design patents and the hague agreement option:...

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Presenting a live 90-minute webinar with interactive Q&A

Design Patents and the Hague Agreement Option:

Evaluating the Benefits and Risks of Filing an IDA Leveraging Lessons From the First Year, Understanding

the Implications for Design Patent Prosecution

Today’s faculty features:

12pm Eastern | 11am Central | 10am Mountain | 9am Pacific

THURSDAY, JULY 14, 2016

Betty Berendson, Senior Information Officer, The Hague Registry, Brands and Designs Sector (BDS),

World Intellectual Property Organization, Geneva, Switzerland

Tracy-Gene G. Durkin, Director, Sterne Kessler Goldstein & Fox, Washington, D.C.

David R. Gerk, Patent Attorney, Office of Policy and International Affairs,

U.S. Patent and Trademark Office, Alexandria, Va.

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Geneva,

July 14, 2016

Design Patents and the Hague Agreement

Option: Evaluating the Benefits and Risks

of Filing an IDA

Betty Berendson

Senior Information Officer

Information and Promotion Section

The Hague Registry

Who Can Use the System?

Nationality Domicile

Real and effective industrial/commercial

establishment

Habitual residence Geneva (1999) Act only

Attachment to a Contracting Party

6

What is the Hague System?

One to many relationships

• File a single international application for a single international registration (IR) in which one or more Contracting Parties (CP) are designated

“Bundle of Rights”

• If no refusal, the resulting international registration has the effect of a grant of protection in each designated Contracting Party. Substantive issues are governed by the law of each designated Contracting Party.

7

Hague System is a Procedural Arrangement

Issues such as: are governed by the law of each Contracting Party designated in an international registration

the conditions for protection

the refusal procedure to be applied when deciding whether a design may be protected

the rights which result from protection

8

The International Application

In English, French or Spanish

May be filed directly with the International Bureau through the E-filing interface but also on paper

May comprise several different designs up to a maximum of 100 if they belong to the same class of the International Classification (Locarno)

One set of fees (in CHF) is to be paid

9

The Hague System Procedure: Role of the International Bureau

Formal examination

Recording in the International Register

Sending the certificate to the holder

Publication in the International Designs Bulletin

Notification to members through the publication in the Bulletin

If the International Bureau finds that the international application does not fulfill the applicable

requirements, it invites the applicant to make the required corrections within three months from the

date of invitation sent by the International Bureau

10

The Hague System Procedure: Role of the Designated Contracting Parties Refusal by a designated Contracting Party

on same substantive grounds as for

national/regional filings

must be communicated within time limit

effect limited to territory of the member that has

refused

International registration (where not refused)

no refusal = same rights as a local design

registration

a bundle of independent national/regional rights

advantages of central management

11

The Hague System Procedure (III)

Longer renewal period, if allowed by the law of the designated Contracting Party

Renewable at least once (1960 Act) or twice (1999 Act)

Duration of protection: five years

12

Amount of Fees Paid per International Registration (2015)

0

200

400

600

800

1000

1200

1400

1600

1800

less than 1000 CHF 1000 to 1999 CHF 2000 to 2999 CHF 3000 to 4999 CHF more than 5000CHF

IR

IR 1570 1165 426 259 161

% 43.8% 32.5% 11.9% 7.2% 4.5%

13

General Advantages of the Hague System

Hague System (international route)

one Office for filing

one language

one currency

one international registration

one renewal

one modification

foreign attorney or agent

(first needed if refused)

National/regional route

many Offices for filing

many languages

many currencies

many registrations

many renewals

many modifications

foreign attorney or agent

(first needed at filing)

14

Hague Union

51 Geneva Act (1999) (including EU and OAPI)

15 Hague Act (1960)

65 Contracting Parties 15

Hague System: Foreseen Expansion

Coming soon

16

2015: Five Most Popular classes in International Registrations

Class 10

Clocks and watches and other measuring instruments, checking

and signaling instruments

324 registrations (9.1%)

Class 9

Packages and containers for the transport or handling of goods

249 registrations (7%)

Class 12

Means of transport or hoisting


Class 6

Furnishing

249 registrations (7%)

Class 14

Recording, communication or information retrieval equipment


17

The Hague System website

18

Indirect : WIPO Paper Form via EFS Web

Direct : WIPO E-filing Interface

- Familiar environment - USPTO’s Quick Guide - Integrated Export License Process - Transmittal Fee ($120.00)

- Dedicated electronic tool - Easier than using paper form - Embedded alerts and guidance - Integrated fee calculator - No additional fees - No intermediary - Workbench/Re-use functions - Access to Portfolio Manager

Two Filing Options for US Applicants

20

New Features of the E-Filing Portfolio Manager

Send corrections to irregularities or defects

Receive and download notifications from the IB relating to international applications

Retrieve in real-time current status of IA

21

Filing an international application

22


23

Reproductions

DM/087 677 DM/087 809

DM/087 877

DM/087 876

25


26


27

Priority Documents

Republic of Korea

• Priority documents may be attached to the IA at the time of filing.

