Hague – The International Design System

The Hague System for the International Registration of Industrial Designs provides a practical business solution for registering up to 100 designs in 73 contracting parties covering 90 countries, through the filing of one single international application.

Industrial Designs

What is an industrial design?

In a legal sense, an industrial design constitutes the ornamental or aesthetic aspect of an article.

An industrial design may consist of three dimensional features, such as the shape of an article, or two dimensional features, such as patterns, lines or color.

What kind of protection does an industrial design right offer?

In principle, the owner of a registered industrial design or of a design patent has the right to prevent third parties from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.

What kind of products can benefit from industrial design protection?

Industrial designs are applied to a wide variety of products of industry and handicraft items: from packages and containers to furnishing and household goods, from lighting equipment to jewelry, and from electronic devices to textiles. Industrial designs may also be relevant to graphic symbols, graphical user interfaces (GUI), and logos.

How are industrial designs protected?

In most countries, an industrial design needs to be registered in order to be protected under industrial design law as a “registered design”. In some countries, industrial designs are protected under patent law as “design patents ”.

Industrial design laws in some countries grant – without registration – time- and scope limited protection to so-called “unregistered industrial designs”.

Depending on the particular national law and the kind of design, industrial designs may also be protected as works of art under copyright law.

Hague Agreement Concerning the International Deposit of Industrial Designs

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Hague Agreement Concerning the International Deposit of Industrial Designs
${{{image_alt}}}$ Hague Union State, Party to 1960 Hague Act Hague Union State, Parties to 1999 Geneva Act covered by Regional Economic Integration Organization (REIO), not separate member Hague Union State, also covered by REIO
Signed	6 November 1925 (The Hague Agreement) 2 June 1934 (London act) 14 July 1967 (The Hague Act/Stockholm addnl Act) 2 July 1999 (Geneva Act)
Location	The Hague
Effective	1 June 1928
Parties	69^[1]
Depositary	Switzerland (1925/1934) Netherlands (1960) WIPO (1999)

The Hague Agreement Concerning the International Deposit of Industrial Designs, also known as the Hague system provides a mechanism for registering an industrial design in several countries by means of a single application, filed in one language, with one set of fees. The system is administered by WIPO.

Instruments[edit]

The Hague Agreement consists of several separate treaties,^[2] the most important of which are: the Hague Agreement of 1925, the London Act of 2 June 1934,^[3] the Hague Act of 28 November 1960 (amended by the Stockholm Act),^[4] and the Geneva Act of 2 July 1999.^[5]

The original version of the Agreement (the 1925 Hague version) is no longer applied, since all states parties signed up to subsequent instruments. The 1934 London Act formally applied between a London act state that did not sign up to the Hague and/or Geneva Act in relation with other London act states until October 2016. Since 1 January 2010, however, the application of this act had already been frozen.

Countries can become a party to the 1960 (Hague) Act, the 1999 (Geneva) Act, or both. If a country signs up to only one Act, then applicants from that country can only use the Hague system to obtain protection for their designs in other countries which are signed up to the same Act. For instance, because the Japan has only signed up to the 1999 (Geneva) Act, applicants which qualify to use the Hague system because their domicile is in the European Union can only get protection in countries which have also signed up to the 1999 Act or to both the 1999 and 1960 Acts.

Use of the system[edit]

Germany, Switzerland and the Republic of Korea were the three largest users of the Hague System in 2017

Qualification to use the Hague system[edit]

Applicants can qualify to use the Hague system on the basis of any of the following criteria:

the applicant is a national of a Contracting Party (i.e. member country)
the applicant is domiciled in a Contracting Party
the applicant has a real and effective industrial or commercial establishment in a Contracting Party
the applicant has its habitual residence in a Contracting Party (only available if the Contracting Party in question has adhered to the 1999 (Geneva) Act)

An applicant who does not qualify under one of these headings cannot use the Hague system. The Contracting Parties include not only individual countries, but also intergovernmental organisations such as the African Intellectual Property Organization (OAPI) and the European Union. This means an applicant domiciled in an EU member country that is not a Contracting Party, such as Austria or the United Kingdom, can nevertheless use the Hague system on the basis of his or her domicile in the European Union.

Application requirements[edit]

An application may be filed in English, French, or Spanish, at the choice of the applicant. The application must contain one or more views of the designs concerned and can include up to 100 different designs provided that the designs are all in the same class of the International Classification of Industrial Designs (Locarno Classification).

The application fee is composed of three types of fees: a basic fee, a publication fee, and a designation fee for each designated Contracting Party.

Examination and registration procedure[edit]

The application is examined for formal requirements by the International Bureau of WIPO, which provides the applicant with the opportunity to correct certain irregularities in the application. Once the formal requirements have been met, it is recorded in the International Register and details are published electronically in the International Designs Bulletin on the WIPO website.

If any designated Contracting Party considers that a design which has been registered for protection in that Contracting Party does not meet its domestic criteria for registrability (e.g. it finds that the design is not novel), it must notify the International Bureau that it refuses the registration for that Contracting Party. In every Contracting Party that does not issue such a refusal, the international registration takes effect and provides the same protection as if the design(s) had been registered under the domestic law of that Contracting Party.

Duration & renewal[edit]

The duration of an international registration is five years, extendable in further five-year periods up to the maximum duration permitted by each Contracting Party. For the 1934 London Act the maximum term was 15 years.

Renewals are handled centrally by the International Bureau. The applicant pays a renewal fee and notifies the International Bureau of the countries for which the registration is to be renewed.

Naming[edit]

The agreement was concluded at the Dutch city The Hague.

On 13 June 2018 the UK will become a member to the Hague Agreement for the International Registration of Industrial Designs, allowing the UK to be a designated state.

The Hague System provides a practical business solution for registering up to 100 designs in over 68 contracting parties, which can provide protection in up to 81 countries. This allows for a single international application filed with the International Bureau (IB) of the World Intellectual Property Organization (WIPO) rather than a whole series of applications which would otherwise have to be filed with different national offices

The Hague System of international registration of industrial designs is administered by the IB which maintains the International Register and publishes the International Designs Bulletin.

