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
An international design application may be filed by an applicant “indirectly” through the U.S. Patent and Trademark Office (“USPTO”) or “directly” with the International Bureau. 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
Regardless of whether the application is filed indirectly through a 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 register the industrial design in the International Register. 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.Registration and Publication
If the international design application satisfies all applicable requirements, the International Bureau will register the international design application in the International Register and accord a date of international registration. Pursuant to Hague Agreement Article 10(2), the international registration date will be either the filing date of the international design application or the date of receipt of any additional mandatory content item required under Hague Agreement Article 5(2), if such date is later than the filing date. 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 registration number and registration date, and the class of the International Classification determined by the International Bureau.
The international registration is published by the International Bureau. The applicant may request that publication occur immediately after 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. Absent a request for immediate publication or deferment, the registration will be published approximately six months after the date of international registration. The publication includes the data from the international registration and the reproductions of the industrial design.
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 examination if required under their respective laws. 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.
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.