2901 Basic Hague Agreement Principles
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I. OVERVIEW
The Hague Agreement is an international agreement that enables an applicant to file a single international design application which may have the effect of an application for protection for the design(s) in countries and/or intergovernmental organizations that are Contracting Parties designated in the application.
- The United States is a Contracting Party to the Hague Agreement, which took effect with respect to the United States on May 13, 2015.
- The Hague Agreement is administered by the International Bureau (IB) of the World Intellectual Property Organization.
II. BASIC FLOW UNDER THE HAGUE AGREEMENT
A. Filing
An international design application may be filed by an applicant “indirectly” through the U.S. Patent and Trademark Office (“USPTO”) or “directly” with the International Bureau.
If the application is filed through the USPTO, the Office will confirm that the required transmittal fee has been paid, perform a security review, and check that the required indications demonstrating applicant’s entitlement to file the application through the USPTO are present in the application submission.
- If everything is in order, the application will be transmitted to the International Bureau and the applicant will be notified of the transmittal.
- The USPTO will also notify the applicant and the International Bureau of the receipt date of the application.
B. Formal Examination by the International Bureau
Regardless of whether the application is filed indirectly through a Contracting Party or directly with the International Bureau, the International Bureau examines the application to determine whether the applicable formal requirements have been satisfied.
- If satisfied, the International Bureau will accord the application a filing date and register the industrial design in the International Register.
- If not satisfied, the International Bureau will invite the applicant to make the required corrections within a prescribed time limit.
- The failure to timely respond to the invitation may result in abandonment of the application or removal of the designation of a Contracting Party.
C. Registration and Publication
If the international design application satisfies all applicable requirements, the International Bureau will register the international design application in the International Register and accord a date of international registration.
- The international registration date will be either the filing date of the international design application or the date of receipt of any additional mandatory content item required, if such date is later than the filing date.
The international registration is published by the International Bureau.
The applicant may request that publication occur immediately after registration or that publication be deferred for up to 30 months from the filing date (or priority date, if applicable).
- Deferment of publication is not possible if a Contracting Party is designated that does not permit deferred publication.
- Absent a request for immediate publication or deferment, the registration will be published approximately six months after the date of international registration.
- The publication includes the data from the international registration and the reproductions of the industrial design.
D. Examination by the Offices of the Designated Contracting Parties
Following publication of the international registration by the International Bureau, the offices of the designated Contracting Parties proceed with examination if required under their respective laws.
As a result of that examination, the office may notify the International Bureau of a refusal of protection for its territory.
- A refusal of protection, if any, must be notified to the International Bureau within six months from the date of publication of the international registration.
- However, any Contracting Party whose office is an examining office, or whose law provides for the possibility of opposition to the grant of protection, may declare that the refusal period of six months is extended to 12 months.
The USPTO will examine international design applications designating the United States based on the published international registration received from the International Bureau.
- If the applicant is not entitled to a patent under the law of the United States with respect to any industrial design that is the subject of the international registration, the Office will send a notification of refusal to the International Bureau, normally within 12 months from the publication of the international registration.
- The applicant may reply to such notification directly to the USPTO.
- Any further Office action, such as a subsequent non-final rejection, a final rejection, or an allowance, will be sent directly to the applicant.