Businesses using the Hague system can designate the key markets where they trade to select appropriate coverage for their needs. The UK will be the 68th member of the Hague Agreement. Other members include the USA, Russia, Japan, South Korea and the EU.

There are two Acts of the Hague Agreement currently in operation:

The Geneva (1999) Act and
The Hague (1960) Act

An international application may be governed by the 1999 Act, the 1960 Act or both, depending on the Contracting Party with which the application originates from. UK applications would be governed by the 1999 Act.

This guidance provides a brief overview for UK designations to Hague. Further detailed guidance on how to make an application to the Hague System is available.

Benefits of Hague

Design intensive UK business generate in excess of 11 per cent of our GDP ¹ with a total investment in intangible assets protected by design rights estimated at more than £14 billion.² The UK membership to the Hague registration system will enable UK designers, particularly SMEs, to take full advantage of the flexibility and greater choice when registering their designs internationally. Other advantages include:

save money on design registrations

It is one application to manage that is paid in one currency and completed in one language. Other savings can be realised in professional, notary and translation fees

protecting Intellectual Property more efficiently The system simplifies the management of applications, as all administration is handled by one agency, the International Bureau
encourage non-UK owners of designs to register their rights in the UK UK membership should encourage non-UK owners of designs to register their rights in the UK, thereby encouraging the manufacture, distribution or licensing of their designs in the UK

Examples of designs protected through the Hague system are available.

Registration of designs

Who can apply to the Hague system?

A natural person or legal entity having a connection - through establishment, domicile, nationality or, under the 1999 Act, habitual residence - with a Contracting Party to either of the two Acts. UK applications would be governed by the 1999 Act.

How do I apply?

Application need to be filed directly with the IB, the Intellectual Property Office (IPO) will not be receiving applications directly. The application form is on the WIPO website in both digital and hard copy versions. You can file in either English, French or Spanish. An application must contain at least

one reproduction of a design, and
designate at least one contracting party

A single application can contain up to 100 designs, provided they are all in same Locarno class.

The filing of an international application does not require a base filing from any prior national application or registration and you can file for the first time through the Hague System.

Reproductions of a design

It is worth noting that the criteria for reproductions of your design may differ in each territory. To assist applicants WIPO have produced guidance on providing reproductions to ensure that images comply with the technical requirements under the Hague system within certain territories. If you are designating the UK it is also advisable to consult with the UK guidance on reproductions under Chapter 11 of the UK Registered Designs Examination Practice guide.

Fee structure

An international application is subject to the payment of three types of fees: a basic fee, a publication fee and, in respect of each Contracting Party where protection is sought, either a standard or an individual designation fee. The amounts of the fees payable are set out in the Schedule of Fees.

The UK has set its fees at the level 1 standard fee. This means that to designate the UK it will be 42 CHF (£30) for the first design, and 2 CHF (£1) for each additional design in same Locarno class. All payments to the IB must be made in Swiss Francs.

Examination of application

The IB carries out a formalities check it does not examine the application. Once the application is published, the Office of each designated Contracting Party can carry out a substantive examination, if provided for by its own legislation.

All applications which designate the UK, will be examined by the UK IPO we will register or refuse the application based on our national legislation.

Following examination a Contracting party may notify the IB of a refusal of protection for its territory. A refusal of protection, needs to be notified within 6 or 12 months. Countries acceding to the 1999 Geneva Act, such as the UK, can extend this to 12 months in the following cases:

the Office is an “Examining Office”, or
the national law provides for a procedure for opposition to the registration of an industrial design

Publication

An international application that complies with the formalities check is recorded in the International Register and, published in the International Designs Bulletin. This is available via Hague Express on WIPO’s website.

The filing/relevant date

This will be the date on which the IB receives the international application, subject to any formality type irregularities.

Deferment of publication

Hague allows for a maximum of 30 months for deferment of publication from the filing date or, where priority is claimed, from the priority date of the application concerned. UK law provides for 12 months from the filing date but does not backdate to reflect an earlier priority claim. Under Hague, deferment of publication will be the shortest period for designated countries. So if the UK is designated publication will need to be made in 12 months from the filing date.

The Hague system will inform applicants of the deferment dates provided for the territories selected.

What happens if my application is refused in a territory?

A refusal in a territory will only affect the protection for that territory and not the whole application. If the application is granted in other designated territories these will still stand.

In the event of a refusal, the holder has the same remedies as they would have if they had filed the application directly with the national Office concerned. If you want to contest a refusal you would need to follow the procedure in that area and submit an appeal to the competent authority of the contracting parties in accordance with that Contracting Party’s own legislation. The IB is not involved in this procedure.

Information including contact details on members of WIPO is available on their website.

Duration of protection

International registrations are valid for an initial period of five years. Contracting Parties designated under the 1999 Act can be renewed for two additional five-year periods for at least 15 years counted from the date of international registration. If a contracting party allows a longer period you can continue to renew an application for that territory up to the maximum time period allowed. The UK allows for a maximum period of 25 years.

Contracting Parties designated under the 1960 Act are valid for an initial period of five years and may be renewed for an additional period of five years for at least 10 years counted from the date of international registration. Again if a contracting party allows a longer period you can renew an application for that territory.

Information on the maximum duration of protection for contracting parties is supplied to holders in the unofficial notices of expiry which are sent by the IB six months before the expiration of each five-year term.

Representation before the International Bureau

An international application may be filed with the IB directly by the applicant or they may appoint a representative to act on their behalf. There are not requirements for a representative to have a professional qualification, nationality or domicile.

Only one representative may be appointed for an international application or registration. If the appointment indicates more than one representative in respect of the same application or registration, only the one indicated first is considered to have been appointed. Where a partnership or firm of attorneys or patent or trademark agents has been indicated, this is regarded as a single representative.

The appointment of a representative before the Office of a Contracting Party (in the event, for example, that an appeal is lodged against a refusal of protection) are a matter for the law and practice of the Contracting Party concerned. Details on the UK dispute resolution process is available on our website.

Post-registration

Changes in the International Register

The following changes must be recorded in the International Register:

a change in the name or address of the holder or his representative;
a change in the ownership of an international registration (in respect of all or only some of the designated Contracting Parties and in respect of all or some of the designs included in the registration);
a renunciation of all the designs that are the subject of the international registration, in respect of any or all of the designated Contracting Parties;
a limitation of some of the industrial designs that are the subject of the international registration, in respect of any or all of the designated Contracting Parties.

