Hague Agreement Concerning the International Registration of Industrial Designs

On December 18, 2012, the Patent Law Treaties Implementation Act of 2012 (PLTIA) was signed into law. The PLTIA among other things sets forth provisions implementing the 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs ("Hague Agreement"). These provisions (Title I of the PLTIA) take effect on May 13, 2015.

The Hague Agreement is an international registration system which offers the possibility of obtaining protection for up to 100 industrial designs in designated member countries and intergovernmental organizations (referred to as "Contracting Parties") by filing a single international application in a single language either directly with the International Bureau of the World Intellectual Property Organization (WIPO) or indirectly through the office of applicant's Contracting Party.

Beginning May 13, 2015, U.S. applicants will be able to file international design applications through the USPTO as an office of indirect filing, and applicants filing international design applications will be able to designate the United States for design protection.  In addition, U.S. design patents resulting from applications filed on or after May 13, 2015 will have a 15 year term from issuance.

Information concerning the Hague system, including geographic coverage and a guide for users, is available at WIPO's Web site http://www.wipo.int/hague/en/.

 

International Design Application Forms  

 

Fees

 

Resources

 

Frequently Asked Questions

EFFECTIVE DATE

Question HA0100: What is the effective date of the Hague Agreement with respect to the United States and Title I of the PLTIA?

The effective date of the Hague Agreement with respect to the United States and Title I of the PLTIA is May 13, 2015.

 

FILING AN INTERNATIONAL DESIGN APPLICATION

Question HA1000: Where can I file an international design application?

An international design application may be filed either directly with the International Bureau of the World Intellectual Property Organization (WIPO) or indirectly through the office of the applicant’s Contracting Party.   The USPTO serves as an office of indirect filing for applicants having a sufficient connection to the United States.  See Question HA1020 for further information regarding filing an international design application through the USPTO.  Please note that a foreign filing license may be required to properly file an international design application directly with the International Bureau.  See 35 U.S.C. 184.  WIPO provides an electronic filing system for filing international design applications.  Likewise, international design applications can be filed electronically through the USPTO via EFS-Web.  International design applications can also be filed in paper with either WIPO or the USPTO, though additional WIPO publication fees may apply for paper submissions.  See Question HA4000 for further information concerning fees.

Question HA1020: Who can file an international design application through the USPTO as an office of indirect filing?

To file an international design application through the USPTO as an office of indirect filing, the applicant, or each applicant if there is more than one applicant, must be a national of the United States or have a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States.  In addition, the United States must be, for each applicant, the applicant’s Contracting Party.  The official WIPO form for international design applications, “Application for International Registration” (Form DM/1), includes sections for indicating applicant’s entitlement to file an international design application and applicant’s Contracting Party.

Where the applicant does not have a connection to the United States as described above, but does have a connection to another Contracting Party to the Hague Agreement, the applicant may wish to consider filing the international design application directly with the International Bureau, subject to any requirement for a foreign filing license pursuant to 35 U.S.C. 184.

Question HA1040: What should be included in an international design application submission?

An international design application submission should include: (1) the “official form” and any required annexes, (2) reproductions, and (3) payment of the applicable fees.

Pursuant to Rule 7(1) of the Hague Agreement, an international design application must be presented on the “official form”.  The International Bureau has established the “Application for International Registration” (Form DM/1) as an official form for presenting an international design application.  In addition, the International Bureau has established annexes to the DM/1 form that may be required where certain Contracting Parties have been designated.  Both the DM/1 form and annexes are available on the web site of the International Bureau at http://www.wipo.int/hague/en/forms/.

Reproductions may generally be in the form of drawings and/or photographs of the industrial designs.  An international design application may include up to 100 industrial designs.  However, all of the designs must belong to the same class of the International (Locarno) Classification.  The list of classes of the Locarno Classification together with explanatory notes is available on the WIPO web site at: http://www.wipo.int/classifications/nivilo/.

International design applications are subject to application fees payable to WIPO.  In addition, if the international design application is filed through the USPTO as an office of indirect filing, payment of a transmittal fee is required. Applicants filing international design applications through the USPTO are not required to pay the WIPO application fees through the USPTO.  However, payment of the transmittal fee is required to be paid to the USPTO in order for the application to be transmitted to the International Bureau.  See Questions HA4000 and HA4020 for further information concerning fees.

Question HA1060: Are there any USPTO forms specific to the filing on an international design application through the USPTO?

No, there are no USPTO forms specific to the filing of an international design application through the USPTO.  The official application form for presenting an international design application, i.e., the “Application for International Registration” (Form DM/1), and annexes are forms established by the International Bureau.  These forms are available at http://www.wipo.int/hague/en/forms/.

