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New options for filing industrial designs

January 16, 2019

Industrial designs, or design patents in the United States, provide protection for visual design of an item. Industrial designs can, therefore, serve as a valuable form of IP protection and may allow protection of aesthetic or “non-functional” aspects of a product that distinguish it in the marketplace from those of competitors.

An IP strategy for protecting a given product may involve a combination of utility and design patents. Because of the worldwide nature of business, in many cases it is desirable to obtain these rights in more than one jurisdiction. When it comes to pursuing utility patent protection in more than one jurisdiction, Patent Cooperation Treaty (PCT) applications have long been a popular option for obtaining a filing date. However, for Canadians seeking industrial design protection in multiple jurisdictions, historically there has been no alternative to filing separate applications in each of those jurisdictions. This can not only be cumbersome, but can also represent a significant cost to applicants due to the need to address the formal requirements of each jurisdiction in preparing all of those applications. An alternative to this cumbersome process arrived in November 2018 when Canada acceded to the Hague Agreement.

Under the Hague Agreement, a single design application can be filed electronically with the World Intellectual Property Organization (WIPO) naming the various jurisdictions in which an applicant would like to file. The list of possible jurisdictions is fairly broad, including Canada, the United States, Mexico and most if not all countries in Europe. Many other jurisdictions, including China, are expected to join Hague soon.

After a Hague design application is filed, WIPO will centrally examine for compliance with formal grounds including inspection of the drawings. If the application is compliant, it will then be published. Upon publication and without any additional steps, jurisdictions named in the application will proceed with substantive examination of the design if provided for under application national design legislation. Notably, no local counsel need be retained in a given jurisdiction unless there is a need to address an objection arising from substantive examination there. Furthermore, a strict 12-month timeline for any refusals applies under Hague: if an application languishes for longer in any queue awaiting substantive examination then the design will automatically proceed to registration.

Because of its strict timelines and the potential to avoid hiring counsel in multiple jurisdictions, the Hague system may provide substantial cost savings as compared to Convention design filings. The benefits of Hague also continue after filing: renewals of Hague designs are performed through WIPO allowing electronic renewals of designs across jurisdictions and a payment of a single combined renewal fee.

All told, Canada joining Hague offers real benefits to Canadians and Canadian companies looking to pursue design protection in multiple jurisdictions. If you would like to proceed with a Hague filing or learn more about your options for design protection, we would be happy to assist.