1 / 33

Hague System for the International Registration of Industrial Designs

Hague System for the International Registration of Industrial Designs. Alan Datri. basics. Centralization.

roary-kirk
Download Presentation

Hague System for the International Registration of Industrial Designs

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. Hague System for the International Registration of Industrial Designs Alan Datri

  2. basics

  3. Centralization • The centralized acquisition, maintenance and management of industrial design rights by filing a single international application for a single international registration in which one or more Contracting Parties are designated. • Allows right holders to target national, regional or global markets with respect to particular goods. • Cost-effective and efficient (at the front and back ends), thereby creating opportunities that would not otherwise exist for any enterprise with a limited legal budget, be it small, medium or large. • Enhanced by various on-line services on the Hague system pages of the WIPO website: e-filing; e-payment; e-renewal, etc.

  4. Centralization National/Regional Route International Route Applicant Applicant Office A Office B Office C Territory A Territory B Territory C Territory A Territory B Territory C

  5. December 24, 2013 Hague System Today 46 Geneva Act (1999) (including EU and OAPI) 15 Hague Act (1960) 61 Contracting Parties

  6. 2014 – 2016? Hague System Tomorrow? 53 Geneva Act (1999) (including EU and OAPI) 15 Hague Act (1960) 68 Contracting Parties

  7. Interesting Times • “Complexification” • With the arrival of the examination systems (Korea, US, Japan, China), it will not longer be a one-size-fits-all system. • Jumpstarting Harmonization • Possible design law treaty resulting from the work of the SCT • Advocating “best practices” among offices • “Intelligent” electronic tools to navigate the differences

  8. www.wipo.int/hague/en/members/ Declarations under the Geneva Act • Prohibition on filing through Office and/or self designation • Required views (< 6/1) • Special Requirements regarding applicant or creator • Additional Mandatory Requirements: (i) indications of identity of creator; (ii) brief description and/or (iii) claim • Fee structure: standard designation (3) or individual • Security clearance • Deferred publication less than 30 months or no deferment • Time for notifying refusal and commencement of grant of protection • Unity of design • Effect of change in ownership • Maximum duration of protection

  9. Putting Things in Perspective • Simple in concept • Accommodates business models that need to reduce costs not only in the initial filing, but also in the maintenance and management of a right • Can be complex in implementation and use • Not surprising in what it seeks to accomplish, namely, to provide centralized access to different national and regional design systems • Practitioners, Practitioners, Practitioners • Proper functioning system depends on the advice of a knowledgeable practitioner, whether legal or paralegal or in house or outside counsel

  10. International legal framework

  11. Hague Agreement • London Act(1934) “Frozen” as of 1 Jan 2010 • Hague Act(1960) Primarily European • Geneva Act(1999) Entered into force on 23 Dec 2003 Operational on 1 Apr 2004 Treaty of the future Hague System for the International Registrationof Industrial Designs • Common Regulations(1996) Last revised: 1 Jan 2014 common definitions differentiates requirements • Admin. Instructions(2002) Last revised: 1 Jan 2014 National Laws & Regulations

  12. Closed System • Entitlement • Must have a connection with a Contracting Party of a treaty • Real and Effective Industrial or Commercial Establishment (“Establishment”) • Domicile • Habitual Residence • Nationality • Extension of Protection • Can only designate Contracting Party with a common treaty

  13. Registration Direct Filing International Application Indirect Filing OFFICE OF APPLICANT’S CONTRACTING PARTY SECURITY CLEARANCE Self-Designation FORMALITIES EXAMINATION International Register Certificate of International Registration Publication (immediate; standard; deferred) INTERNATIONALBUREAU Designations OFFICE OFDESIGNATEDCONTRACTINGPARTY OFFICE OFDESIGNATEDCONTRACTINGPARTY SUBSTANTIVE EXAMINATION

  14. www.wipo.int/madrid/en/forms/ Maintenance and Management • Renewal (5 years) – DM/4 • Appointment of a representative – DM/7 • Change of name and address or holder or representative – DM/6 • Record transfer of ownership – DM/2 • Statements or documents may be required • Limitation of designs in one or more DCPs – DM/3 • Renunciation of all designs in one or more DCPs – DM/5

  15. International Registration: Effects • As a national/regional application • As of the date of the international registration • As a grant of protection • No Refusal • Date of expiry of refusal period (6 or 12 months), at the latest,* but can be later (if “examining Office” or opposition) • Date of optional statement of grant of protection prior to expiration of refusal period • Refusal • If overcome, date of withdrawal/statement of grant of protection, at the latest* • * “At the latest”: grant could be earlier, e.g., date of international registration

  16. International Registration: Duration • Initially valid for 5 years from date of international registration • Minimum duration of protection set by governing treaty • 3 x 5-year term = 15 years • Maximum duration of protection set by national/regional law of each DCP • 6 months before the expiration of a 5-year term, the IB unofficially notifies holder of the maximum duration of protection in each DCP

  17. FIling

  18. http://www.wipo.int/hague/en/forms/

  19. www.wipo.int/hague/en/members/ 10 DESIGNATED CONTRACTING PARTIES DECLARATIONS i !

  20. 7 8 REPRODUCTIONS OF DESIGNSLOCARNO CLASS and SUB-CLASS(ES)(if latter known)

  21. Reproductions: General Requirements • Mode • Photographs or graphic reproductions • B&W or color • Requirements • Industrial design alone at the exclusion of all else • Against a neutral/plain background • Technical drawings, particularly those showing axes, dimensions, explanatory text or legends unacceptable • May include shading and hatching • Dotted or broken lines or the text of the description may depict matter not claimed

  22. Reproductions: Published in Bulletin

  23. USE

  24. www.wipo.int/ipstats 2014 Hague Yearly Review • Highlights • Summary of System • Use of Hague System • Administrative Procedures, Revenue and Fees • Relevant Developments in Membership and Legal Framework • Annexes

  25. 2013 Key Figures Designs Contained inApplications/Registrations Applications/Registrations

  26. Additional Information

  27. www.wipo.int/hague

  28. www.wipo.int/hague Self-Study • Hague Yearly Review, International Registration of Industrial Designs (930E/14) • Objectives, Main Features, Advantages of the Hague System (911) • DM/1 - International Application • DM/1.inf - Explanatory Notes to DM/1 • Guide to the International Registration of Industrial Designs under the Hague Agreement • Legal Texts - Geneva Act (1999); Common Regulations; Administrative Instructions

  29. www.wipo.int/hague/en/forms/intermediate.html/ E-Filing: Video Tutorials

  30. Memphis, TN Washington, DC (901) 201 6696 (202) 657 6763 ALAN DATRIIPDatri@att.net

More Related