Requests must be made to the IB on the relevant forms and must be accompanied by the prescribed fees.

Renewals

Procedure for renewal

Six months before the expiry of each five-year term, the IB sends to the holder and the representative, if any, a notice indicating the date of expiry of the international registration, along with the maximum term of protection for contracting parties in the application.

It is worth noting that if the holder (or representative) does not receive this notice, it does not constitute an excuse for failure to comply with any time limit for payment of the renewal fees due.

There is a six month grace period following the date of renewal that allows holders to make a renewal. There is a surcharge applicable to this.

There is no official form for the renewal of an international registration. However, there is an unofficial form DM/4 which provides for the necessary information.

An electronic renewal (E-renewal) interface is available for total or partial renewal of international registrations, this automatically calculates the fee.

Fees for renewal

The fees due for the renewal of an international registration must be paid directly to the IB. Those fees consist of:

a basic fee;
an individual designation fee (if a Contracting Party has one),
a standard designation fee in respect of each Contracting Party for which the international registration is to be renewed

Recording of the renewal; certificate and publication

The IB records the renewal in the International Register, with the date on which it was due, even if the fees required were paid within the grace period of six months after the due date. The relevant data concerning the renewal is published in the Bulletin.

Where the international registration has been renewed, the IB sends a certificate of renewal to the holder.

Hague Agreement concerning the international registration of industrial designs

On December 18, 2012, the Patent Law Treaties Implementation Act of 2012 (PLTIA) was signed into law. The PLTIA among other things sets forth provisions implementing the 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs ("Hague Agreement"). These provisions (Title I of the PLTIA) took effect on May 13, 2015.

The Hague Agreement is an international registration system which offers the possibility of obtaining protection for up to 100 industrial designs in designated member countries and intergovernmental organizations (referred to as "Contracting Parties") by filing a single international application in a single language either directly with the International Bureau of the World Intellectual Property Organization (WIPO) or indirectly through the office of applicant's Contracting Party.

As of May 13, 2015, U.S. applicants can file international design applications through the USPTO as an office of indirect filing, and applicants filing international design applications can designate the United States for design protection. In addition, U.S. design patents resulting from applications filed on or after May 13, 2015 will have a 15 year term from issuance.

Information concerning the Hague system, including geographic coverage and a guide for users, is available at WIPO's Web site http://www.wipo.int/hague/en/.

International design application forms

Fees

Resources

Frequently asked questions

Effective date

Question HA0100: What is the effective date of the Hague Agreement with respect to the United States and Title I of the PLTIA?

The effective date of the Hague Agreement with respect to the United States and Title I of the PLTIA is May 13, 2015.

Filing an international design application

Question HA1000: Where can I file an international design application?

An international design application may be filed either directly with the International Bureau of the World Intellectual Property Organization (WIPO) or indirectly through the office of the applicant’s Contracting Party. The USPTO serves as an office of indirect filing for applicants having a sufficient connection to the United States. See Question HA1020 for further information regarding filing an international design application through the USPTO. Please note that a foreign filing license may be required to properly file an international design application directly with the International Bureau. See 35 U.S.C. 184. WIPO provides an electronic filing system for filing international design applications. Likewise, international design applications can be filed electronically through the USPTO via EFS-Web. International design applications can also be filed in paper with either WIPO or the USPTO, though additional WIPO publication fees may apply for paper submissions. See Question HA4000 for further information concerning fees.

Question HA1020: Who can file an international design application through the USPTO as an office of indirect filing?

To file an international design application through the USPTO as an office of indirect filing, the applicant, or each applicant if there is more than one applicant, must be a national of the United States or have a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States. In addition, the United States must be, for each applicant, the applicant’s Contracting Party. The official WIPO form for international design applications, “Application for International Registration” (Form DM/1), includes sections for indicating applicant’s entitlement to file an international design application and applicant’s Contracting Party.

Where the applicant does not have a connection to the United States as described above, but does have a connection to another Contracting Party to the Hague Agreement, the applicant may wish to consider filing the international design application directly with the International Bureau, subject to any requirement for a foreign filing license pursuant to 35 U.S.C. 184.

Question HA1040: What should be included in an international design application submission?

An international design application submission should include: (1) the “official form” and any required annexes, (2) reproductions, and (3) payment of the applicable fees.

Pursuant to Rule 7(1) of the Hague Agreement, an international design application must be presented on the “official form”. The International Bureau has established the “Application for International Registration” (Form DM/1) as an official form for presenting an international design application. In addition, the International Bureau has established annexes to the DM/1 form that may be required where certain Contracting Parties have been designated. Both the DM/1 form and annexes are available on the web site of the International Bureau at http://www.wipo.int/hague/en/forms/.

Reproductions may generally be in the form of drawings and/or photographs of the industrial designs. An international design application may include up to 100 industrial designs. However, all of the designs must belong to the same class of the International (Locarno) Classification. The list of classes of the Locarno Classification together with explanatory notes is available on the WIPO web site at: http://www.wipo.int/classifications/locarno/en/.

International design applications are subject to application fees payable to WIPO. In addition, if the international design application is filed through the USPTO as an office of indirect filing, payment of a transmittal fee is required. Applicants filing international design applications through the USPTO are not required to pay the WIPO application fees through the USPTO. However, payment of the transmittal fee is required to be paid to the USPTO in order for the application to be transmitted to the International Bureau. See Questions HA4000 and HA4020 for further information concerning fees.

Question HA1060: Are there any USPTO forms specific to the filing on an international design application through the USPTO?

No, there are no USPTO forms specific to the filing of an international design application through the USPTO. The official application form for presenting an international design application, i.e., the “Application for International Registration” (Form DM/1), and annexes are forms established by the International Bureau. These forms are available at http://www.wipo.int/hague/en/forms/.

Question HA1080: If the United States is designated, must the WIPO declaration of inventorship form or WIPO substitute statement form contained in Annex I be used for submitting the required inventor’s oath or declaration?

Use of the WIPO declaration of inventorship form or WIPO substitute statement form is not mandatory but is encouraged, as the WIPO forms are specifically tailored for use in international design applications.

