The Hague System allows companies to seek international protection for industrial designs inexpensively. For example, an Applicant could save in excess of $5,800 for a design patent application filed in the European Community, Switzerland, and Turkey. However, there are a number of limitations. Currently, the Hague Agreement covers 56 member countries (contracting parties), and of greatest interest are the European Union countries. At this time, the Hague Agreement does not cover Australia, Canada, China, Japan, Mexico, or the United States.
Similar to the Madrid Protocol international registration for trademarks, the Hague Agreement offers protection for industrial designs in a number of contracting states with a single application filed with the World Intellectual Property Organization (WIPO). While the United States has signed the Agreement, it has not yet passed implementing legislation. However, a U.S. party meeting one of the following criteria may still be able to file an application if the party: (a) is a national of a Contracting Party; (b) is domiciled in a Contracting Party; or (c) has an industrial or commercial establishment in a Contracting Party.
The application can be filed first at the international level without a prior national application or registration and may include up to 100 designs, all in the same class. It is possible to defer publication for 12 to 30 months from the filing date or the priority date. Substantive examination is handled by each Contracting Party. International registrations are effective for 5 years, with 5-year renewals to the total term allowed by each member country. Renewals are made in one place and allow for non-renewal of individual embodiments in multiple countries in the same transaction if desired.
A cost comparison of official filing fees: Filing a design application having 4 embodiments (one in color) directly in Europe, Switzerland and Turkey would be $6,928 for the basic filing and publication fees, not including attorney fees. Filing the same application under the Hague Agreement would be $1,102 for the basic filing and publication fees, a savings of over $5,800. In addition, by filing internationally, there would be no additional foreign associate fees for each country.
Please contact us if you would like additional information relating to the Hague Agreement concerning the international registration of industrial designs.