The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10. Presenting a live 90-minute webinar with interactive Q&A Design Patents and the Hague Agreement Option: Evaluating the Benefits and Risks of Filing an IDA Leveraging Lessons From the First Year, Understanding the Implications for Design Patent Prosecution Today’s faculty features: 12pm Eastern | 11am Central | 10am Mountain | 9am Pacific THURSDAY, JULY 14, 2016 Betty Berendson, Senior Information Officer, The Hague Registry, Brands and Designs Sector (BDS), World Intellectual Property Organization, Geneva, Switzerland Tracy-Gene G. Durkin, Director, Sterne Kessler Goldstein & Fox, Washington, D.C. David R. Gerk, Patent Attorney, Office of Policy and International Affairs, U.S. Patent and Trademark Office, Alexandria, Va.
80
Embed
Design Patents and the Hague Agreement Option: …media.straffordpub.com/products/design-patents-and-the-hague...Design Patents and the Hague Agreement Option: Evaluating the Benefits
This document is posted to help you gain knowledge. Please leave a comment to let me know what you think about it! Share it to your friends and learn new things together.
Transcript
The audio portion of the conference may be accessed via the telephone or by using your computer's
speakers. Please refer to the instructions emailed to registrants for additional information. If you
have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.
Presenting a live 90-minute webinar with interactive Q&A
Design Patents and the Hague Agreement Option:
Evaluating the Benefits and Risks of Filing an IDA Leveraging Lessons From the First Year, Understanding
If you dialed in and have any difficulties during the call, press *0 for assistance.
Viewing Quality
To maximize your screen, press the F11 key on your keyboard. To exit full screen,
press the F11 key again.
FOR LIVE EVENT ONLY
Continuing Education Credits
In order for us to process your continuing education credit, you must confirm your
participation in this webinar by completing and submitting the Attendance
Affirmation/Evaluation after the webinar.
A link to the Attendance Affirmation/Evaluation will be in the thank you email
that you will receive immediately following the program.
For additional information about continuing education, call us at 1-800-926-7926
ext. 35.
FOR LIVE EVENT ONLY
Program Materials
If you have not printed the conference materials for this program, please
complete the following steps:
• Click on the ^ symbol next to “Conference Materials” in the middle of the left-
hand column on your screen.
• Click on the tab labeled “Handouts” that appears, and there you will see a
PDF of the slides for today's program.
• Double click on the PDF and a separate page will open.
• Print the slides by clicking on the printer icon.
FOR LIVE EVENT ONLY
Geneva,
July 14, 2016
Design Patents and the Hague Agreement
Option: Evaluating the Benefits and Risks
of Filing an IDA
Betty Berendson
Senior Information Officer
Information and Promotion Section
The Hague Registry
Who Can Use the System?
Nationality Domicile
Real and effective industrial/commercial
establishment
Habitual residence Geneva (1999) Act only
Attachment to a Contracting Party
6
What is the Hague System?
One to many relationships
• File a single international application for a single international registration (IR) in which one or more Contracting Parties (CP) are designated
“Bundle of Rights”
• If no refusal, the resulting international registration has the effect of a grant of protection in each designated Contracting Party. Substantive issues are governed by the law of each designated Contracting Party.
7
Hague System is a Procedural Arrangement
Issues such as: are governed by the law of each Contracting Party designated in an international registration
the conditions for protection
the refusal procedure to be applied when deciding whether a design may be protected
the rights which result from protection
8
The International Application
In English, French or Spanish
May be filed directly with the International Bureau through the E-filing interface but also on paper
May comprise several different designs up to a maximum of 100 if they belong to the same class of the International Classification (Locarno)
One set of fees (in CHF) is to be paid
9
The Hague System Procedure: Role of the International Bureau
Formal examination
Recording in the International Register
Sending the certificate to the holder
Publication in the International Designs Bulletin
Notification to members through the publication in the Bulletin
If the International Bureau finds that the international application does not fulfill the applicable
requirements, it invites the applicant to make the required corrections within three months from the
date of invitation sent by the International Bureau
10
The Hague System Procedure: Role of the Designated Contracting Parties Refusal by a designated Contracting Party
on same substantive grounds as for
national/regional filings
must be communicated within time limit
effect limited to territory of the member that has
refused
International registration (where not refused)
no refusal = same rights as a local design
registration
a bundle of independent national/regional rights
advantages of central management
11
The Hague System Procedure (III)
Longer renewal period, if allowed by the law of the designated Contracting Party