Question HA1100: If the United States is designated, must Annex III for submitting an Information Disclosure Statement (IDS) be included with the submission of the international design application?

No, Annex III for submitting an IDS is not required to be submitted with the international design application. The Office will considered an IDS submitted within three months of the date of publication of the international registration without the need for fee or statement under 37 CFR 1.97(e), and after this three-month period as provided in 37 CFR 1.97.

Question HA11020: What are the requirements applicable to the reproductions of the industrial design?

The requirements applicable to reproductions are set forth in Rule 9 of the Hague Agreement and Part of Four of the Administrative Instructions for the Application of the Hague Agreement. The Regulations under the Hague Agreement and the Administrative Instructions may be accessed on the web site of WIPO at: http://www.wipo.int/hague/en/legal_texts/. In addition, certain technical requirements regarding image files, such as resolution, minimum and maximum image size, border width, etc., are set forth on the WIPO web site at: http://www.wipo.int/hague/en/how_to/file/prepare.html. For reproductions filed through the USPTO as an office of indirect filing via EFS-Web, also see the EFS-Web Quick Start Guide for international design application submissions available at: http://www.uspto.gov/patents-application-process/applying-online/efs-web-guidance-and-resources

Filing and international registration dates

Question HA2000: Does the USPTO, as an office of indirect filing, accord an international design application a filing date under the Hague Agreement?

No, an office of indirect filing does not accord international design applications filing dates under the Hague Agreement. Under the Hague Agreement, the International Bureau reviews international design applications for formal matters and, if appropriate, accords a filing date pursuant to Article 9 and Rules 13 and 14. The office of indirect filing will record the receipt date of the international design application and the International Bureau may accord that date as the filing date pursuant to the relevant provisions of the Hague Agreement.

Question HA2020: What defects or other matters can impact the filing date of the international design application under the Hague Agreement?

The filing date of an international design application (“international filing date”) is accorded by the International Bureau in accordance with Article 9 and Rules 13 and 14 of the Hague Agreement. Pursuant to Rule 14(2), the International Bureau will not accord a filing date if the application is not in one of the prescribed languages (English, French, or Spanish) or is missing any of the following elements: (1) an indication that international registration under the Hague Agreement is requested; (2) a sufficient indication of the applicant’s identity; (3) a sufficient indication to allow the applicant or it’s representative to be contacted; (4) a reproduction or specimen of each industrial design that is the subject of the application; and (5) the designation of at least one Contracting Party. If the application does not contain an element(s) above, the filing date will be the date the International Bureau receives the omitted element(s), if timely furnished.

In addition, for applications filed through the USPTO as an office of indirect filing, an international design application will not be entitled to receive an international filing date that is the receipt date of the international design application by the USPTO if the application is not governed exclusively by the 1999 Geneva Act, or the application is not received by the International Bureau within six months from the date of receipt by the USPTO. Applicants should include payment of the transmittal fee when submitting an international design application to the USPTO to avoid delay in transmitting the application to the International Bureau. In addition, applicants should be cautious when filing through the USPTO to not designate a Contracting Party that is only party to the 1960 Hague Act and not the 1999 Geneva Act.

The international filing date is NOT the filing date of the international design application in the United States. The filing date of an international design application in the United States is the date of international registration. See 35 U.S.C. 384 and Question HA2040. These dates may however be the same date in practice in given applications.

Question HA2040: What is the date of international registration?

The date of international registration is the later of the international filing date (see Question HA2020) or the date a required element under Article 5(2) is received by the International Bureau. See Article 10(2). The filing date of an international design application in the United States is the date of international registration. See 35 U.S.C. 384.

An element under Article 5(2) is required where the international design application designates a Contracting Party that has made a declaration under Article 5(2) that its national law requires for a filing: (i) an indication identifying the creator of the industrial design; (ii) a brief description of the reproduction or of the characteristic features of the industrial design that is the subject of that application; and/or (iii) a claim. The United States has made a declaration under Article 5(2) requiring a claim.

Question HA2060: If I believe the international design application is entitled to a U.S. filing date other than the date of international registration, can I request review of the U.S. filing date?

Yes, applicants may petition under 37 CFR 1.1023(b) for review of the U.S. filing date. The petition requires a showing that the international design application is entitled to the requested filing date and must be accompanied by the petition fee set forth in 37 CFR 1.17(f).

USPTO review and transmittal; Responding to invitations from the International Bureau

Question HA3000: What does the USPTO review as an office of indirect filing?

The USPTO reviews applicant’s entitlement to file through the USPTO, payment of the transmittal fee, and performs a national security review. If these three conditions are met, the USPTO will transmit the application to the International Bureau. Applicant will receive notice of the transmittal and of the international design application receipt date. If these three conditions are not met, the USPTO will not transmit the application to the International Bureau, and the USPTO will notify the applicant of the reason why the application was not transmitted.

Question HA3020: Can an applicant file a reply to an invitation sent by the International Bureau through the USPTO?

No, any reply to an invitation sent to the applicant by the International Bureau must be sent directly to the International Bureau to avoid abandonment or other loss of rights under Article 8 of the Hague Agreement. The USPTO will generally not forward any communications to the International Bureau received after the international design application has been transmitted to the International Bureau.

Fees

Question HA4000: What are the required fees for an international design application filed through the USPTO?

An international design application filed through the USPTO as an office of indirect filing is subject to payment of a transmittal fee to the USPTO, in addition to the applicable international fees (basic fee, designation fee(s), publication fee, and the fee for a description exceeding 100 words) payable to WIPO.

The International Bureau provides an online tool, the Hague System Fee Calculator, to assist the applicant in calculating the appropriate WIPO application fees. The Hague System Fee Calculator tool is available at http://www.wipo.int/hague/en/fees/calculator.jsp.

Please note that international design applications filed in paper, whether directly with the International Bureau or indirectly through the USPTO, are subject to an additional publication fee for each page containing a reproduction after the first page. In addition, reproductions filed through EFS-Web in other than the prescribed manner may be subject to this additional publication fee. See the EFS-Web Quick Start Guide for further information: http://www.uspto.gov/sites/default/files/documents/Hague-QSG.pdf

Question HA4020: Do I need to pay the transmittal fee and WIPO application fees when filing the international design application through the USPTO?

