Kilpatrick Townsend partner Babak Kusha, along with a fellow thought leader, recently presented a Knowledge Group webinar on the topic of “The Hague Agreement and Design Filings: Recent Trends and Developments in 2018.” Below are key points from the latest presentation that provides an update to his first presentation in October 2017.
Key takeaways include:
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The Hague System continues to expand with significant new members, including Canada, Russia, and the UK -- which is the most recent and the 54th member of the 1999 Act and 68th member of the Hague Union:
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Russia joined as of February 28, 2018.
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The 1999 Act will enter into force in the UK on June 13, 2018.
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Canada is amending law to join by ~2019.
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Factors favoring client’s decision to file a Hague International Design Application (IDA):
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Value of the designation and publications fees.
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Recording in the International Register.
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Publication in the International Design Bulletin.
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A valuable international business asset.
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Cost calculus: what is the tipping point for cost effectiveness?
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Probably when the client wants to file in three to four countries.
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Compare: for an 8 Fig, 1 design, 2 page/500 word design:
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Direct: U.S. ~$3,500 - $4000, EU ~$2,100, Japan ~$2,400 = ~$8,000 - $8,500.
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Hague IDA: Designating U.S., EU, & Japan ~$6,100.
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Factors for practitioners:
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More efficient asset management.
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All the asset procurement strategy and thinking is done once to prepare a set of design patent applications.
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Client receives proper advice and quality work and design drawings for the initial filing. Such drawings are prepared at the time of filing with proper due consideration.
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Efficiencies are realized with an integrated process.
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Using the Hague IDA, the entire series of U.S. and foreign applications are managed under the same authority from the start.
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Current U.S. design practitioners, especially those with international design experience are best suited to leverage their experience to help procure good rights for their clients using the Hague System.
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Canada Update:
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Canada will join in 2019.
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Designs are registrable.
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Requirement for novelty – a disclosure must be within 12 months of the priority date of the design in the application.
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Utilitarian function – protection is not available for features applied to a useful article that are dictated solely by a utilitarian function of the article.
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One design per application – need for divisional practice.
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Self-collision – in case of self-collision, the later-filed design would not be blocked by the initial design if it was filed within 12 months of the filing date of the initial registered design.