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Presenting a live 90-minute webinar with interactive Q&A
Design Patents and the Hague Agreement Option:
Evaluating the Benefits and Risks of Filing an IDA Leveraging Lessons From the First Year, Understanding
the Implications for Design Patent Prosecution
Today’s faculty features:
12pm Eastern | 11am Central | 10am Mountain | 9am Pacific
THURSDAY, JULY 14, 2016
Betty Berendson, Senior Information Officer, The Hague Registry, Brands and Designs Sector (BDS),
World Intellectual Property Organization, Geneva, Switzerland
Tracy-Gene G. Durkin, Director, Sterne Kessler Goldstein & Fox, Washington, D.C.
David R. Gerk, Patent Attorney, Office of Policy and International Affairs,
U.S. Patent and Trademark Office, Alexandria, Va.
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Geneva,
July 14, 2016
Design Patents and the Hague Agreement
Option: Evaluating the Benefits and Risks
of Filing an IDA
Betty Berendson
Senior Information Officer
Information and Promotion Section
The Hague Registry
Who Can Use the System?
Nationality Domicile
Real and effective industrial/commercial
establishment
Habitual residence Geneva (1999) Act only
Attachment to a Contracting Party
6
What is the Hague System?
One to many relationships
• File a single international application for a single international registration (IR) in which one or more Contracting Parties (CP) are designated
“Bundle of Rights”
• If no refusal, the resulting international registration has the effect of a grant of protection in each designated Contracting Party. Substantive issues are governed by the law of each designated Contracting Party.
7
Hague System is a Procedural Arrangement
Issues such as: are governed by the law of each Contracting Party designated in an international registration
the conditions for protection
the refusal procedure to be applied when deciding whether a design may be protected
the rights which result from protection
8
The International Application
In English, French or Spanish
May be filed directly with the International Bureau through the E-filing interface but also on paper
May comprise several different designs up to a maximum of 100 if they belong to the same class of the International Classification (Locarno)
One set of fees (in CHF) is to be paid
9
The Hague System Procedure: Role of the International Bureau
Formal examination
Recording in the International Register
Sending the certificate to the holder
Publication in the International Designs Bulletin
Notification to members through the publication in the Bulletin
If the International Bureau finds that the international application does not fulfill the applicable
requirements, it invites the applicant to make the required corrections within three months from the
date of invitation sent by the International Bureau
10
The Hague System Procedure: Role of the Designated Contracting Parties Refusal by a designated Contracting Party
on same substantive grounds as for
national/regional filings
must be communicated within time limit
effect limited to territory of the member that has
refused
International registration (where not refused)
no refusal = same rights as a local design
registration
a bundle of independent national/regional rights
advantages of central management
11
The Hague System Procedure (III)
Longer renewal period, if allowed by the law of the designated Contracting Party
Renewable at least once (1960 Act) or twice (1999 Act)
Duration of protection: five years
12
Amount of Fees Paid per International Registration (2015)
0
200
400
600
800
1000
1200
1400
1600
1800
less than 1000 CHF 1000 to 1999 CHF 2000 to 2999 CHF 3000 to 4999 CHF more than 5000CHF
IR
IR 1570 1165 426 259 161
% 43.8% 32.5% 11.9% 7.2% 4.5%
13
General Advantages of the Hague System
Hague System (international route)
one Office for filing
one language
one currency
one international registration
one renewal
one modification
foreign attorney or agent
(first needed if refused)
National/regional route
many Offices for filing
many languages
many currencies
many registrations
many renewals
many modifications
foreign attorney or agent
(first needed at filing)
14
Hague Union
51 Geneva Act (1999) (including EU and OAPI)
15 Hague Act (1960)
65 Contracting Parties 15
Hague System: Foreseen Expansion
Coming soon
16
2015: Five Most Popular classes in International Registrations
Class 10
Clocks and watches and other measuring instruments, checking
and signaling instruments
324 registrations (9.1%)
Class 9
Packages and containers for the transport or handling of goods
249 registrations (7%)
Class 12
Means of transport or hoisting
264 registrations (7.4%)
Class 6
Furnishing
249 registrations (7%)
Class 14
Recording, communication or information retrieval equipment
387 registrations (10.8%)
17
The Hague System website
18
19
Indirect : WIPO Paper Form via EFS Web
Direct : WIPO E-filing Interface
- Familiar environment - USPTO’s Quick Guide - Integrated Export License Process - Transmittal Fee ($120.00)
- Dedicated electronic tool - Easier than using paper form - Embedded alerts and guidance - Integrated fee calculator - No additional fees - No intermediary - Workbench/Re-use functions - Access to Portfolio Manager
Two Filing Options for US Applicants
20
New Features of the E-Filing Portfolio Manager
Send corrections to irregularities or defects
Receive and download notifications from the IB relating to international applications
Retrieve in real-time current status of IA
21
Filing an international application
22
Filing an international application
23
24
Reproductions
DM/087 677 DM/087 809
DM/087 877
DM/087 876
25
Filing an international application
26
Filing an international application
27
Priority Documents
Republic of Korea
• Priority documents may be attached to the IA at the time of filing.
