The Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, July 2, 1999 (hereinafter "Hague Agreement") is an international agreement that enables an applicant to file a single international design application which may have the effect of an application for protection for the design(s) in countries and/or intergovernmental organizations that are parties to the Hague Agreement (the "Contracting Parties") designated in the application. The United States is a Contracting Party to the Hague Agreement, which took effect with respect to the United States on May 13, 2015. The Hague Agreement is administered by the International Bureau of the World Intellectual Property Organization ("the International Bureau").
An international design application may be filed by an applicant "indirectly" through the office of the applicant’s Contracting Party (provided such Contracting Party has not declared that international design applications may not be filed through its office) or "directly" with the International Bureau. To be entitled to file an international design application, the applicant must be a national of a State that is a Contracting Party or of a State member of an intergovernmental organization that is a Contracting Party, or have a domicile, habitual residence, or a real and effective industrial or commercial establishment in the territory of a Contracting Party.
The U.S. Patent and Trademark Office ("USPTO") is an office of indirect filing. Only persons who are nationals of the United States or who have a domicile, habitual residence, or a real and effective industrial or commercial establishment in the territory of the United States may file international design applications through the USPTO. If the application is filed through the USPTO, the Office will confirm that the required transmittal fee has been paid, perform a security review, and check that the required indications demonstrating applicant’s entitlement to file the application through the USPTO are present in the application submission. If the transmittal fee is paid and the application clears security review and contains the indications establishing applicant’s entitlement to file the application through the USPTO, the application will be transmitted to the International Bureau and the applicant will be notified of the transmittal. The USPTO will also notify the applicant and the International Bureau of the receipt date of the application.
Regardless of whether the application is filed indirectly through applicant's Contracting Party or directly with the International Bureau, the International Bureau examines the application to determine whether the applicable formal requirements under the Hague Agreement and Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement have been satisfied. If the applicable requirements have been satisfied, the International Bureau will accord the application a filing date and an international registration date and register the industrial design in the International Register. The international registration includes all the data contained in the international design application (including any priority claim where the earlier filing is not more than six months prior to the international filing date), the reproduction(s) of the design, the international registration number and international registration date, and the class of the International Classification determined by the International Bureau. The International Bureau also sends a certificate of international registration to the applicant. Upon registration, the applicant is thereafter referred to as the "holder" of the international registration.
If the International Bureau finds that the international design application does not satisfy the applicable requirements, it will invite the applicant to make the required corrections within a prescribed time limit. The failure to timely respond to the invitation may result in abandonment of the application or removal of the designation of a Contracting Party pursuant to Hague Agreement Article 8.
International registrations are published by the International Bureau. However, applicants may control the timing of publication to some extent. Specifically, the applicant may request in the official application form that publication occur immediately after international registration or that publication be deferred for up to 30 months from the filing date (or priority date, if applicable). Deferment of publication is not possible if a Contracting Party is designated that does not permit deferred publication. For applications filed on or after January 1, 2022, absent a request for immediate publication or deferment, the registration will be published twelve months after the date of international registration, or as soon as possible thereafter. For applications filed before January 1, 2022, absent a request for immediate publication or deferment, the registration will be published six months after the date of international registration, or as soon as possible thereafter. The publication includes the data recorded in the International Register and the reproductions(s) of the industrial design.
A copy of the publication of the international registration is communicated by the International Bureau to the office of each designated Contracting Party. If the United States is designated, the U.S. application assigned to the international registration will be made available in Patent Center shortly after publication of the international registration by the International Bureau. The U.S. application can be found in Patent Center by searching using the international registration number.
For certain Contracting Parties, the date of publication of the international registration may trigger a time period in which to furnish certain submissions required under the law of the Contracting Party concerned, such as priority documents. The International Bureau’s Hague Member Profiles Database available at www.wipo.int/hague/memberprofiles/#/ provides information regarding requirements concerning designated Contracting Parties.
Following publication of the international registration by the International Bureau, the offices of the designated Contracting Parties proceed with substantive examination if required under their respective laws. Some Contracting Parties do not carry out substantive examination. Furthermore, some Contracting Parties that carry out substantive examination only do so on limited grounds. The International Bureau’s Hague Member Profiles database available at www.wipo.int/hague/ memberprofiles/#/ provides detailed information regarding the scope of substantive examination carried out by designated Contracting Parties.