Question HA1080:  If the United States is designated, must the WIPO declaration of inventorship form or WIPO substitute statement form contained in Annex I be used for submitting the required inventor’s oath or declaration?

Use of the WIPO declaration of inventorship form or WIPO substitute statement form is not mandatory but is encouraged, as the WIPO forms are specifically tailored for use in international design applications.

Question HA1100:  If the United States is designated, must Annex III for submitting an Information Disclosure Statement (IDS) be included with the submission of the international design application?

No, Annex III for submitting an IDS is not required to be submitted with the international design application.  The Office will considered an IDS submitted within three months of the date of publication of the international registration without the need for fee or statement under 37 CFR 1.97(e), and after this three-month period as provided in 37 CFR 1.97.

Question HA11020:  What are the requirements applicable to the reproductions of the industrial design?

The requirements applicable to reproductions are set forth in Rule 9 of the Hague Agreement and Part of Four of the Administrative Instructions for the Application of the Hague Agreement.  The Regulations under the Hague Agreement and the Administrative Instructions may be accessed on the web site of WIPO at: http://www.wipo.int/hague/en/legal_texts/.  In addition, certain technical requirements regarding image files, such as resolution, minimum and maximum image size, border width, etc., are set forth on the WIPO web site at: http://www.wipo.int/hague/en/how_to/file/prepare.html.  For reproductions filed through the USPTO as an office of indirect filing via EFS-Web, also see the EFS-Web Quick Start Guide for international design application submissions available at:  http://www.uspto.gov/patents-application-process/applying-online/efs-web-guidance-and-resources

 

FILING AND INTERNATIONAL REGISTRATION DATES

Question HA2000: Does the USPTO, as an office of indirect filing, accord an international design application a filing date under the Hague Agreement?

No, an office of indirect filing does not accord international design applications filing dates under the Hague Agreement.  Under the Hague Agreement, the International Bureau reviews international design applications for formal matters and, if appropriate, accords a filing date pursuant to Article 9 and Rules 13 and 14. The office of indirect filing will record the receipt date of the international design application and the International Bureau may accord that date as the filing date pursuant to the relevant provisions of the Hague Agreement.

Question HA2020: What defects or other matters can impact the filing date of the international design application under the Hague Agreement?

The filing date of an international design application (“international filing date”) is accorded by the International Bureau in accordance with Article 9 and Rules 13 and 14 of the Hague Agreement.  Pursuant to Rule 14(2), the International Bureau will not accord a filing date if the application is not in one of the prescribed languages (English, French, or Spanish) or is missing any of the following elements: (1) an indication that international registration under the Hague Agreement is requested; (2) a sufficient indication of the applicant’s identity; (3) a sufficient indication to allow the applicant or it’s representative to be contacted; (4) a reproduction or specimen of each industrial design that is the subject of the application; and (5) the designation of at least one Contracting Party.  If the application does not contain an element(s) above, the filing date will be the date the International Bureau receives the omitted element(s), if timely furnished.

In addition, for applications filed through the USPTO as an office of indirect filing, an international design application will not be entitled to receive an international filing date that is the receipt date of the international design application by the USPTO if the application is not governed exclusively by the 1999 Geneva Act, or the application is not received by the International Bureau within six months from the date of receipt by the USPTO.  Applicants should include payment of the transmittal fee when submitting an international design application to the USPTO to avoid delay in transmitting the application to the International Bureau.   In addition, applicants should be cautious when filing through the USPTO to not designate a Contracting Party that is only party to the 1960 Hague Act and not the 1999 Geneva Act.

The international filing date is NOT the filing date of the international design application in the United States.  The filing date of an international design application in the United States is the date of international registration.  See 35 U.S.C. 384 and Question HA2040. These dates may however be the same date in practice in given applications.

Question HA2040: What is the date of international registration?

The date of international registration is the later of the international filing date (see Question HA2020) or the date a required element under Article 5(2) is received by the International Bureau.  See Article 10(2). The filing date of an international design application in the United States is the date of international registration.  See 35 U.S.C. 384.

An element under Article 5(2) is required where the international design application designates a Contracting Party that has made a declaration under Article 5(2) that its national law requires for a filing: (i) an indication identifying the creator of the industrial design; (ii) a brief description of the reproduction or of the characteristic features of the industrial design that is the subject of that application; and/or (iii) a claim.  The United States has made a declaration under Article 5(2) requiring a claim.

Question HA2060: If I believe the international design application is entitled to a U.S. filing date other than the date of international registration, can I request review of the U.S. filing date?

Yes, applicants may petition under 37 CFR 1.1023(b) for review of the U.S. filing date.  The petition requires a showing that the international design application is entitled to the requested filing date and must be accompanied by the petition fee set forth in 37 CFR 1.17(f).

