In the United States, the ornamental shape of an object can be protected by a design patent. A design patent differs from a more common utility patent in several ways:
- The legal rights granted by a design patent are defined by a set of drawings rather than written claims
- A design patent lasts 15 years but does not require paying annuity fees
- A design patent can only be used to protect “articles of manufacture” rather than processes and other things that utility patents can protect.
In many other countries, different systems are used to protect the shape or features of “articles of manufacture.” In fact, in many countries, a broader variety of things can be protected under the name of “industrial designs.” As one example, the European Union allows protection under a Registered Community Design.
The Hague Convention is a treaty that allows the owner of an industrial design registration or a U.S. Design Patent to submit that registration or patent to the World Intellectual Property Organization (WIPO—see www.wipo.int) and ask WIPO to submit it to many countries.
For example, a U.S. company that owned a design patent on a model of show could use the Hague Convention to submit that shoe design to 50 other countries to obtain protection in each of those countries. The application would be reviewed by the legal authorities in each country, but—importantly—the application can be submitted through WIPO without the use of a local attorney in each country, using a standardized form, in English. This can save a tremendous amount of money.
Of course, because the laws differ in each country, this process is not a panacea. Applications submitted through WIPO can still be rejected. In that case, it will normally be necessary to hire a local attorney to deal with the rejection and try to overcome it. But the economies of using WIPO are considered a great advantage.
The United States joined the Hague Convention only very recently. Final rules have just been issued that permit a person from another country to submit an industrial design, through WIPO, as an application for a U.S. Design Patent.
However, the U.S. criteria for design patents are particularly rigorous, and foreign applicants who rely on the Hague Convention can expect that rejections will be common. The following list shows a few basic rules to be aware of to reduce the chance of rejections:
- An application for a design patent can contain only a single design. If an application includes multiple variations, the application will be refused and the applicant will need to separate it into multiple applications, with additional fees for each.
- The U.S. Patent and Trademark Office requires formal drawings, typically of 7 views of the design to be registered. Photographs are rarely acceptable.
- The drawings themselves define the claim for legal protection; textual descriptions are considered helpful but not legally relevant. Similarly, the title of the application will be considered by the patent examiner.
- Design patent applications are examined for novelty. If a similar design is found, an application will be rejected.
The Hague Convention can be a great way for owners of a design in one country to obtain protection in many countries through a process that is typically faster and less expensive than the traditional model of starting with a lawyer in each country. But the process may still require adjustments based on the requirements of each jurisdiction where protection is sought.