United States of America

Japan

• Original priority documents have to be sent directly to the JPO through a local agent within three months of publication of the IR.

• Original priority documents have to be sent directly to the USPTO at the latest before “the date the issue fee is paid”.

28


30

E-Filing Communications

33

Hague Express Database

35

Global Design Database

36

Grounds of refusals by KIPO (from May 13th, 2015 to May 13th, 2016)

Source: Internal (unofficial) statistics

Number of refusals by KIPO

681 designs (215 international registrations)

Main grounds of refusals 1. Insufficient disclosure 447 designs 2. No indication of a creator 120 designs 3. Missing or wrong indication of related design 176 designs 4. Broad indication of product 21 designs

0

50

100

150

200

250

300

350

400

450

Insufficient disclosure

No indication of creator

Missing or wrong related design

information

Ambiguous/broad indication of

product

37

Designations 1013, grants of protection 299, refusals 264 (Criteria: date inscribed in the

International Register)

0

200

400

600

800

1000

1200

May Jun Jul Aug Sept Oct Nov Dec Jan Feb Mar Apr May Jun

Number of KR designations in international registrations, compared with total recorded Grants of protection and refusals, May 2015 to June 2016

Total designations Total recorded SGP Total rec. refusals

38

Grounds of refusals by JPO (from May 13th, 2015 to May 13th, 2016)


Number of refusals by JPO

41 designs

(27 international registrations)

Main grounds of refusals 1. Lack of novelty 19 designs 2. Insufficient disclosure 15 designs 3. Ambiguous/broad indication of product 10 designs 4. Others 1 design

0

2

4

6

8

10

12

14

16

18

20

Lack of novelty Insufficient disclosure

Ambiguous/broad indication of

product

Unity of design issue

Others

39



0

200

400

600

800

1000

1200


Number of JP designations in international registrations, compared with recorded Grants of protection and refusals, May 2015 to June 2016


40

Grounds of refusals by USPTO (from May 13th, 2015 to May 13th, 2016 )


Number of refusals by USPTO

38 designs (20 international registrations)

Main grounds of refusals 1. Unity of design issue 27 designs 2. Insufficient disclosure 10 designs 3. Other grounds 8 designs 4. Ambiguous/broad indication of product 1 design

0

2

4

6

8

10

12

14

16

18

20

Unity of design issue

Insufficient disclosure

Other grounds Ambiguous/broad indication of

product

41



0

200

400

600

800

1000

1200

1400

1600

1800


Number of US designations in international registrations, compared with recorded Grants of protection and refusals, May 2015 to June 2016


42

Thank You!

www.wipo.int/hague/en

[email protected]

43

http://www.wipo.int/hague/en

mailto:[email protected]

Design Patents and the Hague

Agreement Option

USPTO FEEDBACK

July 14, 2016

David R. Gerk

Attorney-Advisor

Office of Policy and International Affairs (OPIA)

United States Patent and Trademark Office

[email protected]

571-272-9300


The Hague Agreement

• May 13, 2015: Hague Agreement in Effect in U.S.

• Title I of PLTIA

• USPTO Rules

• June 20-22, 2016: WIPO Hague Working Group

• Sixth Session

July 14, 2016 46

The Hague Agreement

• Filing Statistics…

July 14, 2016 47

4140 ≈3000

Int’l Design Apps:

2007-2015

The Hague Agreement

• Designation Statistics…

July 14, 2016 48

2015 Designations by Select Contracting Parties

Source: WIPO statistics

http://www.wipo.int/hague/en/statistics/monthly_stats.jsp?type=DALL&name=2&count=COUNT

