The Hague Agreement and Design Filings: Things You Need to Know and Do
The growing number of signatory countries to the Hague Agreement depicts the treaty's efficiency in protecting design patents across the globe. The Hague Agreement is an international treaty that provides a design protection registration system for designated member countries and intergovernmental organizations. The design protection can be obtained by applicants by filing a standardized international design patent application with the World Intellectual Property Organization (WIPO).
While the system successfully provides US and foreign applicants with new cost-effective means and opportunities to protect their designs, the risks in design filings are still waiting around the corner. Thus, it is with great importance that counsel and patent practitioners fully understand the international design application (IDAs) process to ward off potential pitfalls.
In this LIVE Webcast, a panel of distinguished professionals and thought leaders assembled by The Knowledge Group will provide the audience with an overview of the latest trends and critical issues with respect to the Hague Agreement and Design Filings. Speakers will also offer best practices in maximizing the benefits of the design protection system while ensuring compliance with applicable laws.
Key issues that will be covered in this course are:
- The Hague Agreement - An Overview
- Intricacies of Hague Design Filings
- Benefits and Pitfalls
- Critical Issues and Legal Hurdles
- Design Patent Filing Considerations
- Latest Trends and Developments
- Best Practices and Strategies
Babak Kusha, Partner
Kilpatrick Townsend & Stockton LLP
- Hague System
- What is it?
- How long has it been around?
- WW and US?
- Stats: WW, US and comparisons with U.S. Design filings and other National filings
- WIPO bullet points we all know
- Who is filing in the U.S.
- What areas
- General high level overview touching upon points discussed in more detail below.
- Knowing this how would we advise our clients differently?
Corey M. Beaubien, Shareholder
Reising Ethington P.C.
- Actual filing practice tips
- Workflow management – docketing and de-docketing
- Filing - Forms
- Mandatory content
- CPs musty select at time of filing
- Cannot be added?
- Other convention filings?
- Additional mandatory content
- Identity of the creator
- A brief desc.
- A claim (US)
- Optional contents
- A claim of priority under the Paris Convention
- No provision for adding a priority claim after filing
- No provision for submitting priority documents except for purposes of KR via Annex V ? ??
- DM7 for appointing rep not USPTO POA form
- Annex I: Oath or declaration of the creator (US)
- Annex II: Document(s) supporting a declaration to the exception to lack of novelty
- Annex III: Information disclosure statement (US)
- Annex IV: Micro-entity certification (US)
- Annex V: Priority document (KR)
- Electronic files vs. attachments
- Word count,
- Practice tips – Prosecution
- High-level strategies
- Know where we wish to seek protection
- Know local laws
- Do it right the first time
- Can it be done?
- Considering differences and subtle nuances?
- U.S. practice tips
April M. Capati, Of Counsel
Lerner David Littenberg Krumholz & Mentlik LLP
- How does it work – nuts and bolts
- How to file
- Who can file and where?
- Direct v. indirect filing (aside define : Office of indirect filing; WIPO, and Office of designated CP - Each one’s role)
- Direct via IP WIPO : no Foreign filing license and one may be needed – automatic check on input
- Indirect via USPTO : need Connection to the US; will get foreign filing license
- Mechanics of the Refusals
- Enforcement of such Granted designs?
- Any data?
- Too soon?
- What they are
- and the addressing of each that is raised
- for example:
- not all are players:
- China, Australia, Canada,
- examination jurisdictions vs. Registration jurisdictions
- two-step jurisdictions – as in AU, etc.
- multiple embodiment practice
- partial practice
- translucent mask vs. disclaim by B&W line mods
- as extensions – common in U.S. practice
- color drawings,
- solid shaded images
- Why so few Hague filings in the U.S. / why not being adopted more broadly?
- Is it b/c of Designs in general? i.e. Because design filings in general are fewer than utility patent applications / other ID protections schemes?
- Is it a trademark / patent wall we have more of here in the U.S.
- Is the Hague System perceived as too foreign?
- non-U.S. protection is just foreign?
- Swiss Francs?
- Perceived rather odd perhaps? – even though it’s about equal.
- Looking forward: Expected improvements to the Hague system
- Determining if Hague is right for your client.
- Hague Eligible. – Is Applicant eligible to file a Hague?
- Coverage sought; Complexity of the Design; Publication of the application.