Renewable at least once (1960 Act) or twice (1999 Act)
Duration of protection: five years
12
Amount of Fees Paid per International Registration (2015)
0
200
400
600
800
1000
1200
1400
1600
1800
less than 1000 CHF 1000 to 1999 CHF 2000 to 2999 CHF 3000 to 4999 CHF more than 5000CHF
IR
IR 1570 1165 426 259 161
% 43.8% 32.5% 11.9% 7.2% 4.5%
13
General Advantages of the Hague System
Hague System (international route)
one Office for filing
one language
one currency
one international registration
one renewal
one modification
foreign attorney or agent
(first needed if refused)
National/regional route
many Offices for filing
many languages
many currencies
many registrations
many renewals
many modifications
foreign attorney or agent
(first needed at filing)
14
Hague Union
51 Geneva Act (1999) (including EU and OAPI)
15 Hague Act (1960)
65 Contracting Parties 15
Hague System: Foreseen Expansion
Coming soon
16
2015: Five Most Popular classes in International Registrations
Class 10
Clocks and watches and other measuring instruments, checking
and signaling instruments
324 registrations (9.1%)
Class 9
Packages and containers for the transport or handling of goods
249 registrations (7%)
Class 12
Means of transport or hoisting
264 registrations (7.4%)
Class 6
Furnishing
249 registrations (7%)
Class 14
Recording, communication or information retrieval equipment
- Dedicated electronic tool - Easier than using paper form - Embedded alerts and guidance - Integrated fee calculator - No additional fees - No intermediary - Workbench/Re-use functions - Access to Portfolio Manager
Two Filing Options for US Applicants
20
New Features of the E-Filing Portfolio Manager
Send corrections to irregularities or defects
Receive and download notifications from the IB relating to international applications
Retrieve in real-time current status of IA
21
Filing an international application
22
Filing an international application
23
24
Reproductions
DM/087 677 DM/087 809
DM/087 877
DM/087 876
25
Filing an international application
26
Filing an international application
27
Priority Documents
Republic of Korea
• Priority documents may be attached to the IA at the time of filing.
United States of America
Japan
• Original priority documents have to be sent directly to the JPO through a local agent within three months of publication of the IR.
• Original priority documents have to be sent directly to the USPTO at the latest before “the date the issue fee is paid”.
28
29
Filing an international application
30
31
32
E-Filing Communications
33
34
Hague Express Database
35
Global Design Database
36
Grounds of refusals by KIPO (from May 13th, 2015 to May 13th, 2016)
Source: Internal (unofficial) statistics
Number of refusals by KIPO
681 designs (215 international registrations)
Main grounds of refusals 1. Insufficient disclosure 447 designs 2. No indication of a creator 120 designs 3. Missing or wrong indication of related design 176 designs 4. Broad indication of product 21 designs
0
50
100
150
200
250
300
350
400
450
Insufficient disclosure
No indication of creator
Missing or wrong related design
information
Ambiguous/broad indication of
product
37
Designations 1013, grants of protection 299, refusals 264 (Criteria: date inscribed in the
International Register)
0
200
400
600
800
1000
1200
May Jun Jul Aug Sept Oct Nov Dec Jan Feb Mar Apr May Jun
Number of KR designations in international registrations, compared with total recorded Grants of protection and refusals, May 2015 to June 2016
Total designations Total recorded SGP Total rec. refusals
38
Grounds of refusals by JPO (from May 13th, 2015 to May 13th, 2016)
Source: Internal (unofficial) statistics
Number of refusals by JPO
41 designs
(27 international registrations)
Main grounds of refusals 1. Lack of novelty 19 designs 2. Insufficient disclosure 15 designs 3. Ambiguous/broad indication of product 10 designs 4. Others 1 design
0
2
4
6
8
10
12
14
16
18
20
Lack of novelty Insufficient disclosure
Ambiguous/broad indication of
product
Unity of design issue
Others
39
Designations 957, grants of protection 40, refusals 207 (Criteria: date inscribed in the
International Register)
0
200
400
600
800
1000
1200
May Jun Jul Aug Sept Oct Nov Dec Jan Feb Mar Apr May Jun
Number of JP designations in international registrations, compared with recorded Grants of protection and refusals, May 2015 to June 2016
Total designations Total recorded SGP Total rec. refusals
40
Grounds of refusals by USPTO (from May 13th, 2015 to May 13th, 2016 )
Source: Internal (unofficial) statistics
Number of refusals by USPTO
38 designs (20 international registrations)
Main grounds of refusals 1. Unity of design issue 27 designs 2. Insufficient disclosure 10 designs 3. Other grounds 8 designs 4. Ambiguous/broad indication of product 1 design
0
2
4
6
8
10
12
14
16
18
20
Unity of design issue
Insufficient disclosure
Other grounds Ambiguous/broad indication of
product
41
Designations 1586, grants of protection 1, refusals 99 (Criteria: date inscribed in the
International Register)
0
200
400
600
800
1000
1200
1400
1600
1800
May Jun Jul Aug Sept Oct Nov Dec Jan Feb Mar Apr May Jun
Number of US designations in international registrations, compared with recorded Grants of protection and refusals, May 2015 to June 2016
Total designations Total recorded SGP Total rec. refusals