 

USPTO REVIEW AND TRANSMITTAL; RESPONDING TO INVITATIONS FROM THE INTERNATIONAL BUREAU

Question HA3000:  What does the USPTO review as an office of indirect filing?

The USPTO reviews applicant’s entitlement to file through the USPTO, payment of the transmittal fee, and performs a national security review. If these three conditions are met, the USPTO will transmit the application to the International Bureau. Applicant will receive notice of the transmittal and of the international design application receipt date. If these three conditions are not met, the USPTO will not transmit the application to the International Bureau, and the USPTO will notify the applicant of the reason why the application was not transmitted.

Question HA3020:  Can an applicant file a reply to an invitation sent by the International Bureau through the USPTO?

No, any reply to an invitation sent to the applicant by the International Bureau must be sent directly to the International Bureau to avoid abandonment or other loss of rights under Article 8 of the Hague Agreement.   The USPTO will generally not forward any communications to the International Bureau received after the international design application has been transmitted to the International Bureau.

 

FEES

Question HA4000:  What are the required fees for an international design application filed through the USPTO?

An international design application filed through the USPTO as an office of indirect filing is subject to payment of a transmittal fee to the USPTO, in addition to the applicable international fees (basic fee, designation fee(s), publication fee, and the fee for a description exceeding 100 words) payable to WIPO.

The International Bureau provides an online tool, the Hague System Fee Calculator, to assist the applicant in calculating the appropriate WIPO application fees.  The Hague System Fee Calculator tool is available at http://www.wipo.int/hague/en/fees/calculator.jsp.

Please note that international design applications filed in paper, whether directly with the International Bureau or indirectly through the USPTO, are subject to an additional publication fee for each page containing a reproduction after the first page.  In addition, reproductions filed through EFS-Web in other than the prescribed manner may be subject to this additional publication fee.  See the EFS-Web Quick Start Guide for further information:  http://www.uspto.gov/sites/default/files/documents/Hague-QSG.pdf

Question HA4020:  Do I need to pay the transmittal fee and WIPO application fees when filing the international design application through the USPTO?

The USPTO strongly encourages payment of the transmittal fee at the time of filing an international design application through the USPTO.  The USPTO will not transmit the international design application to the International Bureau if the transmittal fee has not been paid to the USPTO.  Applicants are cautioned that an international design application not received by the International Bureau within six months from the date the international design application is received by the USPTO will not be entitled to a filing date of the date of receipt by the USPTO.

The WIPO application fees are not required to be paid through the USPTO.  After receipt of the international design application by the International Bureau, the International Bureau will invite applicant to pay the required fees within a prescribed time limit.

WIPO application fees may not be paid through the USPTO after the date of payment of the transmittal fee.  Furthermore, any payment of WIPO application fees through the USPTO must be in U.S. dollars.  As all payments made to the International Bureau must be in Swiss currency, the U.S. dollar amount collected may, when converted to Swiss currency, be different than the required Swiss currency amount.  Accordingly, applicants are cautioned that paying such international fees through the USPTO may still result in a requirement by the International Bureau for payment of additional amounts where the conversion from U.S. dollars to Swiss currency results in the International Bureau receiving less than the prescribed amounts.

Applicants may also wish to consider establishing a current account with WIPO and including authorization in the Payment of Fees section of the DM/1 form instructing the International Bureau to debit the required fees from the WIPO current account.  For additional information concerning how to pay fees to WIPO, please see http://www.wipo.int/about-wipo/en/finance/hague.html.

Question HA4040:  Are there discounted fees for small or micro entities?

A small entity discount of 50% and a micro entity discount of 75% are available with respect to the designation fee for the United States.  There is no entity based discount available with respect to the transmittal fee payable to the USPTO as an office of indirect filing.  The DM/1 form includes a section for indicating small or micro entity status.  In addition, to obtain the micro entity discount for the U.S. designation fee, a certification of micro entity status must be submitted.  Annex IV to the DM/1 form, available at http://www.wipo.int/hague/en/forms/, provides for the submission of a certification of micro entity status.

 

PRIORITY/BENEFIT CLAIMS

Question HA5000:  My international design application did not include a claim for foreign priority.  Can I add the foreign priority claim during the U.S. examination phase?

Yes, a claim for foreign priority may be added in an international design application in the U.S. examination phase pursuant to the provisions of 37 CFR 1.55(m).

Question HA5020:  Does the Hague Agreement provide for submission of the certified copy of the priority document in the international phase to the International Bureau?

