A Study on Geneva Act of the International Registration of Industrial Designs

A Study on Geneva Act of the International Registration of Industrial Designs
- Hague System-
-Sang Yoon Kang
1. Introduction

One commentator on the recent Apple-Samsung intellectual property wars said, “After operating in the intellectual property backwaters for years, design patents took center stage in the epic battle.”[1]  According to a recent World Intellectual Property Organization (“WIPO”) study, the filing of design patent applications is more than doubled between 2004 and 2011.[2]  The number of litigations based on design patents also keeps increasing.  Design patent is now getting more significant and growing in the IP field.
U.S. design patent applicants must file separate design applications in each country where protection is sought, generally within a six-month priority window from the filing date of an earliest priority-based application.  Furthermore, requirements and procedures for filing design patent applications are often different by countries.
On February 13, 2015, the U.S. Patent and Trademark Office (“USPTO”) deposited with the WIPO an instrument of ratification of the 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“Hague Agreement”).  Subsequently, on April 2, 2015, the USPTO published the final rules implementing the Hague Agreement.
As a result of the ratification and implementation, the U.S. has become a participating member of the Hague Agreement since May 13, 2015, and USPTO is currently accepting international design patent applications under the Hague Agreement.  That is, U.S. applicants are able to enjoy the Hague System to protect their designs.  Currently, Hague System participants include 64 member countries, such as, the European Union, Switzerland, Norway, South Korea, Japan and Singapore.  With the United States’ participating, it is widely expected that the network will grow more rapidly in the near future.
According to a unified international design patent filing framework of the Hague System, a streamlined filing procedure of design patent protection that may achieve filing efficiencies and cost savings in procedures are available to U.S. applicants, a single International Design Application (“IDA”) with the USPTO.  

2. The Application Process in the Hague System

A. The Hague System
The Hague Agreement governs the international registration of industrial designs (design patents).  The Agreement is firstly adopted in 1925, and it effectively establishes an international system – the Hague System – that allows industrial designs to be protected in multiple countries or regions with minimal unified formalities.  By using the Hague System, an applicant can obtain the same result by means of a single registration of a single IDA, written in one language, one payment of a single set of fees, in one currency and with one office, International Bureau (“IB”), currently WIPO.
In terms of operation, the Hague System is like a hybrid of a Madrid Protocol, which governs the international registration of trademarks/service marks, and a Patent Cooperation Treaty (“PCT:), which governs the international registration of utility patent applications.[3]

B. Procedures from the Perspective of a U.S. Applicant
To apply for an International Registration under the Hague Agreement as a U.S. applicant, the applicant must: (1) be a national of the United States; (2) be domiciled in the United States; or (3) have a real and effective industrial or commercial establishment in the United States.[4]
The U.S. applicant is able to file a single IDA designating one or more countries with the USPTO, which will automatically transmit the application to the IB.  The IB sends the IDA to the designated national or regional patent offices.  In this case, the USPTO serves as an office of indirect filing.  The U.S. applicant is also able to pay registration fees to the IB, for the designated countries.
Although IDAs can also be directly submitted to the IB, submitting the IDA to the USPTO as the office of indirect filing for designs created in the U.S. will cause a foreign filing license to be generated before the IDA is forwarded to the IB.[5]  This is similar to the current process for PCT applications for U.S. inventions filed with the U.S. Receiving Office — nothing gets forwarded to the IB until national security review procedures are completed.[6]  In addition, the U.S. applicant can pay for all filing fees for filing in any country in U.S. dollars, whereas the IB only accepts Swiss francs.[7]
The applicant can include in the IDA everything required by the Hague Agreement, along with any additional requirements which the designated countries have submitted to the IB in the form of permitted exceptions to the default requirements of the Hague Agreement.  For example, as an additional requirement, the USPTO requires that any IDA designating the U.S. include a claim, an identification of the creators (inventors) and a declaration of inventorship.  The international registration date for an IDA that complies with the filing date requirements will be the filing date of the IDA.  Meanwhile, although it is not stated in the Hague Agreement, the applicant still must submit an Information Disclosure Statement (IDS) with the IDA, likewise U.S. design patent application, if there is any reference which is material to the patentability of the design contained in the IDA.
It is important to understand that the Hague System just simplifies the procedure related to filing design patent applications, and that it does not change the substantive rules governing registration/examination or enforcement of the resulting design rights.[8] The IB reviews the IDA for formalities, and collects maintenance fees, centrally payable at five-year intervals on patents deriving from the international application.  Once all of the requirements for filing an IDA have been checked by the IB, the IDA is published and transmitted to the countries designated by the applicant.  In the IB, there is no central searching authority, and substantive examination is left to national and regional offices.[9] Thus, the IDA is transmitted to the countries, and then registered or examined according to each particular country’s substantive design patent laws.  If the IDA does not comply with the substantive design patent laws, the applicant will get substantive objections or rejections from the regional offices which perform the substantive examination.  At this stage, the applicant may need to engage local counsel to address the substantive objections or rejections.
Therefore, at least for the substantive examination in the national and regional offices, unlike the Madrid Protocol, where U.S. applicants must have a U.S. trademark/service mark application or registration in order to use the Madrid Protocol internationally, the Hague International Design System will not preempt the existing U.S. design patent system, but rather will operate in parallel with the U.S. system.[10]

