IP-Academy

Hague system

Author: Danielle Carvey

Obtaining protection for industrial design rights in multiple jurisdictions via the national route may be time consuming and costly. The Hague System for the International Registration of Industrial Designs offers a more efficient and cost effective route for the registration of design rights in any, or all, of the 75 contracting parties to the system through the filing of a single application.

The Hague System was established by the Hague Agreement, adopted in 1925, and is now governed by the Hague Act of 1960, and the Geneva Act of 1999. The contracting parties privy to the Hague System cover 92 countries in total. Through the system, applicants may file one international design application designating the contracting parties in which protection is sought. Moreover, the system proves useful for not only the filing and registration of industrial design rights, but for portfolio management directly with the International Bureau of the World Intellectual Property Organisation (WIPO) as well, for example, design renewals and recordals of changes.

In order to be eligible to file for industrial design protection by way of the Hague System, an applicant must be a natural person or legal entity, which is either a resident of a contracting party, a national of either a contracting party or a member state of a contracting party, or have an effective business in a contracting party.

International applications can be filed with the International Bureau of WIPO either directly or through the IP office of the Contracting Party of origin, and should be submitted in any of the official languages of the Hague System, namely English, French, or Spanish. There are three standard sets of fees involved in filing for design rights through the Hague System, consisting of a basic fee, designation fees for each state respectively, and a publication fee, all of which are payable in Swiss Francs.

An international application can include up to 100 designs, so long as they are all within one class of the Locarno Classification, and must detail at least one reproduction of each design. A reproduction of a design can be in the form of photographs, drawings or other graphic representations of the designs. It is important to note, however, that some jurisdictions may not have provisions for the registration of multiple designs. In that case, the international registration may be divided before the Office of such jurisdiction in order to overcome the refusal ground, with this division not affecting the international registration itself.

Priority may be claimed in relation to an earlier application so long as it was filed with a member state of the Paris Convention or the World Trade Organisation, and if the international application is filed within a 6-month period following the filing of the priority application.

Once received by the WIPO, the application will be checked as to the basic formal requirements, such as payment of the relevant fees, and the quality of representation of the designs.

Upon completion of formal examination of the design by WIPO, the application will be published in the International Designs Bulletin, 6 months after the filing of the international application unless immediate publication or deferment thereof is requested by the applicant. Notice of publication will be sent to each designated office, which will check the publication accordingly.

The decision for registration of a design itself is taken by each designated state individually as per the substantive requirements set forth by national or regional legislation. As such, if an application does not result in registration in one jurisdiction, this does not impact the status of the design in any other designated state.

Each jurisdiction will therefore conduct substantive examination of the design, if any is stipulated, and will notify the applicant if their design has been refused protection within a period of 6 or 12 months from the date of publication, depending on the designated state. Any response to a refusal is dealt with directly between the applicant and the designated office and does not involve WIPO. If an applicant is not notified of a decision of refusal by the expiry of the prescribed time period, design protection is considered granted in that particular jurisdiction.

Once granted, an international design has the same effect in each designated state as it would if it were filed directly in that jurisdiction. International designs are valid for an initial period of five years from the date of the international registration, which is counted as the date of filing of the international application. Design rights may be renewed for further five-year periods, up to the limit of years prescribed in the national or regional law of each designated state.

The WIPO will also remind the right holder to renew a design, six months prior to the due date of the renewal.

Industrial design protection has become ever more prevalent owing to recent times, particularly in relation to laboratory and medical equipment which saw an increase in filings of 45% in 2020. As such, individuals and organisations looking to protect their designs may benefit substantially from using the Hague System to obtain protection in multiple countries, as it provides for a less costly alternative to filing in individual states and can be submitted in various jurisdictions in one language. Further, the System also enables applicants to obtain design protection through the WIPO with fewer formalities than if filed with each state respectively, and also simplifies the maintenance process.

If you are looking to file for design protection through the Hague System, please contact us for further information.

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In order for a patent application to be considered as registrable, there are three vital elements that must be satisfied. This trinity of the "three pillars" of patentability requires that the invention claimed in a patent application has novelty, industrial applicability and an inventive step.

The element of novelty, or "newness" for a patent application is therefore crucial. As per the European Patent Convention (EPC), an invention is regarded as novel if it "does not form part of the state of the art".

State of the art is defined as any subject matter relating to the invention to which a patent application relates, which has been disclosed or made available to the public in any manner prior to the patent application filing date. Such subject matter may include a product, process, or any other relevant information regarding the invention claimed.

In the instance that public disclosure had been made for any reason prior to the filing of a patent application, it may be the case that the requirement of novelty is not fulfilled, and the invention contained therein is rendered unregistrable.

On the flip side, patent legislation in many jurisdictions offers a novelty grace period. This constitutes a specific period of time, typically 6 or 12 months prior to the date of filing a patent application, depending on the country. For example, the US and Canada, among others, provide for a 12-month grace period, whereas other countries, such as France and the United Kingdom, afford applicants a 6-month novelty grace period.

A grace period itself ensures that any disclosure concerning the patent application materials or subject matter within that set time period is not seen to be detrimental to the requirement of novelty of an invention.

