TAKEAWAY: International design patent applications may be useful for protecting designs in multiple jurisdictions in a relatively streamlined process, but applicants must identify target countries early.
On May 13, 2015, the United States joined the Hague Agreement, providing U.S. applicants with the option to file for patent protection on designs via a centralized international system. Filing an international design patent application may help to streamline administrative procedures and reduce overall costs for applicants seeking design patent protection in a number of countries.
The process for filing an international design patent application is similar to that for a PCT utility patent application, in that U.S. applicants can file with the USPTO as an office of indirect filing in both cases. The USPTO then forwards the application to WIPO for further processing. The Hague system is different in several important ways, however.
While a PCT applicant may select the countries for national stage entry 18 months or more after the PCT filing date, an international design applicant must designate individual countries and pay corresponding fees at the time of filing. The Hague contracting parties may be found here and include Japan, Canada, and Europe (all 28 members of the EU via a community design registration, as well as individual European countries including non-EU members like Switzerland). Several countries currently do not participate in the Hague system, and applicants should determine whether they need to file a design application directly with any countries of interest. For example, Australia and China are contracting parties to the PCT but not the Hague Agreement. If an applicant wishes to file a design patent application in those countries, the applicant must file the design patent application directly with the respective patent offices.
International design applications also differ from PCT applications in the examination process. In the Hague system, examination proceeds in a two-step process. In the first step, the International Bureau of WIPO conducts an initial review to confirm that formal requirements are met, and the design is then registered and published in the International Register. In the second step, the patent offices of the designated countries commence substantive examination according to their respective national patent laws. Some countries do not require substantive examination, in which case the international registration becomes effective nationally.
Finally, priority deadlines are different for design and utility applications. While PCT applicants can claim priority to an application filed within one year of the PCT filing date, international design applications must be filed within six months of an earlier filed application in order to claim benefit of priority.
International design applications provide another useful tool for U.S. companies to seek design patent protection in multiple jurisdictions. Given the need to choose designated countries at the time of filing and the shorter priority window, applicants should consider whether to file internationally early on in the planning process.