3. What We Should Know Regarding the Hague System

A. U.S. design patent term moved from 14 years to 15 years.   
Along with the implementation of the Hague Agreement, Congress lengthened the patent term of a design patent to be 15 years from issue for all design patent applications filed on or after May 13, 2015, regardless whether they are filed through the Hague System or through the traditional U.S. design patent filing system.  This is an extension of one year from the previous 14-year term.  Design patent owners have the Hague Agreement to appreciate for an additional one year of patent term.[11]

B. A single IDA can contain up to 100 designs in a single application.
In the Hague System, applicant can file up to 100 different designs (provided they are in the same Locarno international classification, e.g., “equipment for production, distribution or transformation of electricity” or “pharmaceutical and cosmetic products, toilet articles and apparatus”) through a single IDA filed electronically.[12]  However, 37 C.F.R. § 1.142 requires that “if two or more independent and distinct inventions are claimed in a single application, the examiner will require the applicant to elect an invention to which the claims will be restricted,” and this provision is applied to the IDA.  The USPTO also has announced that it will only permit one claim per design patent granted from an IDA (and thus one set of drawings).[13]  Thus, the IDA will be reviewed and when multiple designs deemed to be “patentably distinct” are in one application, a restriction/election requirement will be issued in the form of a refusal.  An applicant who designates the United States should consider a potential restriction/election requirement when he or she prepares an IDA which contains a plurality of different designs.
Nevertheless, including multiple designs in a single application is still a useful scheme to reduce expenses for claiming multiple designs.  Furthermore, the USPTO does not provide a centralized guidance regarding requiring a restriction; rather, the actual details of restriction requirement are instead formulated by technology center and art unit.[14]  The lack of centralized guidance about the proper application of the restriction requirement gives examiners in the USPTO the discretion to decide whether the restriction requirement is necessary or not. Therefore, it is difficult to expect how strictly the examiners will apply the provision of 37 CFR 1.142 to the IDA including multiple designs.  We will have to wait and see how the restriction requirement practice is going to be applied to the IDA, for deciding a coverage of designs to be included in a single IDA.
The above figure excerpted from Hague Yearly Review 2015 shows the distribution of the number of designs contained in a single registration.  Along with the above figure, the WIPO also announced that the number of single-design and two-design registrations decreased slightly compared to 2013; in contrast, the share of registrations containing three, four and five designs increased slightly over the same period.  Despite the usefulness of the multiple designs-application, the number of IDAs containing multiple designs is still smaller than the number of IDAs containing a single design.[15]  One of the reasons is likely to be due to the risk of the restriction requirement, as set forth above, and another reason seems due to a lack of unified drawing standard, as set forth below.

C. Different Drawing Requirements throughout the Countries Participating in Hague Agreement.
There is no unified drawing standard in the Hague System, and different jurisdictions have different drawing requirements.  Under the Hague Agreement Rule 9(3), parties which require certain specified views can make a declaration specifying the specific views that are required and the circumstances in which they are required.  Below is the differences of drawing requirements, between countries.
Participating in
Hague Agreement
Drawing Requirements
European Union
Multiple designs are allowed to be contained in a single registration, but each design is limited to only seven “views” (or figures)
South Korea
Required Views for Typeface; Required View for a Set of Articles; To avoid refusal, the appearance of each product should be fully disclosed.
Six Required Views; Orthographic (“straight on at eye level”) Projection
United States
A design must contain “sufficient number of views to constitute a complete disclosure” (Did not make a declaration under Rule 9(3)).