The USPTO strongly encourages payment of the transmittal fee at the time of filing an international design application through the USPTO. The USPTO will not transmit the international design application to the International Bureau if the transmittal fee has not been paid to the USPTO. Applicants are cautioned that an international design application not received by the International Bureau within six months from the date the international design application is received by the USPTO will not be entitled to a filing date of the date of receipt by the USPTO.

The WIPO application fees are not required to be paid through the USPTO. After receipt of the international design application by the International Bureau, the International Bureau will invite applicant to pay the required fees within a prescribed time limit.

WIPO application fees may not be paid through the USPTO after the date of payment of the transmittal fee. Furthermore, any payment of WIPO application fees through the USPTO must be in U.S. dollars. As all payments made to the International Bureau must be in Swiss currency, the U.S. dollar amount collected may, when converted to Swiss currency, be different than the required Swiss currency amount. Accordingly, applicants are cautioned that paying such international fees through the USPTO may still result in a requirement by the International Bureau for payment of additional amounts where the conversion from U.S. dollars to Swiss currency results in the International Bureau receiving less than the prescribed amounts.

Applicants may also wish to consider establishing a current account with WIPO and including authorization in the Payment of Fees section of the DM/1 form instructing the International Bureau to debit the required fees from the WIPO current account. For additional information concerning how to pay fees to WIPO, please see http://www.wipo.int/about-wipo/en/finance/hague.html.

Question HA4040: Are there discounted fees for small or micro entities?

A small entity discount of 50% and a micro entity discount of 75% are available with respect to the designation fee for the United States. In this regard, Box 18 of the DM/1 form provides for the indication of small or micro entity status for purposes of a reduction in the U.S. designation fee. To obtain the micro entity discount for the U.S. designation fee, a certification of micro entity status must be submitted. Annex IV to the DM/1 form, available at http://www.wipo.int/hague/en/forms/, provides for the submission of a certification of micro entity status.

In addition, effective January 16, 2018, small entity and micro entity discounts are available with respect to the transmittal fee payable to the USPTO as an office of indirect filing. The provisions for qualifying for small or micro entity status are set forth in 37 CFR 1.27 and 1.29, respectively. To establish micro entity status, a certification of micro entity status form (Form PTO/SB/15A or PTO/SB/15B) must be submitted. Small entity status may be established by submitting a signed written assertion of entitlement to small entity status (37 CFR 1.27(c)(1)). Where the United States is designated, these requirements may be satisfied by completing Box 18 of the DM/1 form and, for micro entity status, inclusion of Annex IV.

Priority/benefit claims

Question HA5000: My international design application did not include a claim for foreign priority. Can I add the foreign priority claim during the U.S. examination phase?

Yes, a claim for foreign priority may be added in an international design application in the U.S. examination phase pursuant to the provisions of 37 CFR 1.55(m).

Question HA5020: Does the Hague Agreement provide for submission of the certified copy of the priority document in the international phase to the International Bureau?

No, there is no provision under the Hague Agreement for filing a certified copy of the priority document with the International Bureau. Applicants will have to furnish any required certified copy in accordance with each Contracting Party’s applicable law.

Question HA5040: Can a nonprovisional application claim benefit to an international design application designating the United States?

Yes, a nonprovisional application may claim benefit to an international design application designating the United States in accordance with the conditions and requirements of 35 U.S.C. 120. See 35 U.S.C. 386(c). The international design application must be entitled to a filing date under 37 CFR 1.1023, and the specific reference to the international design application must identify the relationship of the applications and identify the international design application by the U.S. application number or, alternatively, by the international registration number and filing date under 37 CFR 1.1023. See 37 CFR 1.78(d).

Question HA5060: Can a continued prosecution application (CPA) be filed in an international design application?

No, a CPA cannot be filed in an international design application. See 37 CFR 1.53(d).

Examination

Question HA6000: Will substantive examination of an international design application by the USPTO differ from the substantive examination of a regular U.S. design application?

No, substantive examination of an international design application designating the United States will generally be the same as that for a regular design application filed in the United States.

Question HA6020: Is a notification of refusal from the USPTO communicated directly to the applicant?

No, the notification of refusal from the USPTO is not communicated directly to the applicant. Pursuant to the requirements of the Hague Agreement, a notification of refusal is communicated to the International Bureau, which then communicates the notification of refusal in accordance with the applicable provisions of the Hague Agreement.

Question HA6040: How does the applicant reply to a notification of refusal sent by the USPTO?

Any reply to a notification of refusal must be sent directly to the USPTO and not through the International Bureau. U.S. rules applicable to replies to office actions in regular U.S. applications apply to replies to a notification of refusal, including the requirement that a reply must be signed in accordance with the provisions of 37 CFR 1.33(b).

Question HA6060: How will the USPTO treat an international design application having multiple designs in the U.S. examination phase?

Only one independent and distinct design may be claimed in the U.S. examination phase. If more than one such design is present, the examiner will require applicant to elect one independent and distinct design for prosecution. See 37 CFR 1.1064. Applicants may pursue protection for the non-elected designs through the filing of divisional applications.

Patent term

Question HA7000: Does the 15 year patent term apply to a design application filed before May 13, 2015 but issued on or after May 13, 2015?

No, the 15 year patent term for design patents set forth in 35 U.S.C.173 as amended by the PLTIA applies only to design applications filed on or after May 13, 2015.

Question HA7020: If a design application is filed on or after May 13, 2015 and is a continuing application (i.e., continuation, divisional, or continuation-in-part application) of an application filed prior to May 13, 2015, will the continuing design application be subject to the 15 year patent term?

Yes, since the continuing design application was filed on or after May 13, the continuing design application would be subject to the 15 year patent term set forth in 35 U.S.C.173 as amended by the PLTIA.

Question HA7040: Is renewal of the international registration required to maintain a U.S. design patent issued on an international design application in force?

Renewal of the international registration, as provided for under Article 17 of the Hague Agreement, is not required to maintain a U.S. design patent issued on an international design application in force.

General

Question HA8000: Can WIPO’s publication of the international design application be accelerated or deferred?

