Design patents can play an important role in protecting a tech start-up’s innovations and creating competitive advantage, whether they are the only available protection or part of a larger patent strategy. Often overlooked and sometimes undervalued, design patents are typically easier and less costly to obtain than utility patents. While generally having a more limited scope of protection, design patents can still deter potential infringers.
Simplified Design Patent Filing Process
The Hague System for the International Registration of Industrial Designs (Hague System) simplifies the procedure related to filing foreign design applications. Under the Hague System, applicants can file a single, standardized international design application in a single language for registering up to 100 designs in over 64 designated member countries and intergovernmental organizations (referred to as Contracting Parties). Applicants can thus avoid complexities related to filing separate national applications in multiple countries, such as, for example, foreign language translations, procedural requirements, fees, and deadlines for renewal. This streamlined process should reduce entry barriers for applicants to acquire geographically broader design protection through simplification and reduced costs.
The United States joined the Hague System on May 13, 2015. In addition to the United States, the Hague System also includes Japan and the European Union, among other Contracting Parties. On the other hand, Israel is not a party to the Hague System, as well, for example, China, Canada, and Australia. However, more countries are expected to join the Hague System in the near future due to the recent addition of the United States. Meanwhile, while Israel is currently not part of the Hague System, Israeli companies can still take advantage of the Hague System if they have a domicile in the territory of a Contracting Party or have industrial or commercial establishment in the territory of a Contracting Party.
A Streamlined Option for Protecting Multiple Designs in Many Countries
Applicants can file a single international design application either on paper or electronically, designating any of the 64 Contracting Parties, and can receive the same effective filing date in each jurisdiction. Upon receipt of the international design application, the World Intellectual Property Organization (WIPO) will ensure that the application meets all basic procedural requirements and transmit the application to the Contracting Parties previously designated by the applicant. The WIPO will also publish the international design application.
The international design application is then registered or examined according to each particular designated Contracting Party’s substantive design patent or industrial design laws. It is important to note that, while the Hague System simplifies the filing of design applications, the international design application still needs to meet the substantive requirements of each designated Contracting Parties. For example, the United States will still require that applicants identify the inventor of the design, include a claim, and submit an oath or declaration from the inventor, while the laws of other Contracting Parties may not have these requirements. Accordingly, consulting with a patent attorney is advised to ensure that the international design application meets all substantive requirements in designated countries.
The Hague System provides applicants a streamlined option for protecting multiple designs in many countries. Additional information concerning the Hague System, including geographic coverage and a guide for users, is available at WIPO’s website.