United States of America
Japan
• Original priority documents have to be sent directly to the JPO through a local agent within three months of publication of the IR.
• Original priority documents have to be sent directly to the USPTO at the latest before “the date the issue fee is paid”.
28
29
Filing an international application
30
31
32
E-Filing Communications
33
34
Hague Express Database
35
Global Design Database
36
Grounds of refusals by KIPO (from May 13th, 2015 to May 13th, 2016)
Source: Internal (unofficial) statistics
Number of refusals by KIPO
681 designs (215 international registrations)
Main grounds of refusals 1. Insufficient disclosure 447 designs 2. No indication of a creator 120 designs 3. Missing or wrong indication of related design 176 designs 4. Broad indication of product 21 designs
0
50
100
150
200
250
300
350
400
450
Insufficient disclosure
No indication of creator
Missing or wrong related design
information
Ambiguous/broad indication of
product
37
Designations 1013, grants of protection 299, refusals 264 (Criteria: date inscribed in the
International Register)
0
200
400
600
800
1000
1200
May Jun Jul Aug Sept Oct Nov Dec Jan Feb Mar Apr May Jun
Number of KR designations in international registrations, compared with total recorded Grants of protection and refusals, May 2015 to June 2016
Total designations Total recorded SGP Total rec. refusals
38
Grounds of refusals by JPO (from May 13th, 2015 to May 13th, 2016)
Source: Internal (unofficial) statistics
Number of refusals by JPO
41 designs
(27 international registrations)
Main grounds of refusals 1. Lack of novelty 19 designs 2. Insufficient disclosure 15 designs 3. Ambiguous/broad indication of product 10 designs 4. Others 1 design
0
2
4
6
8
10
12
14
16
18
20
Lack of novelty Insufficient disclosure
Ambiguous/broad indication of
product
Unity of design issue
Others
39
Designations 957, grants of protection 40, refusals 207 (Criteria: date inscribed in the
International Register)
0
200
400
600
800
1000
1200
May Jun Jul Aug Sept Oct Nov Dec Jan Feb Mar Apr May Jun
Number of JP designations in international registrations, compared with recorded Grants of protection and refusals, May 2015 to June 2016
Total designations Total recorded SGP Total rec. refusals
40
Grounds of refusals by USPTO (from May 13th, 2015 to May 13th, 2016 )
Source: Internal (unofficial) statistics
Number of refusals by USPTO
38 designs (20 international registrations)
Main grounds of refusals 1. Unity of design issue 27 designs 2. Insufficient disclosure 10 designs 3. Other grounds 8 designs 4. Ambiguous/broad indication of product 1 design
0
2
4
6
8
10
12
14
16
18
20
Unity of design issue
Insufficient disclosure
Other grounds Ambiguous/broad indication of
product
41
Designations 1586, grants of protection 1, refusals 99 (Criteria: date inscribed in the
International Register)
0
200
400
600
800
1000
1200
1400
1600
1800
May Jun Jul Aug Sept Oct Nov Dec Jan Feb Mar Apr May Jun
Number of US designations in international registrations, compared with recorded Grants of protection and refusals, May 2015 to June 2016
Total designations Total recorded SGP Total rec. refusals
42
Thank You!
www.wipo.int/hague/en
43
44
Design Patents and the Hague
Agreement Option
USPTO FEEDBACK
July 14, 2016
David R. Gerk
Attorney-Advisor
Office of Policy and International Affairs (OPIA)
United States Patent and Trademark Office
571-272-9300
The Hague Agreement
• May 13, 2015: Hague Agreement in Effect in U.S.
