for example.
 See https://www.wipo.int/export/sites/www/treaties/en/documents/pdf/hague.pdf. The 74 contracting parties cover 91 countries.
 U.S. applicants should remember that a foreign filing license is required for an invention made in the U.S. to properly file the Hague application directly with the IB. Filing a Hague application through the USPTO is automatically reviewed for a foreign filing license. Similarly, if no request for a foreign filing license is included in a PCT application filed through the USPTO and it is clear that a foreign filing license is required, the USPTO will construe the filing of such an international application to include a request for a foreign filing license.
 The USPTO may refuse to forward a Hague application to the IB if doing so threatens national security.
 See 37 C.F.R. §1.1071, for example.
 See 37 C.F.R. §1.1031, for example.
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