As a result of that examination, the office may notify the International Bureau of a refusal of protection for its territory. A refusal of protection, if any, must be notified to the International Bureau within six months from the date of publication of the international registration. However, any Contracting Party whose office is an examining office, or whose law provides for the possibility of opposition to the grant of protection, may declare that the refusal period of six months is extended to 12 months.
The notification of refusal is communicated by the office of the designated Contracting Party concerned to the International Bureau, which then transmits a copy of the notification of refusal to the holder. Any reply to the notification of refusal must be communicated directly to the designated Contracting Party concerned and not through the International Bureau. After communication of the notification of refusal, all further communications between the applicant and the designated office are directly between them and do not involve the International Bureau.
Pursuant to 35 U.S.C. 389, the USPTO will examine international design applications designating the United States based on the published international registration received from the International Bureau. Where it appears that the applicant is not entitled to a patent under the law of the United States with respect to any industrial design that is the subject of the international registration, the Office will send a notification of refusal to the International Bureau, normally within 12 months from the publication of the international registration. The applicant may reply to such notification directly to the USPTO. Any further Office action, such as a subsequent non-final rejection, a final rejection, or an allowance, will be sent directly to the applicant.
Hague Agreement Article 14(2) provides that the international registration shall have the same effect as a grant of protection for the industrial design under the law of that Contracting Party at the latest from the date of expiration of the period allowed for it to communicate a refusal or, where a Contracting Party has made a corresponding declaration under the Regulations, at the latest at the time specified in that declaration. Article 14(2) further provides, that where the office of a designated Contracting Party has communicated a refusal and has subsequently withdrawn, in part or in whole, that refusal, the international registration shall, to the extent that the refusal is withdrawn, have the same effect in that Contracting Party as a grant of protection for the industrial design under the law of the Contracting Party at the latest from the date on which the refusal was withdrawn.
Contracting Parties vary as to when protection begins within their territories, the duration of protection, and notification of protection. For some Contracting Parties, the effect of a grant of protection begins on the international registration date; for others, the protection may begin on the publication date or later date. Information regarding when protection begins in designated Contracting Parties may be found in the International Bureau’s Hague Member Profiles database available at www.wipo.int/hague/ memberprofiles/#/.
The duration of protection available also varies among Contracting Parties. Under the Hague Agreement, Contracting Parties must provide a minimum period of protection of 15 years counted from the international registration date, provided the international registration is renewed. Many Contracting Parties provide for longer periods of protection. For a complete listing of the maximum duration of protection available before Contracting Parties, see www.wipo.int/hague/en/declarations/. For most Contracting Parties, renewal of the international registration, including payment of a renewal fee, is required at five-year increments to maintain protection.
While many designated Contracting Parties send notification when protection has been granted within their territories, typically through issuance of a Statement of Grant of Protection communicated to the International Bureau pursuant to the provisions of Hague Agreement Rule 18bis, the sending of such a notification is not required under certain circumstances. Thus, some Contracting Parties may not send any notification that protection has begun within their territories.
For international design applications designating the United States, protection begins upon the date of issuance of a U.S. design patent from such application and extends to those industrial designs that are the subject of the international registration and covered by the U.S. design patent. Concurrent with the issuance of the patent, the USPTO communicates a Statement of Grant of protection to the International Bureau.
Definitions of relevant terms are set forth in 35 U.S.C. 381, 37 CFR 1.9 and 1.1001, Article 1 of the Hague Agreement, and Rule 1 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement.
As used in MPEP Chapter 2900, "Article" means an article of the Hague Agreement; "Rule," when capitalized, means a rule under the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement; and "Administrative Instruction" means the Administrative Instruction for the Application of the Hague Agreement referred to in Rule 34.
The Geneva Act of the Hague Agreement, and the declarations made thereto, took effect with respect to the United States on May 13, 2015.
Pursuant to Article 5(2)(a) and Rule 11(3), the United States declared that an international design application designating the United States must contain a claim and that the specific wording of the claim shall be in formal terms to the ornamental design for the article as shown, or as shown and described. See 37 CFR 1.1021(d) and MPEP § 2909, subsection IV. Additionally, pursuant to Rule 8(1), the United States declared that an international design application designating the United States must also contain an oath or declaration of the creator and indications concerning the identity of the creator. Id.
