1. Getting to know the Hague Agreement
NAPP Annual Meeting
Denver
July 11, 2015
Carl Oppedahl
Oppedahl Patent Law Firm LLC

2. Format and disclaimer Feel free to ask questions as they arise
This program does not make you a client of Oppedahl Patent Law Firm LLC
Please do not forget to complete the program evaluation questionnaire

3. Recent reminders of the importance of design protection
Years ago there were many US patent practitioners who questioned the value and importance of US design patents
Now the importance of design protection cannot be denied or ignored
The practitioner who fails to bring up design patent protection to a client does so at his or her peril

4. Clients will have questions about Hague
Clients will have questions about Hague and you need to be able to answer them
If the client already understands PCT or Madrid Protocol, you can compare Hague with what they already understand

5. Apple v. Samsung Jury award of about one billion dollars
More than half of that award was attributable to design patent damages
Each design patent obtained by Apple probably cost one-fifth to one-tenth the cost of a utility patent
Apple probably now feels it obtained a substantial return on its investment in design patents

6. US has just joined Hague Agreement
US formally become a member of the Hague Agreement on May 13, 2015
We already know about PCT and the Madrid Protocol
Let's compare PCT and Madrid with Hague so that we can learn more about Hague
See the handout which has a summary table

7. Subject matter and classification system
PCT is directed to utility patent subject matter
International Patent Classification (IPC) system
Madrid Protocol is directed to trademarks
Nice system of international trademark classes
Hague Agreement is directed to industrial designs (in the US this means design patents)
Locarno system of classification

8. Online databases PCT – Patentscope, ePCT, PAIR
Madrid – Romarin, Madrid Portfolio Manager, Madrid Electronic Alert, Madrid Real-time Status, TSDR
Hague – Hague Express Database, PAIR
You will need to learn how to use these databases

9. Priority period PCT – 12 months Madrid – 6 months Hague – 6 months
Restoration of Priority available depending on the Designated Office
Madrid – 6 months
ROP not available
Hague – 6 months

10. “hairpin turn” permitted?
Can you use the Treaty to get back into your own country?
PCT – yes and I suggest this is a Best Practice
Madrid – no you cannot
Hague – yes

11. Previous filing required? Central attack?
With PCT, there is no requirement that the applicant have made a previous filing
no “central attack” possible
With Madrid Protocol, it is an express requirement that the applicant have made a previous filing (“Basic filing”)
“central attack” is possible
With Hague, there is no requirement that the applicant have made a previous filing

12. Fees to Designated Offices
PCT – you can postpone such fees until almost 30 months after priority
Madrid – you need to pay the DO fees up front (except you can do Subsequent Designations)
Hague – you need to pay the DO fees up front

13. How long you can postpone decisions about Designated Offices
PCT – you can postpone such decisions until almost 30 months after priority
Madrid – you need to pick your DOs up front (except you can do Subsequent Designations even years or decades later)
Hague – you need to pick your DOs up front

14. Have to hire local counsel?
With PCT there is no avoiding having to hire local counsel at the time of national-phase entry around the world
With Madrid you might get lucky and not have to hire local counsel
With Hague you might get lucky and not have to hire local counsel

15. Timing of Publication
PCT – you can accelerate the IB's publication but cannot postpone it
Madrid – no you cannot accelerate or postpone the IB's publication
Hague – depending on the Offices you have designated, you may be able to accelerate or postpone the IB's publication

16. No news is good news? With PCT, no news is bad news
Unless you are given a patent in a particular Office, you don't have a patent in that Office
With Madrid, no news is good news
If a particular Office fails to say within 18 months that you don't have protection, then you have protection
With Hague, in the US, no news means you don't have design protection

17. Number of contracting States
PCT – 148
includes US, EPO, Japan, Korea, China
Madrid – 93
includes US, OHIM, Japan, Korea, China
Hague – 64
includes US, OHIM, Japan, Korea, and soon, China

19. One-stop shopping for renewals?
PCT – no
Madrid – yes
Hague – yes

20. One-stop shopping for address changes and assignments?
PCT – yes via Rule 92bis if within 30 months
Madrid – yes
Hague – yes
Note that with Madrid and Hague, it can be a big problem if the would-be assignee is not a citizen or domiciliary or establishee of a contracting State

21. Advantages of the Hague system
File a single application instead of multiple applications around the world
Maybe you will “get lucky” and not have to hire foreign counsel
One-stop shopping for address changes
One-stop shopping for renewals
One-stop shopping for changes of ownership
No need to hire foreign counsel to carry out address changes, renewals, or changes of ownership

22. Advantages of Hague system
No need to file documentation in various languages
No need to keep track of various national procedures
No need to keep a watch on varying renewal dates in various offices
No need to deal with various currencies in various offices

23. Up to 100 designs
So long as they are all in the same Locarno class

24. Korea, US, Japan, China
did not yet belong to Hague
as of these dates
These numbers are likely to
Increase greatly in coming years

26. Hague can be inbound or outbound
Today we will focus on the outbound aspects of Hague

27. Filing routes Legacy route New routes as of May 13, 2015
File first in the US, then within six months file in Paris Convention countries
New routes as of May 13, 2015
File first in the US, then within six months file a Hague application designating foreign offices, and maybe also file in other Paris Convention countries
File a Hague application designating the US as well as foreign offices, and within six months maybe also file in other Paris Convention countries