No, there is no provision under the Hague Agreement for filing a certified copy of the priority document with the International Bureau.  Applicants will have to furnish any required certified copy in accordance with each Contracting Party’s applicable law.

Question HA5040:  Can a nonprovisional application claim benefit to an international design application designating the United States?

Yes, a nonprovisional application may claim benefit to an international design application designating the United States in accordance with the conditions and requirements of 35 U.S.C. 120.  See 35 U.S.C. 386(c).  The international design application must be entitled to a filing date under 37 CFR 1.1023, and the specific reference to the international design application must identify the relationship of the applications and identify the international design application by the U.S. application number or, alternatively, by the international registration number and filing date under 37 CFR 1.1023.  See 37 CFR 1.78(d).

Question HA5060:  Can a continued prosecution application (CPA) be filed in an international design application?

No, a CPA cannot be filed in an international design application.  See 37 CFR 1.53(d).

 

EXAMINATION

Question HA6000:  Will substantive examination of an international design application by the USPTO differ from the substantive examination of a regular U.S. design application?

No, substantive examination of an international design application designating the United States will generally be the same as that for a regular design application filed in the United States.

Question HA6020:  Is a notification of refusal from the USPTO communicated directly to the applicant?

No, the notification of refusal from the USPTO is not communicated directly to the applicant.  Pursuant to the requirements of the Hague Agreement, a notification of refusal is communicated to the International Bureau, which then communicates the notification of refusal in accordance with the applicable provisions of the Hague Agreement.

Question HA6040:  How does the applicant reply to a notification of refusal sent by the USPTO?

Any reply to a notification of refusal must be sent directly to the USPTO and not through the International Bureau.  U.S. rules applicable to replies to office actions in regular U.S. applications apply to replies to a notification of refusal, including the requirement that a reply must be signed in accordance with the provisions of 37 CFR 1.33(b).

Question HA6060:  How will the USPTO treat an international design application having multiple designs in the U.S. examination phase?

Only one independent and distinct design may be claimed in the U.S. examination phase.  If more than one such design is present, the examiner will require applicant to elect one independent and distinct design for prosecution.  See 37 CFR 1.1064.  Applicants may pursue protection for the non-elected designs through the filing of divisional applications.

 

PATENT TERM

Question HA7000: Does the 15 year patent term apply to a design application filed before May 13, 2015 but issued on or after May 13, 2015?

No, the 15 year patent term for design patents set forth in 35 U.S.C.173 as amended by the PLTIA applies only to design applications filed on or after May 13, 2015.

Question HA7020: If a design application is filed on or after May 13, 2015 and is a continuing application (i.e., continuation, divisional, or continuation-in-part application) of an application filed prior to May 13, 2015, will the continuing design application be subject to the 15 year patent term?

Yes, since the continuing design application was filed on or after May 13, the continuing design application would be subject to the 15 year patent term set forth in 35 U.S.C.173 as amended by the PLTIA.

Question HA7040: Is renewal of the international registration required to maintain a U.S. design patent issued on an international design application in force?

Renewal of the international registration, as provided for under Article 17 of the Hague Agreement, is not required to maintain a U.S. design patent issued on an international design application in force.

 

GENERAL

Question HA8000: Can WIPO’s publication of the international design application be accelerated or deferred?

Standard publication of an international registration by WIPO is six months after the date of international registration, or as soon as possible thereafter.  An applicant may request immediate publication, in which case publication will occur immediately after international registration.  Alternatively, applicants may request deferment of publication of up to 30 months from the priority date (or from the filing date, if no priority is claimed).  However, deferment of publication is not permitted if the international design application designates a Contracting Party that does not permit deferred publication, such as the United States.  In addition, some Contracting Parties limit the period of deferment to less than 30 months.

Question HA8020: Is expedited examination under 37 CFR 1.155 available for international design applications?

Yes, expedited examination under 37 CFR 1.155 (“rocket docket”) is available for international design applications.  To quality, the international design application must have been published by WIPO.

Question HA8040: Can an international design application be converted to a design application under 35 U.S.C. chapter 16?

Yes, an international design application may be converted to a design application under 35 U.S.C. chapter 16 pursuant to the provisions of 37 CFR 1.1052.   Pursuant to 37 CFR 1.1052, the international design application must have been filed with the USPTO as an office of indirect filing, designated the United States, and satisfy the requirements for a filing date for a design application filed under 35 U.S.C. chapter 16.  In addition, the petition must be filed prior to WIPO publication of the international registration and be accompanied by the petition fee set forth in 37 CFR 1.17(t).

 

Contact us 

Boris Milef

Sr. Legal Examiner

International Patent Legal Administration

571-272-3288

 

David Gerk

Patent Attorney

Office of Policy and International Affairs

571-272-9300