Filing for design patents in countries across the globe just got easier.
The U.S. government last week officially joined a World Intellectual Property Organization (WIPO) program that, in theory, can turn a single design patent application in one country into one filed in more than 50 countries.
One application submitted to the Hague System for the International Registration of Industrial Designs can lead to design patents being granted by the U.S., Japan, the European Union, South Korea and others. More countries, including China and Russia, are also expected to join.
The Hague System and others like it are increasingly important as multinational companies seek to protect their IP across borders.
Richard S. Stockton, a partner at Banner & Witcoff Ltd., said U.S. entry into the program shows it has promise, but there is a lot to consider for attorneys offering this new service to clients.
A similar program for utility patents, The Patent Cooperation Treaty (PCT), has been widely successful. It includes 148 countries and has brought in more than 75 percent of WIPO’s fees, according to the organization.
While that program is more mature than the Hague System for design patents, WIPO predicts Hague application fees will grow 38 percent in the 2014-2015 period from the two years prior. Growth in application fees for utility patents are expected to be 4 percent over that same time.
Stockton spoke to the Daily Law Bulletin about whether the Hague is the next PCT, why the U.S. is entering the treaty now and what hiccups still exist in the process.
Law Bulletin: Why is the U.S. joining this just now?
Stockton: Although the Hague System has been around for many years, it was only in recent history that it was expanded to accommodate examination-based design patent systems, such as those in (the) U.S., Japan and (South) Korea.
That was in 1999. We showed great interest immediately and went about becoming a member of the Hague System. However, politically, the Senate didn’t advise and consent on the treaty until 2006. So it took seven years for the Congress to ratify the action of the State Department.
The theme is: It’s a long process to get into a treaty, especially in today’s political climate.
LB: The PCT has been successful in harmonizing filings for utility patents across the globe. What is the hope for the Hague System and design patents?
Stockton: I think the Hague System aspires to be what the PCT is for utility patents. It’s a universal way to file for and obtain protection on a certain class of intellectual property.
I think there are some more difficulties with that on the design patent side. In the field of design law, what you need to file, and what its value is and meaning is not as harmonized across jurisdictions as it is with utility patents. So there is going to be a high road they are facing to do these things.
LB: What are the major benefits you see with of the Hague patent system?
Stockton: So, what you had to do before — if I wanted to protect a design in Europe, the U.S., Japan and (South) Korea, for instance — I have to file four separate applications, pay four application fees and I have to hire four sets of lawyers to file them all.
Now, you pay one set of fees, you need one set of lawyers, and that thing issues in all those jurisdictions.
The amount of fees — if everything works properly — it’s sought to be cheaper and more efficient through the Hague System.
LB: Is it as simple as, “file one application and all is over with” or are there complexities?
Stockton: There are a lot of complexities that can throw off practitioners. Particularly practitioners who are not experienced or those who have high-demanding clients who need the best protections in these jurisdictions.
The nuance of each nation’s system and the uniqueness of each of those systems still remain. Moreover, just by the law of unintended consequences, there have been developments in U.S. case law that are making harmonization more of a challenge.
One example is the concept of unity. Unity is the assessment of whether you can include multiple designs in the same application.
In Europe, you can put a hammer and a screwdriver in the same application, file it and effectively they are registered as separate embodiments (patented designs). But they can go through the application process together.
In the United States and a lot of other jurisdictions that have just joined the Hague, they have a very different standard of unity.
The United States’ standard is whether things are patentably indistinct. If the designs look such that they are patentably indistinct — and that is a value judgment formulated by case law — then they can stay in the same application. But a hammer and a screwdriver? No way those are going to stay together.
And that will make it hard on European practitioners who might be surprised by those rules. And potentially more expensive because they have to file more applications, which are more expensive in the U.S. to begin with.
LB: What are your expectations for the Hague System?
Stockton: I see the glass as being half full with the Hague System. I think it has great potential.
A lot of these obstacles, and unity is a hard one just because of the case law in America … can be solved either through unilateral action by the jurisdictions involved or by the Hague governing group.
I’m still optimistic, but it could take a long time to get this to work.