Standard publication of an international registration by WIPO is six months after the date of international registration, or as soon as possible thereafter. An applicant may request immediate publication, in which case publication will occur immediately after international registration. Alternatively, applicants may request deferment of publication of up to 30 months from the priority date (or from the filing date, if no priority is claimed). However, deferment of publication is not permitted if the international design application designates a Contracting Party that does not permit deferred publication, such as the United States. In addition, some Contracting Parties limit the period of deferment to less than 30 months.

Question HA8020: Is expedited examination under 37 CFR 1.155 available for international design applications?

Yes, expedited examination under 37 CFR 1.155 (“rocket docket”) is available for international design applications. To quality, the international design application must have been published by WIPO.

Question HA8040: Can an international design application be converted to a design application under 35 U.S.C. chapter 16?

Yes, an international design application may be converted to a design application under 35 U.S.C. chapter 16 pursuant to the provisions of 37 CFR 1.1052. Pursuant to 37 CFR 1.1052, the international design application must have been filed with the USPTO as an office of indirect filing, designated the United States, and satisfy the requirements for a filing date for a design application filed under 35 U.S.C. chapter 16. In addition, the petition must be filed prior to WIPO publication of the international registration and be accompanied by the petition fee set forth in 37 CFR 1.17(t).

Tips for filing new international design applications

In general

1. Deciding where to file

U.S. applicants should consider whether to file the international design application through the USPTO or directly with the International Bureau (IB) based on their specific circumstances. Filing the application directly with the IB avoids having to pay a transmittal fee to the USPTO and enables the IB to perform a formalities review earlier, which may be important for applicants wanting immediate publication or a certified copy of the international design application quickly. In addition, for applications filed through the IB’s electronic filing (E-filing) interface on or after March 30, 2016, applicants will have the ability to send corrections of irregularities or defects (including corrected reproductions and documents) electronically to the IB via the E-Filing Portfolio Manager. See http://www.wipo.int/edocs/hagdocs/en/2016/hague_2016_5.pdf. The IB’s E-filing interface also provides for electronic entry of application data, thus eliminating the need for a separate DM/1 form, and the entered data is validated in real time to minimize errors in the application submission. Furthermore, filing through the USPTO is not possible if each applicant does not have at least one of a U.S. nationality, or a domicile, habitual residence, or real and effective industrial or commercial establishment in the United States.

It is important to note, however, that a foreign filing license may be needed to file an international design application directly with the IB. In addition, unlike filing an international design application through EFS-Web, reproductions in PDF format are not accepted by the IB’s E-filing system.

2. Ensure that applications filed through the USPTO meet the conditions for transmittal to the International Bureau (IB)

Even if the application contains, upon filing with the USPTO, all elements required under the Hague Agreement for a filing date, entitlement to the USPTO receipt date as the filing date is contingent upon the IB receiving the application from the USPTO within six months of the USPTO receipt date. See Hague Agreement Rule 13. The USPTO will not transmit the application to the IB if the transmittal fee has not been paid or the DM/1 application form fails to indicate, for each applicant, at least one of a U.S. nationality, or a domicile, habitual residence, or real and effective industrial or commercial establishment in the United States. (Box 2 of the DM/1 form). In addition, for each applicant, the United States must be indicated as the “applicant’s contracting party” (Box 3 of the DM/1 form).

The USPTO will notify applicants, usually within a couple weeks of receipt of the application, whether the application has been transmitted to the IB, or if not, the reason for not transmitting the application. Shortly after receipt of the application from the USPTO, the IB will also send an acknowledgement receipt to the applicant confirming receipt of the application and assigning an IB reference number. Applicants may wish to consider docketing their international design applications for receipt of these notifications, and to contact the USPTO or IB, as appropriate, if after an inordinate period of time a notification has not been received.

3. Decide carefully in advance which Contracting Parties to designate for protection

Applicants should carefully consider in advance which Contracting Parties to designate for design protection as additional Contracting Parties cannot be added after filing the application. Also, international fees are dependent upon the Contracting Parties designated.

If filing the application through the USPTO as an office of indirect filing, applicants should consider avoiding designating a Contracting Party that is party only to the 1960 Act (and not the 1999 Geneva Act of the Hague Agreement) even if the applicant has a basis of entitlement to file under the 1960 Act. Doing so may result in the application not being governed exclusively by the 1999 Act, in which case the application could not be accorded the application receipt date at the USPTO as the filing date. See Hague Agreement Rule 13. The DM/1 form includes an attached listing of Contracting Parties specifying the Act(s) by which the Contracting Parties are bound.

4. Use the proper Appointment of Representative form

If applicant’s representative has signed the DM/1 form, a separate communication appointing that representative before the International Bureau (IB) in accordance with Hague Agreement Rule 3 will be required by the IB. WIPO Form DM/7, “Appointment of a Representative,” available at http://www.wipo.int/hague/en/forms/, may be used for this purpose. Applicants should NOT use the USPTO Power of Attorney forms to appoint a representative before the IB.

DM/1 form and annexes:

1. Use Box 9 (“Description”) and/or Box 10 (“Description of the Reproductions (Legends))” of the DM/1 form to provide any description

Box 9 (Description) of the DM/1 form is for providing any necessary or otherwise appropriate description concerning the design(s). Box 10 (Description of the Reproductions (Legends)) is for providing any figure descriptions. These boxes each include a check box to indicate the use of a continuation sheet if additional space is needed. If a description is being furnished separately from the DM/1 form, the continuation sheet check box should be checked, and the sheet(s) of the separately provided description should be identified as a continuation sheet(s) of Box 9 and/or Box 10, as applicable. This will help resolve any uncertainty as to the purpose of the submitted material.

Also note that a Box 9 description exceeding 100 words will be subject to an additional fee for each word in excess of 100 words. Applicants should consider using Box 10 rather than Box 9 to provide any figure descriptions, as the Box 10 description of the reproductions is not subject to the additional word fee. Box 10 also conveniently provides for the use of codes to indicate the type of view for each reproduction, e.g., 1 = perspective view, 2 = front view, etc. Alternatively, applicants may in Box 10 provide a different figure description, provided that such description does not exceed 40 characters.

