Basic Hague Agreement Principles

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

mercial

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

rmine 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

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

e 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

ix 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

ides 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/

ague 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

18

bis,

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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