U.S. Continues to Delay Ratification of the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs

Brief History of the Hague Agreement

The Hague Agreement is part of the legal framework of the Hague System -- a system that provides a simplified mechanism for registering industrial designs in contracting states. Under the Hague Agreement, an industrial design can be registered in any number of designated contracting states by filing a single international application, in a single language, with a single set of fees, and in a single currency.

On July 6, 1999, the U.S. became a signatory to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act). However, the U.S. Senate has not yet ratified the Geneva Act, and must do so before it can be regarded as a contracting party. It has been speculated that the U.S. Senate will give advice and consent to ratify the Geneva Act once the Patent Reform Act of 2010, which is pending before Congress, is signed into law. There is also uncertainty regarding when the Patent Reform Act will be signed into law.

Legal Framework of the Hague Agreement

The Hague Agreement consists of three international treaties: the Geneva Act; the Hague Act of November 28, 1960 (Hague Act); and the London Act of June 2, 1934 (London Act). The Geneva and Hague Acts operate independently. Thus, an applicant who files an international application can only designate states that are party to a common act (for example, a state that is party to the Geneva Act cannot designate a state that is party to the Hague Act unless that state is also a party to the Geneva Act).[1] A state may decide to become party to only one or to both acts. The London Act has been frozen since January 1, 2010 and no new designation under that act may be recorded.

Who Can File an International Application under the Geneva Act

An applicant must be entitled to file an international application. Entitlement is satisfied if the applicant is a national of, domiciled in, has a habitual residence in, or has a real and effective industrial or commercial establishment in a contracting state.

Effect of Filing an International Application under the Geneva Act

Once an international application is filed under the Geneva Act in the International Bureau, the International Bureau ascertains whether the application complies with formal requirements, records the application in the international register, and publishes the application in the International Designs Bulletin.

Once published, the contracting states designated in the international application perform substantive examination of the application. One key feature of the Hague system is that each designated contracting state may adopt its own laws to govern the substantive examination of the application. If the application fails to comply with conditions of the domestic legislation of the contracting state, the contracting state may refuse industrial design protection.

If a contracting state refuses protection, the applicant has the same remedies as the applicant would have had if the applicant had filed the design directly with the examining office of that contracting state, and any further proceedings, including appeals, are effectuated according to the laws of that contracting state.

If the contracting state does not refuse protection, the international registration has the effect of a grant of protection under the law of the contracting state. Thus, the applicable law that defines the scope of protection of the industrial design is that of the contracting state where protection has been obtained.

Thus, it is re-emphasized that Hague Agreement is procedural in nature and the International Bureau does not assess the novelty of the design sought to be protected and is not entitled to reject an international application on substantive grounds.[2]

Duration of Protection under the Geneva Act

The duration of industrial design protection under the Geneva Act is 15 years (three five-year terms) extending from the date of registration. In comparison, design patents in the U.S. currently have a duration of 14 years from issue. Protection beyond the 15 years afforded by the Geneva Act is determined by the law of each designated contracting state.

Advantages of Filing an International Application under the Geneva Act

The Geneva Act enables applicants from a contracting state to obtain protection of their designs with minimal formality and expense. Unlike the traditional route of filing an application in each state where protection is being sought, the Hague system provides that a single application, in one language, with one set of fees, and in one currency, can be used to register the design in each designated contracting state.

Additionally, under the Geneva Act, the international registration can be centrally maintained. For example, through the International Bureau, applicants can appoint or cancel representatives, change their or their representative’s name and address, change ownership, and renew or renounce the registration in the designated contracting states.

Additional Resources

Hague System for the International Registration of Industrial Designs at http://www.wipo.int/hague/en/general/.

Office of the Administrator for External Affairs: Hague System for the International Deposit of Industrial Designs athttp://www.uspto.gov/ip/global/patents/100318_USPTO_-_Hague_System_2_corrected.ppt.

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[1] For an updated list of all Hague Agreement members see www.wipo.int/hague/en/members.

[2] Efforts to harmonize the law regarding industrial design protection are ongoing and are governed by WIPO’s Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications. See www.wipo.int/trademarks/en/sct.html.