We expect that most Hague Convention applications will be rejected by the U.S.P.T.O.
The most common rejections are for multiple designs (Embodiments) and unacceptable figures
The Hague Convention provides a convenient path for patent holders outside the United States to submit a design patent application to the U.S. Patent and Trademark Office directly through the World Intellectual Property Organization (WIPO), without using the services of a U.S. patent attorney. This can save money on U.S. lawyer fees and also allows the patent owner to submit the design to multiple countries at the same time.
However, the Hague Convention was only recently adopted by the United States. There may be confusion among non-U.S. inventors about how U.S. design patent requirements differ from requirements in other countries. We expect that a high percentage of designs filed in the United States under the Hague Convention will be refused. This article describes the two most likely reasons for refusals.
When a U.S. design patent is refused, a U.S patent examiner issues an Office Action—an official letter that gives the detailed reasons for the refusal and the possible remedies to the refusal.
The language of an Office Action is highly specialized. It is difficult to understand, except for U.S. lawyers who are registered patent attorneys. (Only registered patent attorneys are permitted to communicate with the patent office on behalf of the inventor.)
In most cases, you will have two months after the date of filing in which to file a formal response to the Office Action at the U.S.P.T.O. This date can be extended to a total of six months, but with additional fees that will total hundreds of dollars.
Multiple Versions (Embodiments)
In many countries—and in the European Union IP Office— an industrial design registration can include multiple versions of the same product. Thus, a design filed at WIPO will often include multiple sets of figures that reference variations on a product.
But a U.S. design patent can only include a single version, which we call a single embodiment. If the design patent application includes figures that appear to describe more than one design, each of which could be separately patented, then the patent examiner will refuse the application.
The patent examiner will normally describe the different embodiments that are contained within the application and state that the inventor must choose one of the embodiments. For example, text in the office action may look something like this:
Embodiment 1: Figures 1-7
Embodiment 2: Figures 8-12
Embodiment 3: Figures 13-17
As the inventor, you have two choices: Choose one of the embodiments and delete the other figures, or divide the application into multiple applications, so that each application can proceed as a separate application for one of the embodiments. Creating multiple applications obviously means you must pay more official fees.
Problems with Figures
The second common problem with design patents arriving from WIPO is that they do not have acceptable figures.
Many countries (and the European Union) permit registration of industrial designs based on a single photograph or on several photographs that show a product design. The requirements under U.S. patent law are much more demanding.
The normal procedure is that a design patent application must include 7 views of the product design: front, back, top, bottom, right, left, and perspective. It is true that the regulations permit use of photographs, but they are very rarely found to be acceptable by the patent examiner. Because the Hague Convention is new to the U.S., foreign inventors should expect that the U.S.P.T.O. will still be reluctant (perhaps for several years) to accept photographs rather than computer-rendered mechanical drawings such as those shown in the examples below, which are taken from an issued U.S. design patent:
Because of these norms, we expect that many design applications filed with WIPO through the Hague Convention will be rejected by the U.S.P.T.O. because of problems with the figures.
The solution to this is simple but can be costly: New figures are required that match the scope of the original figures submitted to WIPO, but that also comply with U.S.P.T.O. requirements. This usually involves hiring an experienced patent drafting person who can prepare the figures for you, and then submitting them in response to an Office Action.
Although problems with multiple embodiments and unacceptable figures can delay processing and increase costs, the Hague Convention may still be a useful approach for many non-U.S. inventors to apply for design protection in the United States.