The U.S. is now set to become a member of the Geneva Act of
the Hague Agreement Concerning the International Registration of Industrial
Designs. The ‘Hague Agreement’ provides
a system of international registration for industrial designs. Once the U.S. becomes a party, U.S. inventors
of designs will be able to file a single application with the World
Intellectual Property Organization (WIPO) that will have the effect of a
registration in the member states selected by the applicant.
The goal of this single application system is to increase
efficiency and reduce costs for the applicant.
Efficiency is increased by filing a single application; instead of the
need to file individual applications in each country the inventor seeks
protection. At the very least, this
should save on attorney fees related to these individual filings, but such
foreign filings have proven rare with the U.S. furniture industry thus
far. Whether the inventor sees a
reduction in costs related to filing fees will depend on the number of
countries being designated. Using the
fee calculator (found
here) on the WIPO website, a single design having 6 views and
described in 150 words will cost over $3,000 in fees to protect in every member
state. Designating only the European Union brings
the cost down to around $700.
It is important to remember that the Hague Agreement is
primarily procedural. Each designated
country is tasked with providing an examination of the design. “In fact, one of the main features of the
Hague system lies in the possibility for the Office of each designated
Contracting Party to refuse protection, in its territory, to an industrial design
which does not fulfill the substantive conditions of protection provided for by
its domestic legislation.” (See
here). Further, once registered, the industrial
design is protected to the extent of the law in each individual country,
producing a wide range of breadth of protection, enforceability and potential
to recover damages.
The jury remains out on the benefits and drawbacks the Hague
Agreement will have on the protection of designs for the U.S. furniture
industry. First, it remains to be seen
how the USPTO will integrate the Hague Agreement into their operations. With the USPTO requiring an issue fee of $990
for a large entity (not including the filing, search and examination fees),
there appear to be potential cost saves with using the Hague Agreement and
designating only a small number of countries, possibly only the U.S. However, it would seem that the PTO will be
trying to find a way to recoup any loss of fees resulting from the use of the
Hague Agreement, possibly by requiring an application from a U.S. inventor to
be filed via the PTO and including a processing fee of some kind.
Second, the present list of member countries to the
agreement is relatively small, only 61 once the U.S. joins. Notably, many of the exporter countries from
which the furniture industry rely are have not signed onto the agreement. Therefore the Hague Agreement does not
provide a path to protection in countries of origin such as China or others in
Southeast Asia (with the exception of Singapore). This is important because these same
countries are the most prevalent in the manufacture of knock-off goods. Therefore unless industry members are looking
to sell their goods in Europe or Africa, continuing to focus on Design Patents
from the USPTO may remain the best opinion for furniture companies trying to protect
their designs.
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