- Cost – Cost comparison ~ Direct v. Hague (move down from earlier section)
- Possible additional slides to fit in somewhere
- US Hague Renewals
- Renewed directly through WIPO
- Each country registration must be renewed
- In US, no need to pay fees, only renew
- Article 16 governs assignments
- Hague is a closed system, arguably preventing transfer of rights to a party who does not meet the requirements of a contracting party
- Unlike Madrid, can assign a US design patent away from a non-member of Hague
Babak Kusha is an intellectual property partner based in Kilpatrick Townsend’s San Francisco office. He is the Co-Chair of the Mechanical and Medical Device Patent Team with over 17 years of experience as a registered patent attorney and 12 years as a mechanical and nuclear engineer. He prosecutes design and utility patent applications for his clients and has extensive experience in the field of design law, including strategic design protection and enforcement including coordinating U.S. and international utility and design patent, trademark and copyright protections. Babak counsels clients on various aspects of intellectual property law, including clearance or freedom-to-operate, invalidity and non-infringement issues, competitive analyses, patentability opinions, invention identification, and assessment, as well as preparation and prosecution of patent applications.
Babak Kusha is an intellectual property partner based in Kilpatrick Townsend’s San Francisco office. He is the Co-Chair of the …
Corey M. Beaubien is a shareholder with the intellectual property (IP) law firm Reising Ethington P.C., and currently serves on the firm’s management committee. His experience embraces most aspects of IP counseling, with a focus on developing and managing corporate patent portfolios. Mr. Beaubien secures patent protection for innovations in the automotive, medical, aerospace, and robotics industries. He manages an industrial design patent portfolio that protects some of the world’s most well-known automotive designs and their replacement exterior parts. He holds a JD from Wayne State University Law School in Detroit, and a BS in mechanical engineering from G.M.I. Engineering & Management Institute (now Kettering University). Mr. Beaubien enjoys writing and speaking about contemporary US patent law topics.
Corey M. Beaubien is a shareholder with the intellectual property (IP) law firm Reising Ethington P.C., and currently serves on …
April M. Capati, Of Counsel, practices in the Westfield, New Jersey office of the intellectual property law firm Lerner David. She has over fifteen years of successful experience in protecting and leveraging her clients’ innovation and ensuring their marketplace exclusivity. Her experience encompasses virtually every aspect of patent law, including global industrial design and utility patent procurement and portfolio management, patent litigation, patent licensing, post-grant proceedings, and opinions/counseling, as well as trademarks, and copyrights. She has drafted and prosecuted utility and design patents in a wide-array of technologies, including medical device, microelectronic packaging, consumer electronics, computer science, consumer health care, autonomous vehicles, motors, and mechanical technologies. April represents diverse clients, ranging from sole proprietorships to Fortune 500 companies.
Prior to joining Lerner David, April served as Law Clerk on the Maryland Court of Special Appeals to the Honorable Ellen L. Hollander, now a U.S. District Court Judge for the District of Maryland. She earned her Juris Doctor from the University of Maryland School of Law, where she was an Associate Editor for the Maryland Law Review. April graduated magna cum laude and attained the highest grade point average in her undergraduate class for civil engineering with an environmental emphasis from the George Washington University.
April M. Capati, Of Counsel, practices in the Westfield, New Jersey office of the intellectual property law firm Lerner David. …
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Method Of Presentation:
Experience in patent law
NASBA Field of Study:
Business Law - Technical
NY Category of CLE Credit:
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About Kilpatrick Townsend & Stockton LLP
Kilpatrick Townsend & Stockton LLP is a leading international law firm with over 600 attorneys across 18 offices. We are well-positioned to serve all of our clients’ needs, bringing expertise in intellectual property, litigation, and corporate transactional matters. Learn more at www.kilpatricktownsend.com.
About Reising Ethington P.C.
Since its founding in Detroit in 1865, Reising Ethington has specialized solely in the practice of intellectual property (IP) law. Areas of expertise include IP prosecution and litigation, managing worldwide patent and trademark portfolios, post-grant proceedings, trade secrets, and licensing and other IP-related agreements. The firm represents some of the world’s most innovative and foremost IP owners, including automotive manufacturers and suppliers, medical technology companies, aerospace companies, universities, industrial equipment makers, robotics companies, and consumer product companies.
Reising enjoys a rich history of partnership with many of its clients, including in the automotive industry where the firm worked to protect the ideas of automotive pioneers Ransom E. Olds, David Buick, and the Fisher Brothers. Dating back several decades, attorneys at Reising have authored seven editions of the U.S. law school textbook Cases and Materials on Patent Law Including Trade Secrets, published by West Academic Publishing.
About Lerner David Littenberg Krumholz & Mentlik LLP
Since its founding in 1969, Lerner David has been devoted exclusively to intellectual property law. The firm has earned a solid reputation for active and effective client representation in the Patent and Trademark Office, in the courts and at the bargaining table - but its role as "counselor" remains paramount. By providing sound, practical advice, Lerner David's 70+ attorneys help clients make informed, intelligent choices about the benefits and risks associated with intellectual property. Lerner David has offices in New Jersey. U.S.A., Guangdong, China. and Tokyo, Japan.