INDUSTRIAL DESIGN TREATY REVISION UPDATE
HAGUE AGREEMENT FOR THE INTERNATIONAL DEPOSIT OF INDUSTRIAL DESIGNS
The Hague Agreement for the International Deposit of Industrial Designs (Hague Agreement) has been in operation in one form of another since 1934. It provides centralized process by the World Intellectual Property Organization (WIPO) for filing design applications in member countries. It is an effective and efficient way to obtain design protection, since applications can be filed in one language (French or English) on a standardized form, with all fees paid to WIPO, including renewal fees.
A summary of the treaty history and operation can be found on the WIPO home page.
Most countries with novelty examination requirements do not belong to the Hague Agreement, primarily due to the short time (6 months) required to make a decision whether to accept the International Registration. The U.S. and Japan are not members of the treaty. The vast majority of countries belonging to the Hague Agreement have registration systems (only formal examination by the Patent Office).
The Hague Agreement is in process of being revised, to help expand its membership, particularly attracting countries with novelty examination systems. The 6th meeting of experts working on this revision occurred on November 4-7, 1996. A report on this meeting is found in WIPO Document H/CE/VI/5 (November 7, 1996). For background on this project, see the articles listed below.
The draft treaty text reviewed at the 6th meeting of experts was a major revision, due to its reorganization of the text into two main chapters. Chapter I was for countries with non-novelty examination, and chapter 2 was for countries with novelty examination, like the U.S. and Japan. The current Hague Agreement provisions were essentially the substance of chapter I.
The challenge has been to adapt the current treaty to accept novelty examination countries. Some non-novelty examination countries would like the U.S. and Japan, for example, to improve their design patent protection in order to be a member. While substantive changes are not being discussed in this treaty, what is procedural and substantive is not easy to determine sometimes.
The main revised draft treaty were the maximum application requirements to obtain a filing date and the time to provide a refusal (first office action).
In general, the reorganized draft text, with new chapters I and II, was a workable approach. It allowed current Hague Agreement members to function within chapter I in a familiar way. The primary concern was article 5(2) that allowed members to deny access to members that did not comply with certain standards. The chief targets were novelty examination countries. For example, the time for refusing effect of an international registration in chapter I is 6 months. If that time limit is not met, an access denial could be made, at the option of any member, and it would be reciprocal. William T. Fryer, III, attended the 6th meeting of experts, at WIPO in Geneva, Switzerland, representing the American Bar Association, Section of Intellectual Property Law (ABA). He reported that interest level in this treaty revision remained high. The U.S. delegation was well prepared, led by Dick Wilder, from the PTO Office of Legislation and External Affairs. The U.S. decided to oppose article 5(2), taking the position that every member should have full access to all benefits under a revised treaty.
His report continued that the meeting discussion gradually developed a consensus that article 5(2) should be eliminated. There were many factors that contributed to this change. The PTO committed to having a first office action response within 12 months of receiving the International Registration. The Japanese Patent Office (JPO) proposed an 18 months response. The draft text had a maximum response time of 30 months. These significant proposals, and other compromises, suggest that the treaty revision work is close to completion.
Mr. Fryer reported that a meeting of "consultants", including representative from these organizations, was held at WIPO on February 10-12, 1997. The purpose of this meeting was to have an informal discussion about the new drafts of the Hague Agreement and regulations. This very strong effort to finish the treaty revision successfully is due to the close cooperation and diligence of the government representatives involved in this treaty revision. He concluded that if the basic structure of the treaty revision is settled, as it seems to be, the next task is to finish the regulations. The Consultant's meeting results will determine whether the 7th meeting of experts will be the last one, completing the final steps in preparing the draft treaty for consideration at a diplomatic conference, probably in 1998. There remains a need for interested organizations to be actively involved in the treaty preparation process.
PTO ACTIONS TO PREPARE FOR ADHERENCE TO A REVISED TREATY
The U.S. Patent and Trademark Office (PTO) has made several changes in the design patent system procedures that will facilitated U.S. participation in a revised Hague Agreement. For example, the PTO has recently placed on each design patent, along with the U.S. design classification, the International Design Classification (Locarno Agreement). A Section resolution supported this change (AR-R-412-1). The International Design Classification is used for Hague Agreement and most other countries have adopted it. Another example of PTO commitment has been in reducing design patent pendency, closely related to U.S. participation in the Hague Agreement. Deputy Commissioner Goffney recently stated that the Design Group is on the leading edge of the PTO re-engineering program. The Group now receives mail directly, processes fees, petitions and drawing reviews. It is close to a one stop service. These steps have cut down significantly the pendency time, and more improvement should be possible. The average pendency for design patents in Fiscal Year 1995 was 17.9 months and the approximate maximum time for first office actions was 18 months in Fiscal 1996. These statistics show continued improvement that benefits domestic users, as well making the U.S. design patent system fit more effectively into an international agreement. There is continue effort in the Design Group to improve administration and procedures. The first office action maximum will have to be reduced to 12 months under the draft revised treaty. The insights gained from the increased PTO contact with representatives from foreign design patent offices has been very useful. At each meeting of experts on the Hague Agreement revision the experts share information on design patent procedures, accounting in large measure for the rapid progress made in many countries and in the European Union to improve design protection.
SUPPORT IS NEED FOR TREATY REVISION
THERE IS A CONTINUING NEED TO SUPPORT IN EACH COUNTRY THE HAGUE AGREEMENT REVISION WORK. IT IS SUGGESTED THAT INTERESTED PERSONS AND ORGANIZATIONS STRONGLY INDICATE THEIR SUPPORT FOR THIS WORK, BY CONTACTING THE HEAD OF THEIR PATENT OFFICE. IN THE U.S. THE CONTACT PERSON IS: RICHARD WILDER, ATTORNEY/ADVISOR, PATENT AND TRADEMARK OFFICE, OFFICE OF LEGISLATION AND INTERNATIONAL AFFAIRS, TEL. (703) 305-9300, FAX (703) 305-8885.
ARTICLES ON THE HAGUE AGREEMENT
ADVANCED NOTICE: At the National Conference on Industrial Design Protection, held November 23, 1997, in Washington, D.C., a paper was presented by Francois Curchod, Deputy Director, WIPO, on the progress made in revision of the Hague Agreement. The article will be published in an upcoming issue of the American Intellectual Property Law Organization Quarterly Journal. Mr. Curchod has coordinated the work of WIPO on this treaty revision.
William T. Fryer, III, Seeking a Benefits Balance in the Industrial Design Treaty Revision (Hague Agreement): Fifth Meeting of Experts, Held June 13-16, 1995, 77 J. Pat. & Trademark Off. Soc'y 931 (1995), and articles cited in this article.
William T. Fryer, III, International Industrial Design Protection Improvement: The Hague Agreement Revision, 2 U. Balt. Intell. Prop. L. J. 37 (1993) (published in 1995).
William T. Fryer, III, More Bang for Your Design Protection Money: A Report on the Hague Agreement Third Meeting of Experts, 76 J. Pat. & Trademark Off. Soc'y 91-115 (1994).
Pierre Maugue', The International Protection of Industrial Design Under the International Conventions, 19 University of Baltimore Law Review 393-4-2 (1990).
William T. Fryer, III, Report on Hague Agreement (Industrial Designs) Second Meeting of Experts, WIPO, April 27-30, 1992, 74 J. Pat. & Trademark Off. Soc'y 923-937 (1992).
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THIS PAGE WAS LAST UPDATED ON : MARCH 24, 1997.
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