As typical with any legislation, each jurisdiction sets forth varying conditions upon which an applicant can take advantage of the novelty grace period. Some countries, for example, recognise disclosure as authorized if said disclosure is made at an officially recognized event, such as an official exhibition, or a scientific presentation, so long as such official disclosure is made within the prescribed grace period time limit prior to the filing date. Other jurisdictions may exclude disclosure from the prior art if such disclosure was made in bad faith by a third party, so long as corresponding proof is provided.

If any unauthorized disclosure has been made, it is classified as part of the "prior art". Prior art constitutes anything that is similar in nature to the invention contained within a patent application, and had been disclosed prior to the application filing date.

Prior art can comprise a wide variety of matter, including articles, scientific periodicals, pending patent applications, both commercially available and unavailable products, oral presentations, and even social media content. The only exceptions to any related disclosure being considered as prior art are if the disclosed subject matter is confidential and related to government, trade secrets or other applicable circumstances, or if the material was insufficiently disclosed.

With prior art being a vastly broad concept, it is vital for IP applicants to carefully and closely analyze any potential previously disclosed subject matter to avoid the possibility of their invention being considered as not novel or new. The option of performing a search is highly useful in this regard. For example, a PCT application will be subject to an international search, undertaken by a competent International Searching Authority (ISA), resulting in an International Search Report (ISR).

An ISR details any prior art found by the search which may impact the patentability of the subject matter contained within the international application. A preliminary Written Opinion of the International Searching Authority (WOISA) is also provided, advising whether the invention claimed in the international application appears to meet all three of the patentability criteria. Similar searches can be performed for national and regional patent applications, depending on the jurisdiction.

A Power of Attorney, often abbreviated to POA, is a legal document which provides written authorisation for another party to act on behalf of, or represent, another party in relation to certain affairs or matters. Such matters may include those of legal proceedings, corporate and commercial matters, and even personal affairs, for example, a Lasting Power Attorney (LPA.)

When it comes to intellectual property rights specifically, many applicants and rights holders choose, or are obligated by the applicable national or regional IP legislation, to appoint a legal representative or agent as a third party who will act on behalf of the applicant.

Such legal representatives may include a patent attorney, for example, who would represent the IP applicant or registrant before the IPO and/or courts of the relevant country or region in regard to the assigned patent matters. A POA in this instance would serve as written authorisation for the attorney to act on behalf of the patent applicant in relation to the filing and maintenance of the applicant's patent(s).

A Power of Attorney may also be utilised in intellectual property matters in relation to the development of inventions and patents in the workplace. Instances of this nature may ensue when a company has a POA to act in relation to, or obtain, an employee's inventions that had been created and evolved during their employment.

The requirements in relation to obtaining a Power of Attorney, and for providing proof of the same for use in IP matters, vary from country to country. The law in relation to the use of a Power of Attorney in US Law, for example, states that there are multiple requirements for the obtainment and validity of a POA in the jurisdiction.

As such, in order to constitute a valid POA for a legal entity in the US, it must contain the date of POA execution, and be signed by the principal or by another adult being empowered to execute the document in the principal’s presence and under their direction. Furthermore, a POA in the US must be signed and acknowledged before a notary public or be signed by two witnesses.

In addition to domestic legislation and requirements for obtaining a POA initially, national and regional law also obligates applicants and right holders to adhere to rules before the relevant IPO's in which IP is to be filed or maintained. In some countries, for example, the representative or agent with the POA must be an attorney registered within the jurisdiction in which the IP is filed or registered, however, this obligation is not present for all states.

Further, many jurisdictions require the submission of a document confirming the signatory who has executed a Power of Attorney on behalf of the applicant in order to obtain a filing date for their IP, with some countries also mandating that the POA supplied must be an original paper copy, and be a legalised notarised version of the document in order to be valid, an obligation which is not present in every jurisdiction.

A Power of Attorney is an important and oftentimes vital aspect of the registration and maintenance of IP rights. With international legislation and requirements differing, it is important for IP applicants and right holders to pay close attention to the necessary requirements of POA execution and submission in order to successfully manage their IP portfolio.

A major element of reform and cooperation in the field of intellectual property came in the form of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, which was implemented by the World Trade Organization (WTO) in January of 1995.

The TRIPS Agreement is applicable to all jurisdictions which are a party to the WTO, and among a variety of IP related provisions, the Agreement obligates all WTO member states to provide the possibility of patent protection in relation to pharmaceutical and agricultural chemical inventions.

At the time the TRIPS Agreement was enforced, however, the national legislation of some developing countries of the WTO did not allow for the filing of patent applications in relation to agrochemical or pharmaceutical inventions. As a result, the WTO afforded these countries a transitional period of up to 10 years to implement compatible national legislation that would provide for such patent protection, concluding on January 1, 2005. It was from this allowance that the concept of a “mailbox patent” was born.

The WTO obliged the countries which were allowed to delay implementing domestic law in line with the TRIPS Agreement to still accept patent applications from January 1, 1995, despite the fact that a decision on whether to grant patent protection did not need to be made until the end of the 10 year period. This afforded patent applicants the opportunity to still meet the patentability requirement of novelty by securing a filing date in such countries.