2015 Designations by All Contracting Parties



The Hague Agreement

• Helpful Information for Applicants & Representatives

– USPTO Hague Implementation Page – http://www.uspto.gov/patent/initiatives/hague-

agreement-concerning-international-registration-industrial-designs#tips

– WIPO Hague System Page – http://www.wipo.int/hague/en/

July 14, 2016 49

http://www.uspto.gov/patent/initiatives/hague-agreement-concerning-international-registration-industrial-designs














http://www.wipo.int/hague/en/

http://www.wipo.int/hague/en/

The Hague Agreement

• USPTO Page

– Forms

– Fees

– Resources

– FAQ

– Tips for Filing

– Contacts

July 14, 2016 50

July 14, 2016 51

• USPTO Page

– Forms

– Fees

– Resources

– FAQ

– Tips for Filing

– Contacts

The Hague Agreement

July 14, 2016 52

• USPTO Page

– Forms

– Fees

– Resources

– FAQ

– Tips for Filing

– Contacts

The Hague Agreement

July 14, 2016 53

• USPTO Page

– Forms

– Fees

– Resources

– FAQ

– Tips for Filing

– Contacts

The Hague Agreement

July 14, 2016 54

• USPTO Page

– Forms

– Fees

– Resources

– FAQ

– Tips for Filing

– Contacts

The Hague Agreement

Considerations for Applicants

• Reproductions

• Description

• Creator

• Single Design

• Priority Claims

• Duty of Disclosure

• 1st Communication from USPTO

July 14, 2016 55

Considerations: Reproductions

• Fully disclose the claimed design – Full disclosure for each separate

design

– No fixed requirement for # of views

– Orthogonal & perspective combos useful

– Avoid ambiguity in reproductions • Consistent views

• Clearly represent claimed subject matter

– not left to conjecture

– (e.g., convex vs concave)

July 14, 2016 56

Considerations: Description

• Figure Descriptions are helpful:

– DM1 Form Box 9 & 10

July 14, 2016 57

Considerations: Creator

• Creator is a person(s).

• Creator is the designer(s) (inventor(s)).

July 14, 2016 58

Considerations: Single Design

• Only can claim single design in design patent.

• Refusal

– if more than one patentably distinct designs in international registration.

• Non-patentably distinct

designs – can be kept together as

“embodiments” of the one design

July 14, 2016 59

Considerations: Priority

• Copy of Certified Priority Document – Must be filed with USPTO to

perfect priority claim.

• When?

– Before payment of second part designation fee (issue fee).

• Who? – Pro se creator (inventor) or

representative registered to practice before USPTO.

July 14, 2016 60

Considerations: Duty of Disclosure

• Creators, applicants, representatives, etc., have an affirmative duty to provide certain information to USPTO.

• “Material to Patentability” – 37 CFR 1.56

• Information Disclosure Statement (IDS)

July 14, 2016 61

Considerations: 1st Communication • USPTO Filing Receipt:

– Frequently first communication from the USPTO.

– Indication that USPTO has received

the international registration pursuant to its designation and role as a CP.

– Provides info regarding U.S.

identification of international registration.

– Typically, no response needed.

July 14, 2016 62

Design Patents and the Hague

Agreement Option

USPTO FEEDBACK

July 14, 2016

David R. Gerk

Attorney-Advisor

Office of Policy and International Affairs (OPIA)

United States Patent and Trademark Office

[email protected]

571-272-9300


S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 66

Counseling Clients on the Hague

System

• The first question you need to consider when counseling a client

about the Hague System is – are they eligible to file a Hague

Application?

• Then consider - does the System cover jurisdictions they are

interested in?

• Finally consider - does it makes sense to use the Hague System

for a particular design or designs?


Who Can File a Hague

Application and Where?

• Any national or person who has a domicile, habitual residence, or a real

and effective industrial or commercial establishment in a Hague member

country (all applicants must be eligible, creators do not)

• Currently 65 members including:

http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=9

USA Norway Belgium

Japan Singapore Switzerland

South Korea Turkey EU





2015 General Hague Statistics

• 16,435 designs applied for (14,441 in 2014)

• 13.8% growth (9.6% in 2014)

• Top 5 Locarno classes:

1. Recording and communication equipment (5)

2. Clocks and watches (1)

3. Means of transportation (3)

4. Packages and containers (2)

5. Furnishings (4)


Who is Using the System? • Top 10 Applicants in 2015:

1. Samsung (6)

2. Swatch (1)

3. Fonkel Meublemarketing

4. Volkswagen (5)

5. P & G (2)

6. Thun

7. Gillette (8)

8. Thomas Sabo (jewelry)

9. Legero Schonfabrik (shoes)

10. Cartier Creation Studio

- Phillips Electronics (3), Daimler (4), Lenovo (7), Nestle (9), Alfred Karcher (cleaning systems and products) (10)


What Countries Are They

Designating? • Top 10 Designated Countries in 2015:

