2901 Basic Hague Agreement Principles [R-07.2022]

I. OVERVIEW

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”).

II. BASIC FLOW UNDER THE HAGUE AGREEMENT

A.Filing

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.

B.Formal Examination by the International Bureau; International Registration

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.

C.Publication

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.

D.Examination by the Offices of the 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.

E. Effect as a Grant of Protection

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.

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