Design Law 2018 Strategies for using the Hague System Washington, DC October 24, 2018 Quan-Ling Sim Head, Operations Service The Hague Registry

Hague System Snapshot Complete filing to registration solution Preserves the greatest number of protection options for applicants 69 Contracting Parties and counting Recent accessions: Russian Federation, United Kingdom, Canada Pipeline: Mexico, China, Israel, Viet Nam One application, one set of requirements, one set of drawings (up to 100 designs), one set of fees

Hague System Main Features Filing (indirect or direct), designation of Contracting Parties Formalities(+) examination by the International Bureau Registration Publication (Immediate, Standard, Deferred) Communication to National Offices Refusal (primarily Examining Offices) Statement of Grant of Protection (if not provided, right is automatic after refusal period) Centralized management (transfer, changes, renewal)

Examination by the International Bureau (1) Entitlement Content Number of designs, reproductions Product indication Classification Description and legends Creator (US requires oath or declaration) Claim (US designation only)

Examination by the International Bureau (2) Fees Other formalities (e.g., supporting documents)

Best practices for US practitioners (1) File direct with the International Bureau Instead of indirect filing, file US first application and then Hague application claiming priority to US first filing Document Upload (to be launched shortly) Forms (prepare/sign electronically) Other correspondence Hague System accommodates US design practices (e.g., cross-section, enlarged, and exploded views) Creator oath or declaration Use text string signature “/ John Smith /”

Best practices for US practitioners (2) Claim Align with the product indication (in case of multiple products, include them all) Classification Avoid class 32 (graphic symbols, logos, surface patterns, ornamentation) if designating Japan or the Republic of Korea Search Hague Express to obtain guidance on product indication and classification

Best practices for US practitioners (3) Member Profiles Database http://www.wipo.int/hague/memberprofiles/#/ Electronic renewal DAS - Digital Access Service for priority documents No power of attorney required for applications filed on or after January 1, 2019 Fax discontinued as of January 1, 2019

Source: Internal WIPO statistics * USPTO refusals on ground of Unity of Design per IR’s: 39,76 % Source: Internal WIPO statistics