This article was published as a part of the annual meeting of the American Patent Law Association, Industrial Designs Committee, held October 19, 2006 (updated and edited to fit web site format). Ms. Patricia McQueeney, Committee Chair, organized and moderated the meeting, where the Geneva Act was discussed. The article lays a foundation for understanding the Geneva Act of the Hague Agreement for the International Registration of Industrial Designs (Geneva Act).

This introduction to a new way for foreign protection of industrial designs, the Geneva Act of the Hague Agreement - is serious reading. It will be helpful to read this article before discussions in companies and law firms on whether to support U. S. ratification of the Geneva Act.

This article presents the main Geneva Act operational concepts, in short form, and then it provides a glossary of several key terms organized in a unique format. There are many special topics that could be address in more detail. Questions and comments are encourage, to suggest what topics should be addressed in later articles.

Other resources on the Geneva Act included the WIPO web site pages on the Hague Agreement System, at URL http://www.wipo.int/hague/en/, and a recent book, The Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs, Drafting History and Analysis, by William T. Fryer III (2005), published by Kluwer Law International, and availabe on the Internet, e. g., from Amazon.com.
 
 

1. The Concept of an International Treaty to Establish Design Protection in Member Countries or Regions
Most countries and some regional organizations have industrial design protection laws, either using design patents or design registrations. Access to these systems is by directly filing an application with the design office through a foreign associate. The Geneva Act provides an alternative to direct filing, to obtain foreign design protection.

2. The Concept of an International Registration
The Geneva Act permits the use of a single application form to apply for protection in member countries through an International Registration.

3. The Concept of an International Office
The Geneva Act sets up a central administration under the direction of the World Intellectual Property Organization (WIPO). This office receives the International Registration application, only reviews the application contents for formality compliance, and registers the completed application. It publishes or defers publication of the design for a limited time in certain situations. After publication, the International Registration is sent to the designated member national office, to determine what rights may be obtained.

4. The Concept of the International Registration Using the National Laws and Procedures of a Member Country or Region
The Geneva Act provides that the International Registration is processed under the procedures of that apply to national or regional design application, and that the rights obtained for the International Registration are determined by national or regional laws, within certain limits.

5. The Concept of Using the National or Regional Offices to Initially File the International Registration Application
The Geneva Act provides for the option of a member to permit filing the International Registration application in their design office, to forward the application to WIPO for processing.

W. T. Fryer, III
Copyright 2006
 
 

1. Hague Agreement
The Hague Agreement Concerning the International Registration of Industrial Designs is a treaty that originated in 1925 and went through several updates, and now it has the latest version, the Geneva Act, approved in 1999. Earlier treaty versions remain active for members of those treaties, but the latest version is the one that new and old members join. The treaties, as a group, are referred to as the Hague System.

2. Geneva Act
This treaty version became operational on April 1, 2004. It has 20 members as of December 7, 2006 (See Topic: Geneva Act Membership). The treaty Rules and Administrative Instructions unify many formalities and fees. The most recent updates on Geneva Act membership can be found on the WIPO Hague System web site at http://www.wipo.int/hague/en/.
WIPO administers several versions of the Hague Agreement, collectively administered under the title "Hague System."  The Geneva Act is the current version and the only version that members can join now.

3. International Registration
The International Registration application requirements include a reproduction of the design and information on the applicant. This application form is accepted by all treaty members. It can be prepared in English or French.

4. World Intellectual Property Organization (WIPO)
WIPO administers the Geneva Act, receiving the International registration applications, reviewing them only to see that the required contents are present, and then approving the International Registration. The International Registration is published and sent to the design offices of all members designated for protection. Most fees are paid to WIPO (Swiss currency). WIPO maintains the status of all International Registrations and handles the renewals.

5. National and Regional Design Offices
The receipt of an International Registration by a national or regional design office starts the design office review. The processing of an International Registration and the rights obtain thereunder are governed by the laws applicable to the designated national or regional office. In countries that do not have novelty examination, the next step comes relatively soon, and the International registration protection is approved. Sometimes the date of protection is from the date of the Integration Registration, its filing date with WIPO.

6. Novelty Examination
A few countries, like the U. S. and Japan, require novelty examination before rights are obtained. The Geneva Act accommodates the non-novelty examination systems and the novelty examination systems, putting emphasis on prompt examination and rights.

7. Publication Deferment
In most national and regional systems there have been an options for limited term publication deferment. This step gave the design owner the right to prevent copying of a published International Registration design before the design product was public. The Geneva Act limits whether this step can be used, at the option of the treaty member. The maximum period of deferment is 30 months.

8. Design Reproductions
An International Registration requirement for a design reproduction is flexible, on most aspects, allowing the attorney to provide the drawings or photos that provide the best protection for the designated member design systems. The different drawing requirements, for example, in many countries make it important to continue to work for harmonization of design laws and procedures, through meetings of the Geneva Act member. These differences are not an obstacle to practical use now of the Geneva Act.

9. Protection Term
International Registration protection term is determined by the national or regional laws of the designated country, with a minimum of 15 years.

10. Multiple Designs International Registration
An International registration can include up to 100 designs for products in the same class of the industrial design classification Locarno treaty. The procedures in most countries that do not have novelty examination result in acceptance of the multiple designs application without modification and rights are obtained relatively soon.

11. Costs
Most fees for an International Registration filing, renewal and other administrative matters are set by the Geneva Act governing body. National and regional offices can set the fees for novelty examination. A design owner will receive a significant cost saving for filing a multiple designs International Registration application.

12. Representation
The Geneva Act permits design owners to file an International Registration application directly with WIPO, and to handle the communications with WIPO, without help from a U. S. Attorney or agent. A U. S. company could use its in-house attorneys to obtain an International Registration. In practice, as with all areas of IP, it is prudent to obtain advice from an expert in the field of U. S. and foreign design protection. A foreign attorney is not required to file or communicate with WIPO on International Registration matters. The GA is set up to allow an attorney or agent to represent the design owner. National and regional laws will determine whether a foreign attorney is needed to communicate with a design office on rejection of International Registration protection, and other International Registration matters.

13. Two-dimensional Designs
Registration under the Geneva Act of a two-dimensional design, such as a textile design, is given special flexibility, partly in view of the TRIPS general requirement to facilitate lower cost and efficient protection of textile designs. The filing fees for textile International Registration application are initially lower than for three-dimensional designs.

14. Direct National or Regional Filing
Design protection can be obtain in each country or region by filing directly with the design office. A national attorney is needed to file the application and to communicate with the design office. The application must be in one of the accepted local languages and drawings must be in the format required by local rules. Fees must be paid in local currency. A design owner has options on how to obtain foreign protection, either direct filing or The New Way, using the Geneva Act. The selection of countries where a Geneva Act application will provide the needed protection will be an important step in foreign design protection planning. An experienced design attorney will be a valuable source of advice in this planning.

W. T. Fryer, III
Copyright 2006
 
 

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