Hague Agreement and the First Hague Design Granted Protection in the United States
The Hague Agreement is an international registration system that allows the possibility of obtaining protection for up to 100 industrial designs in designated member countries and intergovernmental organizations (known as “Contracting Parties”) by filing a single international application in a single language with either the International Bureau of the World Intellectual Property Organization (WIPO) or through the office of applicant’s Contracting Party.
The United States agreed to the Hague System in May 13, 2015, and U.S. applicants can file international design applications through the United States Patent and Trademark Office (USPTO) as an office of indirect filing, and applicants filing international design applications can designate the United States for design protection. The resulting design patents from applications filed on or after May 13, 2015 will have a 15-year term from issuance.
Since agreeing to the Hague System, the USPTO applies the extended 12-month period from the date of publication of an international registration to refuse protection on substantive grounds.
One important aspect of the Hague System is that if the IP office of a Contracting Party does not communicate its refusal of an international design registration within the specified time period, then that registration has the same effect in the contract party concerned as a domestic registration. The Hague System allows the IP offices of members to use statements of grant protection (“SGP”s) when they have no substantive objections to an international registration, which allows users to receive an explicit communication that their international registration has survived substantive examination rather than waiting until the end of the refusal period before implicitly reaching that conclusion. Japan and Republic of Korea follow the same practice.
The USPTO did not start its examination of international design registrations until spring 2016; thus, the first registrations were nearing the 12-month mark for refusal. International Registration DM/086482 for a cosmetic applicator is one of the first registrations designated in the United States. The underlying application designated two countries, including Republic of Korea and the United States.
The Korean Intellectual Property Office issued an SGP with respect to DM/086482 on January 18, 2016 and the USPTO issued its SGP on April 26, 2016, making it the first international registration to be granted protection in the United States. This was significant since it was achieved much faster than the average time to issue a domestic design patent in the United States.
The registration was grated directly and no objection had been raised by the USPTO, so that the design rights for the cosmetic applicator were secured in the United States without any U.S. design patent attorney involvement and the applicant had no objections to overcome.
The DM/086482 cosmetic applicator is proof that it is possible for a foreign applicant to satisfy the disclosure requirements of the two most stringent examining offices in the world, prepared according to the standards as required under the Hague System. In issuing its first SGP, the USPTO has diminished much of the uncertainty surrounding the treatment of international registrations filed under the Hague System by such stringent national offices.