Pursuant to Article 11(1)(b), the United States declared that where the United States is designated in an international design application, it is not possible for an applicant to request the deferment of publication of the ensuing international registration.
Pursuant to Article 13(1), the United States declared that only one independent and distinct design may be claimed in a single application. See MPEP §§ 2920.05(b) and 1504.05.
Pursuant to Rule 18(1)(b), the United States declared that it is extending the time period within which to provide a refusal (12 months) and when the international registration shall produce effect as a grant of protection. The United States provides industrial design rights through USPTO issuance of a U.S. design patent. See 35 35 U.S.C. 171-173 and 389 and MPEP §§ 2920.05(a) and 2950.
Pursuant to Article 7(2) and Rule 12(3), the United States declared that the prescribed designation fee referred to in Article 7(1) shall be replaced by an individual designation fee that is payable in a first part at filing and second part payable upon allowance of the application. SeeMPEP §§ 2910 and 2920.06. The amounts of the first and second part individual designation fees are subject to future changes. See Article 7(2).
Pursuant to Rule 13(4), the United States declared that the period of one month referred to in Rule 13(3) shall be replaced by a period of six months with respect to the United States in light of the security clearance required under United States law.
Pursuant to Article 16(2), the United States declared that changes in ownership recorded by the International Bureau pursuant to Article 16(1)(i) must be recorded with the USPTO through submission of documentation supporting that change in ownership to have effect. See 35 U.S.C. 261 and MPEP §§ 301-302.
Pursuant to Article 17(3), the United States declared that that the maximum duration of protection for designs is 15 years from grant. 35 U.S.C. 173.
Any person that is a national of a State that is a Contracting Party or of a State member of an intergovernmental organization that is a Contracting Party, or that has a domicile, a habitual residence or a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application.
Pursuant to Article 3 of the Hague Agreement, to be entitled to file an international design application, a person must: (1) be a national of a Contracting Party or of a State that is a member of an intergovernmental organization that is a Contracting Party; or (2) have a domicile, habitual residence, or real and effective industrial or commercial establishment in the territory of a Contracting Party.
Article 1(ix) of the Hague Agreement defines a "person" as a natural person or a legal entity, and Article 1(xiii) defines a "Contracting Party" as a State or intergovernmental organization that is a party to the Hague Agreement.
A list of the Contracting Parties to the Hague Agreement is maintained on the website of the World Intellectual Property Organization (www.wipo.int/ hague/en/members/ ).
Pursuant to Article 4 of the Hague Agreement, an international design application may be filed either directly with the International Bureau or indirectly through the office of the applicant’s Contracting Party. However, Contracting Parties may notify the International Bureau that applications may not be filed indirectly through their office. See Article 4(1)(b). As such, only certain offices may allow for "indirect" filing. The WIPO website provides information on which Contracting Parties permit "indirect" filing through their office. See www.wipo.int/hague/en/declarations/.
Article 1(xiv) of the Hague Agreement defines the "applicant’s Contracting Party" as the Contracting Party from which the applicant derives its entitlement to file an international design application under Hague Agreement Article 3 or, if there is more than one such Contracting Party, the one Contracting Party among those Contracting Parties that the applicant expressly identifies as the "applicant’s Contracting Party" in the international design application.
If the applicant is a national of the United States, or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States, the international design application may be filed directly with the International Bureau, provided any required foreign filing license has been obtained, or indirectly through the USPTO. See MPEP § 2905.01 regarding filing indirectly through the USPTO. Filing the international design application directly with the International Bureau through the WIPO’s e-filing interface (eHague) offers several benefits to applicants, including automatic error checking of inputted data, avoidance of the transmittal fee required by the USPTO for indirectly filed applications, rapid application delivery, and the ability to reuse data from previous applications. For further information regarding eHague, see WIPO’s website at www.wipo.int/hague/en/e-filing.html.
In order to file an international design application through the United States Patent and Trademark Office as an office of indirect filing, the United States must be applicant’s Contracting Party (Articles 4 and 1(xiv)).