2. Don’t submit an annex if the Contracting Party for which that annex relates is not designated

Annexes have been developed to accommodate varying requirements and practices among Contracting Parties and are for submission of required or optional content only for certain designated Contracting Parties. Accordingly, if the Contracting Party for which an annex relates is not designated, then such annex should not submitted. For example, if the United States is not designated, Annexes I, III and IV, which are relevant only for the designation of the United States, should not be submitted.

3. In the international phase, priority documents may only be submitted for the purpose of the designation of the Republic of Korea (KR)

The procedures under the Hague Agreement do not provide for the submission of priority documents directly or indirectly with the International Bureau except when provided as part of Annex V for the purposes of the designation of the Republic of Korea (KR). The Korean Intellectual Property Office (KIPO) does not require an original certified priority document; KIPO will accept a copy of the certified priority document. This is important to note as EFS-Web does not permit the filing of an original certified priority document. Applicants filing an international design application through the USPTO via EFS-Web who wish to include a priority document via Annex V for the purposes of the designation of the Republic of Korea can file a copy of the certified priority document in PDF format.

For designated Contracting Parties that require a priority document under their national law, including the Republic of Korea if the priority document was not submitted via Annex V, applicants will need to submit the required priority document directly to those Contracting Parties within their respective applicable time limits.

Reproductions

1. When filing a new international design application via EFS-Web, each image file uploaded via the “Attach Reproductions” section should contain only one reproduction (i.e., one view)

When filing an international design application through the USPTO as an office of indirect filing via EFS-Web, each image file uploaded via the “Attach Reproductions” section should contain only one reproduction (i.e., one view). EFS-Web will prompt the filer to assign a single figure number (i.e., design and view number) as each reproduction image file is uploaded. Presenting multiple views in a single image file uploaded via the “Attach Reproductions” section will likely result in the applicant receiving an irregularity notice from the International Bureau.

2. Number reproductions in accordance with Administrative Instruction 405

The numbering of the reproductions in international design applications is governed by Administrative Instruction 405, which provides: “[w]hen the same industrial design is represented from different angles, the numbering shall consist of two separate figures separated by a dot (e.g., 1.1, 1.2, 1.3, etc. for the first design, 2.1, 2.2, 2.3, etc. for the second design, and so on).” Thus, for example, a design shown in three views may have the reproductions numbered as 1.1, 1.2, and 1.3, respectively. Numbering the reproductions as “Fig. 1”, “Fig. 2”, and “Fig. 3”, as is the practice in regular U.S. design applications, does not comply with Administrative Instruction 405.

3. When filing a new international design application via EFS-Web, reproductions uploaded via the “Attach Reproductions” section should not include reproduction numbering in the image uploaded

When filing an international design application through the USPTO as an office of indirect filing via EFS-Web, the reproductions attached via the “Attach Reproductions” section should not include any reproduction numbering in the reproduction image files uploaded. Instead, EFS-Web will prompt the filer to assign a design and view number as each reproduction image file (single page PDF or JPEG) is uploaded.

The reproduction numbering assigned to each image file uploaded in the “Attach Reproductions” section should be consistent with any reproduction numbering provided elsewhere in the application, for example, in the reproduction number column in Box 10 “Description of the Reproductions (Legends)” of the DM/1 form.

4. The dimensions of the representation of each design submitted in PDF or paper should not exceed 16 x 16 centimeters

Administrative Instruction 402(b) provides that “[t]he dimensions of the representation of each industrial design appearing in a photograph or other graphic representation may not exceed 16 x 16 centimeters…” This size limit relates to the dimensions of the representation (figure), not the medium (e.g., A4 size paper) on which the representation is presented. Representations exceeding this size limit will be scaled down by the IB to meet the 16 x 16 centimeters size limit. This may result in a loss of consistency in scaling among the different views.

5. Orient the design in the upright position

Reproductions are typically published by the International Bureau based on the orientation of the reproduction as originally submitted. As a result, if the original image is rotated 90 degrees, it will likely be published with the same orientation. To help ensure that designs are published by the International Bureau in the proper orientation, applicants should avoid submitting reproductions in a landscape orientation.

Resolution
WHEREAS, registered designs are a powerful tool in intellectual property protection and enforcement. They are the natural means to protect the form of products, in particular given that trademark owners are unable to register 3D trademarks in many countries; and

WHEREAS, the Hague System is the designs counterpart of the Madrid System for trademarks. Working as an agreement for international procedure, the Hague System offers an efficient and cost-effective process to protect registered designs in the 65 countries and intergovernmental organizations that are currently members of the Hague System. As such, it clearly facilitates the access of rights owners to intellectual property rights; and

WHEREAS, with the recent accession by the United States, Japan, and the Republic of Korea (South Korea), the use of the Hague system continues to increase; and

WHEREAS, greater flexibility would be afforded to design-right holders if the individual member countries of an intergovernmental organization also become members of the Hague System; and

WHEREAS, it is critical for countries and intergovernmental organizations acceding to the Hague Agreement to enact implementing legislation for the registration and enforcement of design rights;

BE IT RESOLVED, that the International Trademark Association encourages countries, intergovernmental organizations, and non-member countries whose citizens are covered by the adherence of an intergovernmental organization to accede to the Hague Agreement Concerning the International Registration of Industrial Designs.

BE IT FURTHER RESOLVED, that countries and intergovernmental organizations acceding to the Hague Agreement should enact implementing legislation on the registration and enforcement of design rights.

Background

The Hague Agreement consists of three independent Acts: the London (1934) Act (frozen since January 2010; the London Act will terminate on 18 October 2016); the Hague (1960) Act (in decrease) and the Geneva (1999) Act.

The major advantage of the Hague System is to standardize formal requirements and centralize all administrative issues for international registered design applications: ONE single application, in ONE language (English, French or Spanish), with ONE fee in ONE currency resulting in ONE registration with ONE number, covering ONE OR MORE countries or intergovernmental organizations.

The consequence and major advantage is that the Hague System lowers transaction costs for design registrations. Although the benefit of the System is limited to the current members of the 65 countries and intergovernmental organizations (e.g., the European Union and the African Intellectual Property Organization or “OAPI’), coverage is expected to grow as more members join.

