U.S. Opens Door to International Application for Industrial Designs
Guest post by Womble Carlyle attorney David Crowe.
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.