In this video I will tell you how to protect designs with the Hague Agreement Protecting a design in many countries can be costly and time consuming. The Hague Agreement promises to change that. The Hague system for the protection of designs is administered by the World Intellectual Property Organization in Switzerland and allows the members of the agreement to file one single design application that is valid in many different countries like the EU and Switzerland. However, until earlier in 2015, many of the member countries were not really playing an important role in the world of design protection and some more important countries for design protection were missing. In May 2015, the US, Japan and South Korea joined the Hague Agreement and it is realistic that some other countries like Canada, China and Russia may follow suit soon. So if you have created a design that you want to protect internationally, the Hague System has become a very attractive alternative to national design patents or national design registrations. With one single design registration you can get protection in the EU, Switzerland, Japan, South Korea and the US. So how does this work: You basically need four pieces of information: • The name and address of the applicant • JPG files of the different views of the design • The countries or regions, where you want protection • The type of good that is depicted according to the Vienna classification We file these applications on a routine basis for our clients but I will explain how to file an application so in theory you could do this yourself. Entitlement (simplified): - National of a contracting state - Have a domicile in a contracting state - Have a real and effective industrial or commercial establishment in a contracting state Formal requirements: to fulfil the formal requirements it is best to use the official Form (paper) or the e-filing interface on the website of the WIPO, al link is in the shownotes Fees http://www.wipo.int/hague/en/fees/calculator.jsp Preparing the reproductions: first a practical note. Many countries have very different interpretations with regard to the requirements for the reproductions. Some countries are known to be very strict. Until the US joined the Hague agreement, the US had very strict and formal rules for filing Design Patents and e.g. did not allow photographs to be submitted. However, according to the rules and the current caselaw related to the Hague Agreement, photographs need to be accepted. In May 2015 I had the chance to interview David Gerk, who is the responsible person at the USPTO for the Hague Agreement. He hinted that the USPTO might accept photographs as representations of designs under certain circumstances. A link to the full interview is in the shownotes. http://www.ipfridays.com/the-us-and-japan-are-joining-the-hague-system-interview-with-david-gerk-cool-options-in-patentscope-episode-27/ Actual Filing: This can be done via regular mail or electronic means. In some countries the application has to be filed through the responsible office of the member country. Filing an application can be quite complicated and there is plenty of opportunity to make mistakes but WIPO has a very useful 256 page Guide to the International Registration of Industrial Designs Under the Hague Agreement on their website. A link is in the shownotes. http://www.wipo.int/hague/en/guide/ I have one piece of homework for you: What type of design would you like to protect and what countries would be relevant to you? Leave your opinion or any questions in the comments and make sure to subscribe. And as always – Reap your Ideas! Other useful websites: IP Fridays - http://www.ipfridays.com (intellectual property podcast) IP Newsflash - http://www.ipnewsflash.com (intellectual property news portal, free patent PDF download, free patent family search) Contact Rolf at Dr. Rolf Claessen Patent Attorneys Freischem Salierring 47 - 53 (12th floor) D-50677 Cologne Germany Telephone: +49 (221) 270 5770 Facsimile: +49 (221) 27057710 http://www.freischem.eu Legalese and Disclaimer You have been watching a video by Rolf Claessen. The views expressed by the participants of this program are their own and do not represent the views of nor are they endorsed by their respective law firms. None of the content should be considered legal advice. This video should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents of this video are intended for general informational purposes only and you are urged to consult your own patent attorney on any specific legal questions. As always, consult a patent attorney.

• published: 19 Nov 2015
• views: 274