Unlike trademarks under the Madrid System, an international design application under the Hague System does not require a prior national (or intergovernmental) application or registration. This provides increased flexibility to the owner for the management of their portfolios of registered designs.

International registrations are published in the International Designs Bulletin six months after their date of registration, but applicants can request an immediate publication or a deferral of publication. The publication of international registrations can be deferred for up to 12 months or 30 months. Many countries have a deferment procedure, which entitles the applicants to provisional rights and makes designs quickly profitable and valuable.

A single application may include up to 100 different designs, but all must belong to the same class of the Locarno Classification for industrial designs.

The term of protection of an international registration is five years from the date of the international registration (i.e. the filing date). An international registration may be renewed for one or more additional terms of five years in respect of each country, up to the expiry of the total term of protection allowed under the national laws of those countries.

In summary, the Hague System provides a simplified way of obtaining design registrations in multiple jurisdictions. The International Design Harmonization Subcommittee of the Designs Committee has prepared an accompanying Reportto describe in more details the Hague System, its procedures, and pros and cons.
With the recent accession of the Republic of Korea, the United States and Japan, the Hague System is becoming a very important tool to obtain registered design protection around the world. With its recent growth and future development potential, and considering the many legislations involved, the Hague System more than ever needs the support of the intellectual property community. Moreover, greater flexibility would be available to design-right holders if individual countries of an intergovernmental organization which is or becomes a member of the Hague Agreement also join the System.

Accordingly, the International Design Harmonization Subcommittee of the Designs Committee recommends that the Board of Directors adopts this resolution setting forth INTA’s support for the Hague System, and noting that INTA will actively participate in its development in the future, in particular in new countries and intergovernmental organizations. INTA also will assist the users of the System to find ways to simplify and harmonize procedures for industrial design registrations, in line with INTA’s core mission of promoting further harmonization of trademark rights and related rights.

Hague Agreement Concerning the International Registration of Industrial Designs

The Hague Agreement governs the international registration of industrial designs. First adopted in 1925, the Agreement effectively establishes an international system – the Hague System – that allows industrial designs to be protected in multiple countries or regions with minimal formalities.

Summary of the Hague Agreement Concerning the International Registration of Industrial Designs (1925)

Two Acts of the Hague Agreement are currently in operation – the 1999 Act and the 1960 Act. In September 2009, it was decided to freeze the application of the 1934 Act of the Hague Agreement, thus simplifying and streamlining overall administration of the international design registration system.

An international design registration may be obtained only by a natural person or legal entity having a connection – through establishment, domicile, nationality or, under the 1999 Act, habitual residence – with a Contracting Party to either of the two Acts.

The Hague Agreement allows applicants to register an industrial design by filing a single application with the International Bureau of WIPO, enabling design owners to protect their designs with minimum formalities in multiple countries or regions. The Hague Agreement also simplifies the management of an industrial design registration, since it is possible to record subsequent changes and to renew the international registration through a single procedural step.

An international application may be governed by the 1999 Act, the 1960 Act or both, depending on the Contracting Party with which the applicant has the connection described above (hereafter referred to as "Contracting Party of origin").

International design applications may be filed with the International Bureau of WIPO, either directly or through the industrial property office of the Contracting Party of origin if the law of that Contracting Party so permits or requires. In practice, however, virtually all international applications are filed directly with the International Bureau, and the majority are filed using the electronic filing interface on WIPO's website.

International applications may include up to 100 designs, provided they all belong to the same class of the International Classification for Industrial Designs (Locarno Classification). Applicants may choose to file an application in English, French or Spanish. International applications must contain one or several reproductions of the industrial design(s) and must designate at least one Contracting Party.

International registrations are published in the International Designs Bulletin, issued weekly online. Depending on the Contracting Parties designated, applicants may request that the publication be deferred by a period not exceeding 30 months from the date of the international registration or, if priority is claimed, from the priority date.

Each Contracting Party designated by the applicant may refuse protection within 6 months, or possibly 12 months under the 1999 Act, from the date of publication of the international registration. Refusal of protection can only be based on requirements of the domestic law other than the formalities and administrative acts to be accomplished under the domestic law by the office of the Contracting Party that refuses protection.

If no refusal is notified by a given designated Contracting Party within the prescribed time limit (or if such refusal has subsequently been withdrawn), the international registration has effect as a grant of protection in that Contracting Party, under the law of that Contracting Party.

The term of protection is five years, renewable for at least one five-year period under the 1960 Act, or two such periods under the 1999 Act. If the legislation of a Contracting Party provides for a longer term of protection, protection of the same duration shall, on the basis of the international registration and its renewals, be granted in that Contracting Party to designs that have been the subject of an international registration. To facilitate access to the Hague system for design creators from least developed countries (LDCs), the fees for an international application are, in their case, reduced to 10 per cent of the prescribed amounts.

The 1934 Act

The application of the 1934 Act was frozen as of January 1, 2010, meaning that no new registration or designation under the 1934 Act could be entered in the International Register as of that date. However, the renewal of existing designations under the 1934 Act and the recording in the International Register of any change affecting such designations will continue to be possible up to the maximum duration of protection under the 1934 Act (15 years).

General

The WIPO Secretariat publishes a Guide to the International Registration of Industrial Designsfor users of the Hague system.

The Hague Agreement, concluded in 1925, was revised at London in 1934 and at The Hague in 1960. It was completed by an Additional Act signed at Monaco in 1961 and by a Complementary Act signed at Stockholm in 1967, which was amended in 1979. As noted above, a further Act was adopted at Geneva in 1999.

The Hague Agreement created a Union, which, since 1970, has had an Assembly. Every member of the Union that has adhered to the Complementary Act of Stockholm is a member of the Assembly. Among the most important tasks of the Assembly are the adoption of the biennial program and budget of the Union and the adoption and modification of the implementing regulations, including the fixing of the fees connected with the use of the Hague system.

The 1999 Act of the Agreement is open to any WIPO Member State and to certain intergovernmental organizations. Instruments of ratification or accession must be deposited with the Director General of WIPO. While the 1960 Act remains open to States party to the Paris Convention for the Protection of Industrial Property (1883), it is the more advantageous 1999 Act that governments of prospective Contracting Parties are encouraged to join.

Hauge Agreement