28. National/Regional Route
APPLICANT
OFFICE 1
OFFICE 2
OFFICE 3
International Route
OFFICE 1
OFFICE 2
OFFICE 3
APPLICANT
International Bureau

29. Foreign filing license
Don't forget that if your invention was made in the US, then you need a Foreign Filing License to file in countries outside of the US
If you file first in the US, then you will likely have your FFL before six months have passed
This is what has always permitted you to file Paris Convention foreign design filings within six months
This is what will permit you to file a Hague application directly at the International Bureau within six months

30. No foreign filing license?
For a particular client it may be preferable to do a “Hague first” filing
In other words file a Hague application that is not preceded by any domestic US design application
If the invention was made in the US ...
then one way to do the “Hague first” filing is to file in the USPTO as the “office of indirect filing”
another way is to obtain a faxed FFL and then file at the IB

31. Picking the designations
When you do a Hague application, you have to pick your designations up front
Typical choices might include: US
EM (European Union Registered Community Design, filed in OHIM)
JP (Japan)
KR (South Korea)
soon, CN (China)

32. Registered Community Design

33. Designating the US?
Note that if you take a hairpin turn to the US, that application is not able to have a CPA filed
If you are going to want to do a CPA, don't use a US designation, instead, do a US domestic filing
Of course you can still file continuations and divisionals even if you do a hairpin turn

34. Picking a place to file Filing at the IB – Validations are thorough
Fees may be paid accurately and immediately
No transmittal fee required
Might be only option if one of the applicants lacks a US connection
Reduces delays and risks of problems at USPTO
But of course you might need an FFL

35. Picking a place to file Filing at the USPTO –
Last-minute filer will get a few extra hours to file
No need to worry about FFL
Reproductions can be PDF if desired
But each applicant is required to have a US connection

36. If filing in IB
Applicant must satisfy one of the following requirements
Citizen of ...
Domiciliary of …
Habitual resident of …
Real and effective industrial or business establishee of …
… a contacting party (e.g. the US)

37. If filing in US
Each applicant must satisfy one of the following requirements
Citizen of ...
Domiciliary of …
Habitual resident of …
Real and effective industrial or business establishee of …
… the US
And in addition, the US must be the “contracting party” for each applicant

38. How is a “contracting party” different from citizen, domiciliary etc.?
The applicant must indicate its “contracting party” in the international design application
For a filing at USPTO, the application had better list the US as the “contracting party”
Failure to get this right is fatal to a would-be Hague filing at the USPTO
There is no savings provision for such a choice- of-office failure in the Hague system as there is in the PCT system

39. Filing other than electronically in USPTO?
Rules permit hand delivery or mail delivery
Neither approach is a Best Practice
Per-page fees for paper filings
USPTO rules do not permit fax filing

40. Filing other than electronically in IB?
Rules permit hand delivery or mail delivery or fax delivery
None of these approaches is a Best Practice
Per-page fees for paper filings

41. You will also need drawings
Filing in EFS-Web
Best Practice is to do a complete practice filing in the IB filing system, making careful notes of each validation result
Only after this, should you complete Form DM/1 and upload it to EFS-Web
You will also need drawings

43. Paying fees
If you use the USPTO as your office of indirect filing, you must pay the $120 transmittal fee to the USPTO
How about all of the other fees?
Fee to the IB
Fees to the Designated Offices

44. How about all of the other fees?
Fee to the IB
Fees to the Designated Offices
You can try to pay these fees to the USPTO
You will be paying US dollars
What you need to pay is Swiss Francs
You will almost certainly not guess correctly as to how many US dollars to pay to add up to some particular number of Swiss Francs
You will be over or short

45. How about all of the other fees?
Fee to the IB
Fees to the Designated Offices
Over or short?
If you are over, then you don't get the extra money back
If you are short, you will have to pay the deficiency to the IB in Swiss Francs
It's better to suck it up and just pay all of the Swiss Francs directly to the IB

46. What happens next? The IB examines the design application
IB's examination is limited to formal matters
The IB grants the International Registration
The IB transmits the IR to each designated office
The IB publishes the design application

47. In the designated offices
Many DOs are “registration” offices
Such a DO will simply grant the registration
No news is good news

48. In the designated offices
Some DOs carry out substantive examination
Such a DO might mail an Office Action
No news is good news (in most DOs)
You might have to hire local counsel to deal with the Office Action

49. Renewals
If any renewals are needed, you attend to them by means of direct payment at the IB
All in one currency
All in one place
This is very convenient!

50. Strategic choices Should you include 100 designs?
Maybe “yes” if the sole protection sought is from OHIM
Maybe “no” if protection is desired in countries that impose restriction requirements

51. Strategic choices
Best Practice is to consult competent counsel in each of the countries in which the client wishes to obtain design protection
The international application can be set up to include drawings optimized for each country
Later, any drawings that are unnecessary in a particular Office can be canceled

52. The soft path The soft path is to pick one embodiment only
Provide high quality drawings for that single embodiment
For AOM (article of manufacture) provide seven views
For 2D design (graphical user interface) provide maybe one view

53. Again, seek advice of counsel
In China, to cover a GUI, you need to provide views of the AOM in which the GUI appears
Seven views of a smart phone, for example

54. More questions? Join the Industrial Designs listserv
You can always unsubscribe later
This is the main place where design practitioners hang out

55. Thank you Please remember to complete the evaluation questionnaire