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1) Prepare the design application according to US standards. Unlike many foreign jurisdictions which implement a design registration process, the US implements an examination process similar to utility applications. This makes the USPTO a good target audience for design applications since the standards are higher relative to the registration jurisdictions. That is, if the USPTO standards are satisfied, other jurisdictions will likely also be satisfied. Nonetheless, keep in mind Step 5 below.
2) Figure out which countries the client-Applicant wants to select for the IDA. The patent attorney needs to know which countries the client wishes to file in before engaging in any leg work. This will affect the overall price and it may also affect whether the IDA should even be filed or the Applicant should file directly in the selected country or countries via the Paris Convention. This step should not be underestimated. A client that comes back multiples times to add/remove countries can delay the filing. (see Step 5 in particular). Consider providing the client with the WIPO link in Step 4 below if cost becomes a prime concern.
3) Verify the selected countries are participants for the IDA. Verify that the countries in which the client seeks protection (Step 2) are a contracting party to the Hague Agreement. See the WIPO list of contracting parties here: https://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=9. (last accessed March 10, 2020).
4) Calculate and provide the client with the cost for filing the IDA in all selected countries. The governmental fees for filing an IDA change based on the number of countries selected. Other factors that influence cost include the number of industrial designs in the application (WIPO accepts up to 100 different designs[1]) and number of words in the application. WIPO’s cost calculator can be accessed here: https://www.wipo.int/hague/en/fees/calculator.jsp. (last accessed March 10, 2020)
5) Optional, but recommended. See optional Steps 1 and 2 Below:
Option 1 - Consult with foreign counsel in each selected country for an opinion as to whether the prepared application (Step 1) comports with the respective country’s laws. While the US has fairly high standards for design application drawings relative to registration countries, this does not guarantee that respective country’s design registrations will be enforceable and/or of value to the client. If the client’s wallet can handle the short review by foreign counsel in each selected country, then, in my opinion, it’s better to be careful than to be overly confident. I’ve received advice from a United Kingdom patent attorney who was more than generous with his time (for free) and gave some good information as to how certain things in a prepared set of drawings could be interpreted in the UK.
Option 1 Caveat – When engaging with foreign counsel, try to vet the attorney to make sure they know about design patent law. Many patent attorneys, in the US and abroad, know very little about design patent law despite many believing they are experts. They’ve written a design patent application here and there and are “experts” because they know the difference between solid and broken lines when used in a design application.[2] I've asked foreign patent attorneys to review drawings for me in the past and at times it is clear that the attorney is not sure what an IDA is or what the acronym denotes.
Option 2 – Analyze and leverage the below chart, published by WIPO, for guidance on submitting drawings to satisfy multiple jurisdictions:
(Issued by WIPO in May, 2019)
6) Hire foreign counsel to file the design application in countries which are not participants to the Hague Agreement. Keep in mind that the client needs to be aware of the additional fees and costs associated with filing directly in a foreign country. While filing in seven jurisdictions via the Hague Agreement can potentially cost around $2,000 in filing fees depending on the selected jurisdictions, filing the application in a single country can potentially cost close to $750-1,000 in foreign counsel and governmental fees (i.e., half the cost for filing in seven countries).
7) Make sure there are no priority issues. As should be standard practice, make sure there are no public disclosure or on-sale issues and keep in mind the Absolute Novelty rule followed by most of the world aside than the US. Consider filing a US application to secure a filing date and subsequently the IDA. An obvious point that is important enough to state for the unknowing: design patents applications have a six month window to claim priority to a prior filed application; not twelve months like utility applications.
8) File multiple reproductions of the design to satisfy each country's laws. If one set of drawings cannot be configured to satisfy each countries’ laws, then submit multiple reproductions to do so. In some instances, it may be beneficial to submit a “clean” reproduction and a “shaded” reproduction since China does not accept shading, contrary to the US. Likewise, while in the US there can be times where less than six or seven drawings are acceptable to adequately show a product’s appearance, some foreign countries, like China (non-contracting party) and Japan (contracting party) may require at least six views in each design application. When multiple reproductions are submitted, expect restriction practice and the associated costs to come into play in at least the US.
[1] Keep in mind that some countries, like the US, will likely restrict out alternative embodiments (or variations) when the application is examined.
[2] I once spoke with a partner-level US attorney who, over the course of several interactions, incorrectly referred to US design patent applications as “design registrations” because, I assume, he was confusing foreign and US law. His knowledge of design patent law was clearly deficient if he failed to understand this basic distinction.
-Tom Tatonetti
ttatonetti@tatonettiip.com
March 20, 2020