• Title I of PLTIA
• USPTO Rules
• June 20-22, 2016: WIPO Hague Working Group
• Sixth Session
July 14, 2016 46
The Hague Agreement
• Filing Statistics…
July 14, 2016 47
4140 ≈3000
Int’l Design Apps:
2007-2015
The Hague Agreement
• Designation Statistics…
July 14, 2016 48
2015 Designations by Select Contracting Parties
Source: WIPO statistics
http://www.wipo.int/hague/en/statistics/monthly_stats.jsp?type=DALL&name=2&count=COUNT
2015 Designations by All Contracting Parties
The Hague Agreement
• Helpful Information for Applicants & Representatives
– USPTO Hague Implementation Page – http://www.uspto.gov/patent/initiatives/hague-
agreement-concerning-international-registration-industrial-designs#tips
– WIPO Hague System Page – http://www.wipo.int/hague/en/
July 14, 2016 49
The Hague Agreement
• USPTO Page
– Forms
– Fees
– Resources
– FAQ
– Tips for Filing
– Contacts
July 14, 2016 50
July 14, 2016 51
• USPTO Page
– Forms
– Fees
– Resources
– FAQ
– Tips for Filing
– Contacts
The Hague Agreement
July 14, 2016 52
• USPTO Page
– Forms
– Fees
– Resources
– FAQ
– Tips for Filing
– Contacts
The Hague Agreement
July 14, 2016 53
• USPTO Page
– Forms
– Fees
– Resources
– FAQ
– Tips for Filing
– Contacts
The Hague Agreement
July 14, 2016 54
• USPTO Page
– Forms
– Fees
– Resources
– FAQ
– Tips for Filing
– Contacts
The Hague Agreement
Considerations for Applicants
• Reproductions
• Description
• Creator
• Single Design
• Priority Claims
• Duty of Disclosure
• 1st Communication from USPTO
July 14, 2016 55
Considerations: Reproductions
• Fully disclose the claimed design – Full disclosure for each separate
design
– No fixed requirement for # of views
– Orthogonal & perspective combos useful
– Avoid ambiguity in reproductions • Consistent views
• Clearly represent claimed subject matter
– not left to conjecture
– (e.g., convex vs concave)
July 14, 2016 56
Considerations: Description
• Figure Descriptions are helpful:
– DM1 Form Box 9 & 10
July 14, 2016 57
Considerations: Creator
• Creator is a person(s).
• Creator is the designer(s) (inventor(s)).
July 14, 2016 58
Considerations: Single Design
• Only can claim single design in design patent.
• Refusal
– if more than one patentably distinct designs in international registration.
• Non-patentably distinct
designs – can be kept together as
“embodiments” of the one design
July 14, 2016 59
Considerations: Priority
• Copy of Certified Priority Document – Must be filed with USPTO to
perfect priority claim.
• When?
– Before payment of second part designation fee (issue fee).
• Who? – Pro se creator (inventor) or
representative registered to practice before USPTO.
July 14, 2016 60
Considerations: Duty of Disclosure
• Creators, applicants, representatives, etc., have an affirmative duty to provide certain information to USPTO.
• “Material to Patentability” – 37 CFR 1.56
• Information Disclosure Statement (IDS)
July 14, 2016 61
Considerations: 1st Communication • USPTO Filing Receipt:
– Frequently first communication from the USPTO.
– Indication that USPTO has received
the international registration pursuant to its designation and role as a CP.
– Provides info regarding U.S.
identification of international registration.
– Typically, no response needed.
July 14, 2016 62
Design Patents and the Hague
Agreement Option
USPTO FEEDBACK
July 14, 2016
David R. Gerk
Attorney-Advisor
Office of Policy and International Affairs (OPIA)
United States Patent and Trademark Office
571-272-9300
64
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.
Obtaining Design Rights
Using the Hague System:
A Guide for Practitioners
Tracy-Gene G. Durkin, Esq.
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 66
Counseling Clients on the Hague
System
• The first question you need to consider when counseling a client
about the Hague System is – are they eligible to file a Hague
Application?
• Then consider - does the System cover jurisdictions they are
interested in?
• Finally consider - does it makes sense to use the Hague System
for a particular design or designs?
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 67
Who Can File a Hague
Application and Where?
