An Easier Way to Protect Your Designs Globally

May 6, 2015 Advisory

Beginning May 13, 2015, U.S. patent owners will have a streamlined and more economical way to obtain international protection of industrial designs. This is the date when U.S. Patent and Trademark Office ("USPTO") rule changes implementing the Hague Agreement will go into effect.

Prior to these rule changes, it was relatively expensive to obtain protection for designs on an international basis. Separate filings were required in each country, resulting in redundant administration and maintenance costs associated with each design patent application.

However, the Hague Agreement basically establishes an international registration system that facilitates protection of industrial designs in member countries and intergovernmental organizations. Under this system, a single, "standardized," international design application can be filed either directly with the International Bureau of World Intellectual Property Organization (WIPO) or indirectly through a Contracting Party, such as the U.S. Patent and Trademark Office (USPTO).

This new system is important because many of our clients enjoy protection not just for the utility aspects of their inventions, but also the ornamental appearance. A design patent application is the best instrument to protect the ornamental appearance of an article of manufacture, i.e., an "industrial design." The range of designs that qualify as an industrial design eligible for design patent protection is quite broad.

The standardized design application results in a number of enhancements:

  • The U.S. Patent and Trademark Office is an established receiving office for international design patent applications with all of the convenient filing and payment options.
  • International design patent applications may be filed directly with the WIPO or through the USPTO. As a result, U.S. entities will have easier access to the international community, and foreign entities will have easier access to the United States.
  • The international application process avoids many language and currency conversion issues associated with separate international design patent applications.
  • The international application process also streamlines routine administrative tasks. For example, the new process reduces the need to constantly monitor for international renewal due dates (the WIPO will send reminders of upcoming five-year renewals) and enables global applicant name/address changes to be made in a single place.
  • The traditional process to file an independent design patent application in the U.S., and to file the application separately in other nations as desired, remains available.
  • U.S. design patents, regardless of how obtained, still have no renewal/maintenance fees.

All design patents will have a 15-year term. This includes even U.S. design patents filed after May 13, 2015 using the traditional process.

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