United States, Japan To Join International Design System At WIPO

On 13 February, the United States and Japan will deposit their instruments of accession to the Geneva Act of July 2, 1999 (the Geneva Act) of the WIPO’s Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement). A ceremony will be held at the World Intellectual Property Organization, which manages the agreement.

The United States and Japan will become bound by the Geneva Act three months after the date of the deposit of their instrument of accession or at any later date indicated therein, according to the Geneva Act.

The Hague Agreement establishes an international registration system that allows design owners to obtain protection for their industrial designs in countries that are parties to the agreement by means of a single international application filed with the International Bureau of WIPO.

Three international treaties form the Hague Agreement: the London Act of 1934, whose application is frozen since January 1, 2010; the Hague Act of 1960; and the Geneva Act. The Hague Act and the Geneva Act are independent, and countries may become parties to one or both treaties.

As of January 2015, the Hague Agreement had 62 Contracting Parties in total, out of which 34 are parties to the Hague Act and 47 are parties to the Geneva Act, including two intergovernmental organisations, i.e., the European Union and the African Intellectual Property Organization.

Applicants who are nationals or have domicile, habitual residence or establishment within any Contracting Party to either Act may seek protection in the territory of other Contracting Parties to the same Act.

Through the Hague international registration system, design owners are relieved from having to file multiple national applications in each country of their interest, thus avoiding complications of languages, fees, deadlines for renewal and other. Instead, the international application is filed directly, electronically or on paper with the International Bureau of WIPO in one language (English, French or Spanish) and against payment of a single set of fees.

The initial term of an international registration is five years, which may be renewed for additional terms of five years. Provided the international registration is renewed, duration of protection of an industrial design in the designated countries is fifteen years or more, if the law of the country concerned so provides. As a result, the protection of designs in the United States will increase from 14 to 15 years. Protection period in Japan is twenty years.

The Hague System allows for priority to be claimed for one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property or any member of the World Trade Organization. Likewise, the international design applications may serve as a basis for claiming priority. The priority period for industrial designs equals to six months.

Effect of US, Japan Joining

With the accession by the United States and Japan, the Hague system brings in two jurisdictions with substantive examination systems, where the proposed design is examined against prior designs for novelty and non-obviousness.

It is of interest to note that the US Patent Law Treaties Implementation Act of 2012, which made it possible for the US to join the Hague system, provides for provisional rights with respect to international industrial design applications designating the US.

This mechanism allows design owners to obtain a reasonable royalty from any person who, during the period between publication of the design application and the date the design is issued, makes, uses, offers for sale, or sells in the US or imports into the US the design in question.

In 2014, 14,441 designs were filed under the Hague system, a 10 percent increase over 2013, WIPO’s Gregoire Bisson said at an event last week.

Elena Bourtchouladze (LLB, DEA) holds a PhD degree in Public International Law from the Graduate Institute (Geneva) with focus on the WTO TRIPS Agreement and WIPO Conventions. She is a researcher at IP-Watch, and has experience in regulatory and litigation at a multinational company and an international organisation.