Furthermore, there is other differences which include preferences regarding shading of line drawings, the acceptance of photographs and computer-generated figures, and the number of perspective views versus orthographic views that may be permitted.
Therefore, to an applicant, if he or she did not regularly file for design rights in many countries, it will likely be difficult to satisfy all of the different rules and practices of participating countries by preparing a single set of figures for an IDA.  Furthermore, a U.S. applicant, therefore, frequently must change those aspects of the drawings before using them in various other countries.
Although there are no known plans to change local rules and practices of any participating countries at this time, if drawings standards are harmonized between the participating countries, then having the Hague System in place would be more desirable to applicants who wish to file for international rights.[16]

D. Provisional rights to Damages before a Patent is Issued.
Unlike U.S. utility patent applications, U.S. design patent applications are not subject to the “publication” provisions that were placed in the U.S. patent law.[17]  The U.S. utility patent applications, with a few exceptions, must all be published and made publicly available within 18 months after filing date of the U.S. utility patent application, whereas U.S. design patent applications are not published until the U.S. design patent issues on the U.S. design patent application.
On the contrary, an IDA in the Hague System is published at six months from filing or from the filing of any earlier priority application, or as soon as possible thereafter.  Furthermore, in relation to this publication, the IDA has advantages for patentees in enforcing their rights.  The Hague System provides provisional rights to damages, which begin as of the publication date of the IDA, under 35 U.S.C. § 154(d).[18]  Section 154(d) provides the right to obtain a reasonable royalty from a party that infringes the invention “as claimed in the published patent application,” from the time the patent application is published until the patent issues.  These rights enable the applicant to collect royalties for infringement when someone copies the design contained in the IDA after publication of the IDA but before the design patent is issued, and the design patent is later issued.  Therefore, an early provisional design patent protection is able to be attainable by the above IDA publication.  In addition, because damages in design patent infringement actions may be traced from the time of provisional protection, the IDA in the Hague System is able to attain more higher damage awards for the issued design patent, by calculating it from an earlier time point than in the case of a traditional U.S. design patent system. 
This effect would be very valuable for applicants having designs that only have a very short-term product life, for example, a toy, a cloth or a beverage can.[19]  Moreover, since the IDA is going to be published, the designs contained in the IDA can operate as prior art retroactive to the filing date once published.  The designs can block one who subsequently seeks to obtain design patents on the same or obvious variants design.  Meanwhile, applicants should note that the earlier published designs in the IDA than U.S. design patent application may give a potential competitor somewhat earlier information about the applicants’ design.

As aforementioned, there is many things that should be considered when using the Hague System to file an IDA.  These things can be considered in both optimism and caution, depending what the applicant wants, and depending how the applicant use the Hague System.

4. Present and Future of Design Patent

The WIPO announced that, in 2014, WIPO recorded 13,504 designs which are contained in international registrations.  This number represents a 5.5% increase on 2013 figures, and the third successive year of growth in the number of designs.[20]  According to the convenience and efficiency of the Hague System, we can expect the Hague System to be a very popular development for U.S. applicants, likewise the PCT system and the Madrid Protocol.
As shown in the above tables[21], the top applicants who filed more than 40 IDAs also filed and acquired a large number of U.S. design patents.  If these applicants are going to use the Hague System for processing their industrial designs with the implementation of the Hague Agreement in the United States, the number of U.S. design patent applications would be significantly decreased.  In the future, Hague will bring a substantial impact on the U.S. design patent practice, and we should expect and prepare that impact.
However, U.S. patent practitioners can advise their clients to keep using the traditional design patent system, rather than using the Hague system, based on the fact that they are familiar with certain tendencies regarding how U.S. courts interpret and enforce standard U.S. design patents.  There is no case law and no experience regarding how courts will interpret and enforce design patent registered through the Hague System.
The Hague Agreement creates opportunities for U.S. designers who want to get design patents internationally, but it may reduce a size of the U.S. design patent prosecution practices.  The Hague System may be the best choice in the case of a large international filing program, if overall cost and subsequent ease of administration are the most important considerations.  On the other hand, Applicants seeking more secure and predictable design patents may wish to consider using the traditional U.S. design patent system, since we neither have case law nor experiences how U.S. courts will handle the design patent registered through the Hague System.
Therefore, the Hague System is not a master plan for every applicant who want to get design patents internationally. Whether or not to file an IDA under the Hague System should be evaluated on a case-by-case basis with all due caution.