• Any national or person who has a domicile, habitual residence, or a real
and effective industrial or commercial establishment in a Hague member
country (all applicants must be eligible, creators do not)
• Currently 65 members including:
http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=9
USA Norway Belgium
Japan Singapore Switzerland
South Korea Turkey EU
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 68
2015 General Hague Statistics
• 16,435 designs applied for (14,441 in 2014)
• 13.8% growth (9.6% in 2014)
• Top 5 Locarno classes:
1. Recording and communication equipment (5)
2. Clocks and watches (1)
3. Means of transportation (3)
4. Packages and containers (2)
5. Furnishings (4)
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 69
Who is Using the System? • Top 10 Applicants in 2015:
1. Samsung (6)
2. Swatch (1)
3. Fonkel Meublemarketing
4. Volkswagen (5)
5. P & G (2)
6. Thun
7. Gillette (8)
8. Thomas Sabo (jewelry)
9. Legero Schonfabrik (shoes)
10. Cartier Creation Studio
- Phillips Electronics (3), Daimler (4), Lenovo (7), Nestle (9), Alfred Karcher (cleaning systems and products) (10)
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 70
What Countries Are They
Designating? • Top 10 Designated Countries in 2015:
1. Germany (1)
2. Switzerland (2)
3. France (3)
4. Republic of Korea
5. Italy (4)
6. USA (5)
7. Netherlands (9)
8. Austria (8)
9. Japan
10. Liechtenstein (6)
11. United Kingdom
- Turkey (7) , Finland (10)
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 71
Technical Aspects of IDA Filing
• A maximum of 100 designs (related or not) can be included in a single IDA provided they are in the same Locarno Class
• 2014: 90% included 10 or fewer designs, 30% included 1 design
• If not in same Locarno class, WIPO will allow dividing into multiple IDAs
• IDAs undergo standard substantive examination according to designated Intellectual Property Offices rules
• IDAs can claim priority to a U.S. design application(s)
• U.S. design application can claim priority to IDAs that designate at least one country other than the United States
• Each figure must be in separate file without figure numbers
• IDAs will be given series 35/ application numbers
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 72
Benefits of the Hague System
• More simplified process for obtaining foreign design protection
• Savings of time and money
• Use of foreign counsel may be reduced
• Ability to include up to 100 designs in the same Locarno class can
save costs
• Publishing of International Registration grants provisional rights
• Can delay publication in some countries (not in the US – adopted the 6
month publication default)
• Foreign filing license not needed If IDA is filled indirectly through the
USPTO, but is needed if filed directly with WIPO
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 73
Limitations of Hague System
• Limited membership
• Many important jurisdictions are not yet part of the system: China,
Canada, Mexico, Australia
• U.S. practitioners must prepare filings with knowledge of idiosyncrasies
of systems in member countries
• Number and type of drawing figures and written description
requirements vary widely among jurisdictions (shading, broken lines,
explanation of design)
• Loss of novelty provisions may not be available in all jurisdictions
(are available in Japan and Korea and may be claimed after filing)
• May not be able to amend application in all jurisdictions after filing
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 74
Limitations of Hague System
• Filings through the USPTO require local agent:
• if not included with application as filed (Information disclosure
statements, certified copies, inventor declarations and assignments)
• Replies to Restriction Requirements and Office Actions
• U.S. allows only 1 design per patent (restricted designs may be filed in
another IDA claiming priority to a parent IDA, or in a domestic divisional
application)
• Replies to WIPO notices must be filed with WIPO, not USPTO
• No centralized system for filing of certified copies of priority documents
• Currency fluctuations of the Swiss Franc, but can avoid by paying WIPO
directly for all but USPTO exclusive fees (e.g. transmittal fee)
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 75
Things to Consider
• US Filing date will be lost for failure to pay $120 transmittal fee to the USPTO for indirect filing
• Failure of the USPTO to transmit the IDA will result in abandonment
• Notice of Refusal (OA) will be transmitted to WIPO who will mail to Applicant’s representative (can get notice by e-office action program)
• WIPO’s per figure/word fee structure
• http://www.wipo.int/hague/en/fees/calculator.jsp
• Can’t file a CPA of an IDA, can file a Con
• Publication opens file history of the IDA to the public through Public Pair (including any domestic benefit application)
• Include a brief description of the design if desirable for the US
particularly if the design has claimed and un-claim parts
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 76
Things to Consider
• Grace periods and Paris Convention due dates are unaffected
• Rocket Docket petitions are available for IDAs after publication, therefore USPTO recommends waiting to file
• No US maintenance fees, but WIPO or other countries may require them
• USPTO recommends using the WIPO inventor declaration if designating the U.S. rather than the USPTO form
• Hague registrations only assignable to entitles entitled to file an IDA
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 77
Things to Consider
• Priority application should be prepared for acceptance in multiple
jurisdictions:
• Solid vs. broken lines
• Digital images vs. line drawings
• Color vs. greyscale
• Component parts
• Description of design
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 78
What’s the Best Strategy?
• Consider foreign filing strategy at the time of filing your priority
application
• File multiple applications?
• Include all designs in one application?
• Include greyscale and color together?
• Combine digital images with line drawings?
• Consider filing more than one IDA
• Group registration countries separately from examination countries?
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 79
Bottom Line
• Know the requirements of the designated jurisdictions as you prepare the priority application
• Drawing requirements, fees, preliminary amendment, novelty requirements
• Even though you can include up to 100 designs in one IDA, you may want to group designs based on what jurisdictions permit
• Be prepared to hire local registered agent to address issues only they can address
• Remember publication opens prosecution to the public, but does provide provisional rights
• Consider using Hague for non-examination countries only?
• Good luck!
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 80
Thank you!
Tracy-Gene G. Durkin, Esq