The United States and Japan join the Hague System for the International Registration of Industrial Designs. What does it mean for users?

registration of industrial designsAs of 13th May 2015, International applications for registration of industrial designs may be filed designating two new members of the Hague system: Japan and the United States (the US). The accession of these two countries has led to changes in filing with the International Bureau (IB) of the World Intellectual Property Organization (WIPO) which administers the system. This article aims at giving a brief overview of the new requirements that these accessions have triggered, as well as, highlighting OHIM’s practice. The following notes will also reflect certain changes that were implemented by WIPO following the accession of the Republic of Korea in July 2014.

Unlike the Community design registration system (which is essentially limited to a formal check during the examination proceedings), the national Offices of US, Japan and the Republic of Korea carry out a substantive examination of design applications, and users should be prepared for specific requirements and a longer registration process if they designate these countries in the International application.

The above explains why the period in which OHIMcan notify a refusal of an International application is6 months from the date of publication of the designin the International Designs Bulletin, whereas in Japan, US and the Republic of Korea this periodis 12 months. The Republic of Korea applies anexception for products belonging to classes 2, 5,or 19 of the Locarno Classification as regards thenovelty check, and products belonging to Class 32cannot receive protection in this jurisdiction at all.It is also important to know that if no notificationis communicated by the Office of the Republic ofKorea (either a refusal or a statement of grant of protection), the International registration does not automatically produce the effect in this designated country.

The OHIM does not receive International applications, meaning that EU users have to file either via their respective national Offices if they are Hague members, or directly at the IB of WIPO. However, the Offices of the US, Japan and the Republic of Korea will receive International applications, albeit upon the payment of transmittal fees. In Japan this fee amounts to 3,500 JPY per application. In the Republic of Korea this figure stands at 15,000 KRW if the International application is filed in paper and at 5,000 KRW for e-filing. For the US, the fee is 120 USD, but be aware; the US Office does a national security check which extends the time of forwarding an application to the IB of WIPO by up to 6 months. OHIM’s practice fully complies with the Hague requirement of allowing multiple design applications, but only where these belong to a single class of Locarno classification. On the other hand, Japan and the US require unity of design in the application; only one independent and distinct design may be included in a single application. The treatment of such International applications in these jurisdictions, moreover, differs. In the US the applicant will be invited to choose the design that will proceed to registration, with the option to continue with the remaining designs as separate applications. In Japan multiple applications will be treated as if individual national applications had been filed, without the necessity of any action by the applicant.

It is important to note that if the US is designated, no deferment of publication of a design is possible. This is markedly different from what happens when the OHIM, Japan or the Republic of Korea are designated, where a design may be kept unpublished after registration up to 30 months from the date of filing (or the date of priority).

In the EU system, the maximum duration of protection is 25 years (with five-year terms of renewal) from the International registration date. In Japan and the Republic of Korea the maximum duration of protection is 20 years from the date of the establishment of a design right in these member States. The shortest period of all is in the US, where a design patent is valid for one term of 15 years from the grant the protection by the Office.

OHIM and the Republic of Korea do not re-publishthe International registrations. Japan and the USre-publish the International registrations when thedesign rights are established.

All the Offices, including OHIM, have opted for individual fees. This is the part of the total costs of the International application which users pay for the examination proceedings to be completed by the designated Offices. For an EU designation this fee amounts to 67 CHF per design in the application and 34 CHF per design for renewal. In respect of designations of Japan, the individual fees stand at 582 CHF per design in the application; the first, second and third renewals costing 659 CHF each, the fourth and subsequent renewals being free. For a designation of the Republic of Korea the user pays 210 CHF per design in the application, 339 CHF for the first renewal, 800 CHF for the second renewal and 923 CHF for the third renewal.

The Republic of Korea applies level three of standard fees (under the Hague system) to applications and renewals for designs in products belonging to classes 2, 5 or 19 of the Locarno Classification. If the US is designated, the individual fee is paid in two parts: the first one for an amount of 733 CHF (discounted to 367 CHF in case of ‘small entity’ applicants and to 183 CHF in case of ‘micro entity’ applicants) upon filing, and the second one for an amount of 540 CHF (discounted to 270 CHF and 135 CHF in the above mentioned cases) upon request by the Office. All fees are payable directly to the IB of WIPO in Swiss Francs, but the USPTO also accepts payments in US dollars.

The IB of WIPO provides online support to guide the applicants through all changes. The application form (whose use is compulsory), and the e-filing interface contain new sections and four annexes, envisaging special situations. It should be remembered that the IB of WIPO disregards any contents of International application which are not requested or expressly permitted, and does not forward any disregarded documents to the designated national or intergovernmental Offices.

Differently from the practice at the OHIM, information identifying the creator is mandatory in an International application designating the US, Japan or the Republic of Korea. A successful US designation will also require a claim and an oath or declaration of the creator, the claim being a requirement for granting the filing date, and failure to comply will affect the date of the International registration. To avoid the loss of filing date, the IB of WIPO inserts the first product listed in the application if no indication of product is provided in the claim. More than one claim is not permitted.

The IB of WIPO has also added a section in the application form, specifying the types of views with a recommendation for its use in Japanese or US designations. Japan requires 6 views of a three-dimensional design, all in compliance with the method of orthographic projection. The Republic of Korea requires specific views of design if the protection is sought for a set of articles or typefaces.

In the US and the Republic of Korea, some specific evidence is required where the change of ownership is requested. If Japan or the Republic of Korea is designated in the application, the section on the exception to lack of novelty may be provided in the application form and supported by the evidence submitted in the annex of the application.

Source: Alicante News