The last step for the United States to become a full member of the Hague Union has been taken.
For those familiar with the Patent Cooperation Treaty (PCT) used for international utility patent protection, the Hague system is essentially the design patent equivalent of the PCT.
On and after May 13, 2015, U.S. companies and citizens wishing to obtain foreign design protection will have a procedural mechanism that will make it much easier to do so by filing a single “international” application designating those countries in which protection is desired (among countries that are members of the Hague Union). The World Intellectual Property Organization (WIPO), based in Geneva, administers the Hague system.
The international application can be filed in the USPTO, or online. Up to 100 designs (in the same class) may be included in the same application. The filing costs depend on the number of designs and the number of countries designated by the applicant. Generally, the per design cost of protection goes down with the more designs that are included in the application, and the more countries that are designated. Of course, the total cost increases, but the per design cost does go down.
After WIPO determines that the application complies with formalities (mostly with respect to the drawings), it is given an international registration number and published. This takes about 6 months.
In the ensuring “national phase” the application is then transmitted to those countries designated by the applicant. The countries may have either an examination system (e.g., the US, Japan) or a registration system (i.e., no examination e.g., Europe). Each country will determine if the design(s) are patentable/registrable according to that country’s laws.
One advantage is that if a US design patent application is filed on or after May 13, 2015, the resultant patent will have a 15 year term, a slight increase over the current 14 year term.
Other “pros & cons” are listed in the attached paper. Also attached is a WIPO slide show showing the Hague procedure in greater detail, a summary of the application process and legal effect, the official announcement by the USPTO, and a current list of countries that can be designated by the applicant.
We are happy, of course, to answer any questions you may have about how to take advantage of this new avenue for obtaining cost-effective design protection abroad, including providing cost estimates for a specific situation.