Multinational Design Protection Just Got Simpler

The process for seeking patent protection for ornamental designs internationally just got much simpler for domestic companies, thanks to the U.S.’s implementation of the Hague Agreement concerning industrial designs. As of May 13, 2015, U.S. companies can file a single standardized industrial design application having up to 100 designs and have that application automatically considered by over 60 countries or regions of interest, including the European Union, South Korea and Japan.

Filing is Streamlined with Reduced Expense

“It has the potential for a U.S. company to considerably simplify its ability to seek multi-national protection for its industrial designs and design patents as opposed to having to go piecemeal through each country of interest, as has historically been the case for U.S. applicants,” says Timothy Newholm, attorney and a Boyle Fredrickson founding shareholder. “It streamlines the filing process — which previously required coordinating with foreign associates to file a separate application in each and every country or region of interest,” he says.

Now, a single international design application can be filed that contains up to 100 designs, and that application will be considered by all Hague Agreement member countries of interest. “At least on the front end, it’s going to be a lot less expensive for clients,” Newholm says. “It will also permit U.S. companies to protect multiple related designs in many countries with a single filing — a practice that, generally speaking, has not been possible in the United States.”

“The change is mostly a win-win for U.S. clients, Newholm says. The process also is streamlined for foreign clients. While they previously would have had to file an application directly with the U.S. Patent and Trademark Office (USPTO), they can now get the USPTO to consider their original application when they file it through the World Intellectual Property Organization (WIPO) or their home patent office. Some additional changes to U.S. patent law also took effect with the implementation of the Hague Agreement. Most notably, the term of a U.S. design patent has increased from 14 years to 15.

Foreign Clients Should Note Potential Pitfalls

According to Newholm there are some pitfalls of which foreign clients need to be aware. Each country will apply its own standards to determine whether an industrial design is entitled to protection.

Clients who are used to filing in countries or regions that have lax standards and who do not have experience filing in the U.S. are in for a rude awakening when they become subject to this country’s more stringent technical, procedural and substantive requirements, he says. “Many applications that sail right through the process in much of the world are going to get rejected in the U.S. The result may be a complete unavailability of protection in the U.S.” In addition, a procedure known as a “restriction practice” might drastically limit the number of designs that can be retained in a U.S. phase of a Hague Agreement industrial design application.

“Foreign companies that file an application with 10 or 50 or 100 designs will be forced to pick one in the U.S., and then will be faced with the difficult choice of undergoing the expense of filing additional U.S. applications for the remaining designs or giving up protection for those designs here entirely,” Newholm says.

He advises clients to continue to plan strategically and to make sure that their initial filings comply with the individual standards of the various countries in which they want protection.

“While there are some pitfalls to be cognizant of, this is a nice, new procedural tool that can be used by both U.S. and foreign companies to significantly reduce the cost and complexity of obtaining design patents multi-nationally.”