May 13, 2015 marks a significant day for inventors who apply for design patent protection in the United States. That’s the day that United States rule changes take effect to implement the Hague Agreement for the Registration of Industrial Designs, which allows applicants to designate over 60 countries with a single design application.
Under new rules that the USPTO published in April 2015, an applicant who seeks an international design registration may do via a single application. Under the new structure:
- an applicant for an international design registration must designate the countries for which the applicant seeks registration;
- the applicant must identify the number of designs included in the application (up to a maximum of 100);
- applicants are encouraged to include a brief description of each drawing with the application (but the USPTO cautions that too much description of characteristic features can “serve to limit the claim in the United States”);
- the applicant may be the inventor(s) or another entity such as the assignee;
- the international application may be filed directly with the World Intellectual Property Office (WIPO), or through the USPTO; and
- the application will publish 6 months after filing.
The new structure also extends the term for all U.S. design patents, including both international and domestic-only filings. Instead of the previous 14-year term, U.S. design patents and international design registrations resulting from applications filed on or after May 13, 2015 will have a term of 15 years from the date of grant.
When weighing the option of a U.S. design patent application against the option of an international design registration, applicants should consider the relative costs and benefits of each program. The international design registration can be a very cost-effective way of obtaining protection in large number of countries, since it streamlines the application process into a single proceeding. However:
- Applicants who select the international option must pay a fee for each country that is designated in the application.
- Unlike U.S. design patents, international design registrations are subject to renewal fees every 5 years.
- Requests for continued examination are not available in industrial design applications.
Because of differences such as these, applicants who are considering only the U.S. (or the U.S. and a small number of additional countries) should weigh the costs of making individual filings in each country against the benefits of the new single-application option.
For more information, see the following resources:
- USPTO Final Rule re: Changes to Implement the Hague Agreement Concerning International Registration of Industrial Designs (Apr. 2, 2015)
- USPTO EFS-Web Guide for International Designs:
- WIPO Guide to International Design Registration
- WIPO online Hague System Fee Calculator tool (to help applicants estimate filing fees for international applications)