This obligation was extended for the Least Developed Countries (LDC's) following requests from several jurisdictions, and the time period for implementation of provisions to allow for the granting of such patents has subsequently been extended until July 1, 2034.

The term "mailbox" patent was coined in light of this obligation, as any patent applications pertaining to agrochemical or pharmaceutical inventions were stored in a metaphorical mailbox once filed until relevant national legislation was implemented and the applications could be assessed.

A second obligation was also required of the member states which opted to utilize the transitionary period, in that if a pharmaceutical or agrochemical product was allowed to be marketed during said period, the country had to provide the applicant with exclusive marketing rights for the product for either five years, or until a decision on the grant of the patent was made, whichever was shorter.

Brazil is one example of a country in which mailbox patents were introduced, with TRIPS Agreement compatible national law eventually being implemented on May 14, 1997. Other countries including Argentina, Cuba, Egypt, India, Kuwait, Morocco, Pakistan, Paraguay, Tunisia, Turkey, United Arab Emirates and Uruguay also notified the WTO that they intended to make use of the transition period for mailbox patents.

Industrial design protection is widely utilised across the globe, with a registered design right preventing others from appropriating or imitating the appearance of a product. However, the obtainment of a design right, alongside a certificate of registration, is often not the final step of design protection.

Once granted, it is important to ensure that a design right is maintained in each jurisdiction in which the owner utilises the design. In order to uphold and maintain such rights, many countries require the filing of a request for design renewal and the payment of annuity/renewal fees.

The renewal process varies between countries and even between regional IP systems. As an example, some of the largest IP offices worldwide include the US, South Korea and China, and they all have different procedures in relation to the renewal of design rights and annuities.

In South Korea, for example, the validity term for an industrial design right consists of 20 years counted from the date of filing. The legislation in the country outlines that once the right has been granted, the registration fee for an industrial design should be paid within 3 months from receipt of the Notice of Allowance.

The registration fee in South Korea is inclusive of the payment for the first 3 years of the design right lifecycle, meaning that further annuity payments should be made in respect of the 4th years onwards. The payment of each annuity fee thereafter is due prior to the anniversary of the registration date for each respective year.

Whilst it is recommended that the payment of an annuity fee is made within the prescribed time, a grace period of 6 months exists in South Korea, allowing for the late payment of said fee when accompanied by payment of a surcharge.

In China, industrial designs with a filing date on or after June 1, 2021 are in force for 15 years from the date of filing, whilst those with a filing date occurring on or before May 31, 2021 are in force for 10 years from the date of filing.

Once granted, the official grant fee should be paid within two months from the date of receipt of the notification to grant a certificate, however, unlike South Korea, this fee is not inclusive of the first annuity. Instead, the first renewal payment, as well as a stamp tax for the design certificate in China, are to be paid separately upon registration of a design.

Further annual fees are to be paid in advance, during the month preceding the anniversary of the filing date. Late payment is possible within a six-month grace period by paying a corresponding surcharge.

In the US, design patents with an application filing date occurring on or after May 13, 2015 are valid for 15 years from the date of issuance, whilst those filed prior to May 13, 2015 have a term of 14 years from the date of issuance.

Unlike the aforementioned countries, as well as many other jurisdictions, design patents in the US are not subject to maintenance fees or annuities.

For those who wish to file for and obtain design rights in multiple jurisdictions, international and regional systems exist which allow applicants to obtain protection in several countries in an often more efficient and cost effective way than filing in individual states separately. As with each jurisdiction, these design right systems possess their own procedures for renewal fees and payment.

An industrial design right applied for via the Hague System, for example, has the same effect in each designated state as it would if it were filed directly in that jurisdiction. They are valid for an initial period of five years from the date of the international registration, which is defined as the date of filing of the international application.

International industrial design rights may be renewed for two initial further 5-year periods, prolonging the validity term for up to 15 years. Thereafter, a right can be renewed up to the limit of years prescribed in the national or regional law of each designated state in which the design is granted. The WIPO will remind the right holder to renew a design six months prior to the due date of the renewal.

A Community Design is a design right registered via the regional system of the European Union Intellectual Property Office (EUIPO). Once a community design has been granted, it is valid for a period of 5 years counted from the date of filing.

It is possible for rights owners to renew the design a further four times for periods of 5 years respectively, meaning a EUIPO registered community design can be valid for a full term of 25 years in total.

The renewal fees are due during the last 6 months of any given 5 year protection period, and late renewal is possible within a six-month grace period by paying a corresponding surcharge.

Industrial designs filed and granted through the African Regional Intellectual Property Organization (ARIPO) have a validity term of 10 years from the filing date. The annuity fees are due on each anniversary of the filing date and are payable in respect of each designated state. They can also be paid within 6 months after the due date on the condition that the corresponding surcharge is paid.

As industrial design renewal procedures are subject to variation from country to country, applicants should take note of any annuity payment deadlines and fees in each jurisdiction they wish to maintain design rights. If you require advice on the renewal of design rights, or simply further information, please contact us.