Only persons who are nationals of the United States or who have a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States may file international design applications through the USPTO. See 35 U.S.C. 382(a) and 37 CFR 1.1011(a). In addition, in order to file an international design application through the USPTO, the United States must be applicant’s Contracting Party. See 37 CFR 1.1012 and Hague Agreement Article 4. Thus, an international design application may be filed through the USPTO only if: (1) the applicant, or each applicant if there is more than one applicant, is a national of the United States or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States; and (2) the United States is the applicant’s Contracting Party, or each applicant’s Contracting Party if there is more than one applicant.
The official form for presenting the international design application, "Application for International Registration" (form DM/1), includes boxes to indicate both applicant’s entitlement to file the international design application and applicant’s Contracting Party. See MPEP § 2909.01.
International design applications may be filed through the USPTO as an office of indirect filing via EFS-Web, mail, or hand delivery to the Customer Service Window at the USPTO’s Alexandria headquarters. The street address is: U.S. Patent and Trademark Office, Customer Service Window, Randolph Building, 401 Dulany Street, Alexandria, VA 22314. The mailing address for delivery by the U.S. Postal Service is: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450. It should be noted that the Priority Mail Express® provisions of 37 CFR 1.10 apply to the filing of all applications and papers filed in the U.S. Patent and Trademark Office, including international design applications and related papers and fees. It should be further noted, however, that the filing of an international design application is excluded from the Certificate of Mailing or Transmission procedures under 37 CFR 1.8. Facsimile transmission may not be used for the filing of an international design application or the filing of color drawings under 37 CFR 1.1026. See 37 CFR 1.6(d)(3) and (4), 37 CFR 1.8(a)(2)(i)(K). See MPEP § 502 for more information on depositing correspondence with the USPTO.
Payment of the transmittal fee specified in 37 CFR 1.1031(a) is required for international design applications filed through the USPTO as an office of indirect filing. In addition, international design applications filed with the USPTO are subject to national security review. See 35 U.S.C. 382(b). The international design application will not be transmitted to the International Bureau if the transmittal fee has not been paid or the necessary national security clearance has not been obtained. See 37 CFR 1.1045.
Upon receipt of an international design application, the USPTO will review the application for the required indications establishing each applicant’s entitlement to file the international design application through the USPTO, payment of the transmittal fee, and national security. If the indications are not sufficient to establish each applicant’s entitlement to file the international design application through the USPTO, the transmittal fee has not been paid, or the necessary national security clearance has not been obtained, the Office will notify the applicant accordingly via Form PTO-2320, "Notification Regarding Receipt And Transmittal Of The International Design Application To The International Bureau." Form PTO-2320 does not set a time period to cure the deficiency but instead warns the applicant that an international design application that is not received by the International Bureau within six months from receipt of the application by the USPTO will receive a filing date as of the date on which the International Bureau receives the application, rather than the USPTO receipt date, subject to Hague Agreement Rule 14(2).
If the conditions for transmitting the international design application to the International Bureau have been satisfied, the application will be transmitted to the International Bureau. The applicant will be notified via Form PTO-2320 of the transmittal of the application to the International Bureau and of the receipt date of the international design application by the USPTO.
Because the international design application must be received by the International Bureau within six months of receipt of the application by the USPTO in order to obtain the receipt date at the USPTO as the filing date, the applicant should contact the USPTO for a status update well in advance of the expiration of this six month period if the applicant has not received Form PTO-2320 indicating transmittal of the application to the International Bureau.
Applicants are advised, when filing an international design application through the USPTO as an office of indirect filing, to consult the EFS-Web Quick Start Guide: International Design Application (Hague), available at www.uspto.gov/sites/default/files/documents/ Hague-QSG.pdf. Failure to submit the reproductions in the manner prescribed therein may result in additional per page publication fees being required by the International Bureau.
The Office will generally not forward any submission filed in an international design application to the International Bureau that is received after the application has been transmitted to the International Bureau. Applicants are cautioned that any reply to an invitation sent to the applicant by the International Bureau must be filed directly with the International Bureau, and not with the Office, to avoid abandonment or other loss of rights under Hague Agreement Article 8. See 37 CFR 1.1045(c).
