Designs and The Hague Agreement
The Hague agreement establishes a system where a single design application give access to designs protection in over 68 contracting parties, which can provide protection in up to 81 countries through the international bureau of the World Intellectual Property Organization (WIPO).
The agreement provides a practical and cost-effective business solution for registering a single international design application rather than multiple series of applications in different national offices.
Who can apply to The Hague system?
A legal entity or person having a connection with a contracting party can apply for the single design application either through establishment, domicile, nationality, or habitual residence.
Currently, there are two acts of The Hague agreement in operation: the Geneva act (1999) and The Hague act (1960). Filing a single design application through habitual residence is only applicable for those contracting parties under the 1999 act, which are most of the parties.
The legal entity or person can include up to 100 designs in a single international design application provided they are all in same Locarno class. The design application must contain at least a reproduction of the design and the designation of at least one contracting party.
Deferment of publication and sovereignty of the designed parties
After filing a design application and assuming it complies with all the requirements of a formal examination, the international bureau issues a publication of the corresponding registration in an international designs bulletin, which publication can be deferred for a period from 12 to 30 months from the filing date or, where priority is claimed, from the priority date of the application concerned depending on the act governing the designated party.
Why deferring a design publication? Under some circumstances, it is important to keep a design confidential before launch or as a “secret prior art” and/or taking into account not all the countries are members of the agreement, there is a necessity for a deferment in order to bring the design applications of non-member countries into line with the member jurisdictions as a possible intellectual property strategy.
It is worth noting that once a design application is published, the office of each designated contracting party applies its criteria for reproductions of the design and carries out a substantive examination based on the local laws to determine a register or refuse of an application. Therefore, even though The Hague agreement is an international treaty, the register or refuse will depend on jurisdiction to jurisdiction due to the legislation from each party.
What covers a design?
A design may be separated into two main groups: industrial models consisting of three-dimensional features and industrial drawings directed to bi-dimensional features as well as lines and colours, both covering the ornamental or aesthetic appearance of an article or product.
The articles include, but are not limited to, fabrics, jewels, toys, electrical devices, clothes, and graphic user interfaces. Lastly, graphic user interfaces have been a boom within different jurisdictions either members or non-members of The Hague Agreement.
Although some jurisdictions allow computer programs in patent applications, others prohibit it and in such circumstances applicants may select a type of protection under copyrights and/or designs containing graphic user interfaces. For example, the mobile device or smartphone companies not only protect devices or apparatuses using design applications, but also the multiple graphic user interfaces displayed on the screen. Hence, filing a single design application with The Hague is a very practical and cost-effective strategy.
Update of The Hague agreement
On 13th March 2018, the United Kingdom deposited its instrument of ratification as membership of the agreement for designs coming into effect from 13th June 2018.
Besides, on 23th July 2018, the government of Canada deposited its instrument of accession to the Geneva act of the agreement coming into effect from 5th November 2018.
In summary, The Hague agreement will continue having requests for accession of new members and taking into account Mexico incorporates international trades to its patent prosecution, in a particular opinion Mexico could be one of those new members incorporating to The Hague agreement within a short period of time.
Alejandro Moreno Hernández.