1. Germany (1)

2. Switzerland (2)

3. France (3)

4. Republic of Korea

5. Italy (4)

6. USA (5)

7. Netherlands (9)

8. Austria (8)

9. Japan

10. Liechtenstein (6)

11. United Kingdom

- Turkey (7) , Finland (10)


Technical Aspects of IDA Filing

• A maximum of 100 designs (related or not) can be included in a single IDA provided they are in the same Locarno Class

• 2014: 90% included 10 or fewer designs, 30% included 1 design

• If not in same Locarno class, WIPO will allow dividing into multiple IDAs

• IDAs undergo standard substantive examination according to designated Intellectual Property Offices rules

• IDAs can claim priority to a U.S. design application(s)

• U.S. design application can claim priority to IDAs that designate at least one country other than the United States

• Each figure must be in separate file without figure numbers

• IDAs will be given series 35/ application numbers


Benefits of the Hague System

• More simplified process for obtaining foreign design protection

• Savings of time and money

• Use of foreign counsel may be reduced

• Ability to include up to 100 designs in the same Locarno class can

save costs

• Publishing of International Registration grants provisional rights

• Can delay publication in some countries (not in the US – adopted the 6

month publication default)

• Foreign filing license not needed If IDA is filled indirectly through the

USPTO, but is needed if filed directly with WIPO


Limitations of Hague System

• Limited membership

• Many important jurisdictions are not yet part of the system: China,

Canada, Mexico, Australia

• U.S. practitioners must prepare filings with knowledge of idiosyncrasies

of systems in member countries

• Number and type of drawing figures and written description

requirements vary widely among jurisdictions (shading, broken lines,

explanation of design)

• Loss of novelty provisions may not be available in all jurisdictions

(are available in Japan and Korea and may be claimed after filing)

• May not be able to amend application in all jurisdictions after filing


Limitations of Hague System

• Filings through the USPTO require local agent:

• if not included with application as filed (Information disclosure

statements, certified copies, inventor declarations and assignments)

• Replies to Restriction Requirements and Office Actions

• U.S. allows only 1 design per patent (restricted designs may be filed in

another IDA claiming priority to a parent IDA, or in a domestic divisional

application)

• Replies to WIPO notices must be filed with WIPO, not USPTO

• No centralized system for filing of certified copies of priority documents

• Currency fluctuations of the Swiss Franc, but can avoid by paying WIPO

directly for all but USPTO exclusive fees (e.g. transmittal fee)


Things to Consider

• US Filing date will be lost for failure to pay $120 transmittal fee to the USPTO for indirect filing

• Failure of the USPTO to transmit the IDA will result in abandonment

• Notice of Refusal (OA) will be transmitted to WIPO who will mail to Applicant’s representative (can get notice by e-office action program)

• WIPO’s per figure/word fee structure

• http://www.wipo.int/hague/en/fees/calculator.jsp

• Can’t file a CPA of an IDA, can file a Con

• Publication opens file history of the IDA to the public through Public Pair (including any domestic benefit application)

• Include a brief description of the design if desirable for the US

particularly if the design has claimed and un-claim parts

http://www.wipo.int/hague/en/fees/calculator.jsp

http://www.wipo.int/hague/en/fees/calculator.jsp


Things to Consider

• Grace periods and Paris Convention due dates are unaffected

• Rocket Docket petitions are available for IDAs after publication, therefore USPTO recommends waiting to file

• No US maintenance fees, but WIPO or other countries may require them

• USPTO recommends using the WIPO inventor declaration if designating the U.S. rather than the USPTO form

• Hague registrations only assignable to entitles entitled to file an IDA


Things to Consider

• Priority application should be prepared for acceptance in multiple

jurisdictions:

• Solid vs. broken lines

• Digital images vs. line drawings

• Color vs. greyscale

• Component parts

• Description of design


What’s the Best Strategy?

• Consider foreign filing strategy at the time of filing your priority

application

• File multiple applications?

• Include all designs in one application?

• Include greyscale and color together?

• Combine digital images with line drawings?

• Consider filing more than one IDA

• Group registration countries separately from examination countries?


Bottom Line

• Know the requirements of the designated jurisdictions as you prepare the priority application

• Drawing requirements, fees, preliminary amendment, novelty requirements

• Even though you can include up to 100 designs in one IDA, you may want to group designs based on what jurisdictions permit

• Be prepared to hire local registered agent to address issues only they can address

• Remember publication opens prosecution to the public, but does provide provisional rights

• Consider using Hague for non-examination countries only?

• Good luck!


Thank you!

Tracy-Gene G. Durkin, Esq

[email protected]