[1] See Christopher V. Carani, Apple v. Samsung Design Patents Take Center Stage, Vol.3, No. 3, Landslide, Jan/Feb 2013, available at http://designpatentattorney.com/wp-content/uploads/2013/01/Carani-Lanslide-Article-Design-Patents-Take-Center-Stage-Jan-Feb-2013.pdf.
[2]See WIPO IP Facts and Figures According to WIPO, No. 943E/13, 2013, at p. 4, http://www.wipo.int/export/sites/www/freepublications/en/statistics/943/wipo_pub_943_2013.pdf.
[3] See International Design Applications Under the Hague Agreement: Q&A for Companies Designating the U.S., Feb. 16, 2015, http://www.faegrebd.com/22619.
[4] See Hague Agreement Concerning the International Registration of Industrial Designs, http://www.uspto.gov/patent/initiatives/hague-agreement-concerning-international-registration-industrial-designs#resources (last visited Jul. 6, 2015).
[5] See International Design Applications Under the Hague Agreement: Q&A for Companies Designating the U.S., Feb. 16, 2015, http://www.faegrebd.com/22619.
[6] Id.
[7] See IP Update: Final Rules Package Implementing Filing of International Design Applications Under the Hague Agreement in the United States Published, Apr. 2, 2015,  http://www.finnegan.com/IPUpdateFinalRulesPackageImplementingFilingofInternationalDesignApplicationsUndertheHagueAgreementintheUnitedStatesPublished/.
[8] Id.
[9]See Carl R. Schwartz, What US Design Patent Applicants Can Expect From Hague, Jun. 3, 2013, http://www.quarles.com/publications/what-us-design-patent-applicants-can-expect-from-hague/.
[10] Id.
[11] See Calling All Design Patent Applicants: Hague is Coming to Town, Feb. 26, 2015, http://www.crowell.com/NewsEvents/All/Calling-All-Design-Patent-Applicants-Hague-is-Coming-to-Town.
[12] See The Hague Agreement Concerning the International Registration of Industrial Designs: Main Features and Advantages, No. 911(E) (2012), http://www.wipo.int/edocs/pubdocs/en/designs/911/wipo_pub_911.pdf.
[13] See International Design Applications Under the Hague Agreement: Q&A for Companies Designating the U.S.
[14] See David Stein, The Power of the Pen: The Role of Examiners’ Discretion in Patent Examination, Oct. 22, 2014, http://www.usptotalk.com/the-power-of-the-pen-the-role-of-examiners-discretion-in-patent-examination/.
[15] See Hague Yearly Review, No. 930E/15 (2015), http://www.wipo.int/edocs/pubdocs/en/wipo_pub_930_2015.pdf.
[16] See IP Update: Final Rules Package Implementing Filing of International Design Applications Under the Hague Agreement in the United States Published.
[17] See Gary L. Griswold, Guest Post: Publishing Design Patent Applications: Time to Act, Aug. 24, 2014, http://patentlyo.com/patent/2014/08/publishing-design-applications.html.
[18] See Carl R. Schwartz, What US Design Patent Applicants Can Expect From Hague.
[19] Id.
[20] See The Hague Agreement Concerning the International Registration of Industrial Designs: Main Features and Advantages.
[21] See Hague Yearly Review, No. 930E/15 (2015), http://www.wipo.int/edocs/pubdocs/en/wipo_pub_930_2015.pdf, Also See Calendar Year Patent Statistics (January 1 to December 31) General Patent Statistics Reports Available For Viewing, http://www.uspto.gov/web/offices/ac/ido/oeip/taf/design.htm (last visited Jul. 6, 2015).

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