Getting to know the Hague Agreement

1. NAPP Annual Meeting Denver July 11, 2015 Carl Oppedahl Oppedahl Patent Law Firm LLC www.oppedahl.com Getting to know the Hague Agreement

2. Format and disclaimer • Feel free to ask questions as they arise • This program does not make you a client of Oppedahl Patent Law Firm LLC • Please do not forget to complete the program evaluation questionnaire

3. Recent reminders of the importance of design protection • Years ago there were many US patent practitioners who questioned the value and importance of US design patents • Now the importance of design protection cannot be denied or ignored • The practitioner who fails to bring up design patent protection to a client does so at his or her peril

4. Clients will have questions about Hague • Clients will have questions about Hague and you need to be able to answer them • If the client already understands PCT or Madrid Protocol, you can compare Hague with what they already understand

5. Apple v. Samsung • Jury award of about one billion dollars • More than half of that award was attributable to design patent damages • Each design patent obtained by Apple probably cost one-fifth to one-tenth the cost of a utility patent • Apple probably now feels it obtained a substantial return on its investment in design patents

6. US has just joined Hague Agreement • US formally become a member of the Hague Agreement on May 13, 2015 • We already know about PCT and the Madrid Protocol • Let's compare PCT and Madrid with Hague so that we can learn more about Hague • See the handout which has a summary table

7. Subject matter and classification system • PCT is directed to utility patent subject matter • International Patent Classification (IPC) system • Madrid Protocol is directed to trademarks • Nice system of international trademark classes • Hague Agreement is directed to industrial designs (in the US this means design patents) • Locarno system of classification

8. Online databases • PCT – Patentscope, ePCT, PAIR • Madrid – Romarin, Madrid Portfolio Manager, Madrid Electronic Alert, Madrid Real-time Status, TSDR • Hague – Hague Express Database, PAIR You will need to learn how to use these databases

9. Priority period • PCT – 12 months • Restoration of Priority available depending on the Designated Office • Madrid – 6 months • ROP not available • Hague – 6 months • ROP not available

10. “hairpin turn” permitted? Can you use the Treaty to get back into your own country? • PCT – yes and I suggest this is a Best Practice • Madrid – no you cannot • Hague – yes

11. Previous filing required? Central attack? • With PCT, there is no requirement that the applicant have made a previous filing • no “central attack” possible • With Madrid Protocol, it is an express requirement that the applicant have made a previous filing (“Basic filing”) • “central attack” is possible • With Hague, there is no requirement that the applicant have made a previous filing • no “central attack” possible

12. Fees to Designated Offices • PCT – you can postpone such fees until almost 30 months after priority • Madrid – you need to pay the DO fees up front (except you can do Subsequent Designations) • Hague – you need to pay the DO fees up front

13. How long you can postpone decisions about Designated Offices • PCT – you can postpone such decisions until almost 30 months after priority • Madrid – you need to pick your DOs up front (except you can do Subsequent Designations even years or decades later) • Hague – you need to pick your DOs up front

14. Have to hire local counsel? • With PCT there is no avoiding having to hire local counsel at the time of national-phase entry around the world • With Madrid you might get lucky and not have to hire local counsel • With Hague you might get lucky and not have to hire local counsel

15. Timing of Publication • PCT – you can accelerate the IB's publication but cannot postpone it • Madrid – no you cannot accelerate or postpone the IB's publication • Hague – depending on the Offices you have designated, you may be able to accelerate or postpone the IB's publication

16. No news is good news? • With PCT, no news is bad news • Unless you are given a patent in a particular Office, you don't have a patent in that Office • With Madrid, no news is good news • If a particular Office fails to say within 18 months that you don't have protection, then you have protection • With Hague, in the US, no news means you don't have design protection

17. Number of contracting States • PCT – 148 • includes US, EPO, Japan, Korea, China • Madrid – 93 • includes US, OHIM, Japan, Korea, China • Hague – 64 • includes US, OHIM, Japan, Korea, and soon, China

19. One-stop shopping for renewals? • PCT – no • Madrid – yes • Hague – yes

20. One-stop shopping for address changes and assignments? • PCT – yes via Rule 92bis if within 30 months • Madrid – yes • Hague – yes Note that with Madrid and Hague, it can be a big problem if the would-be assignee is not a citizen or domiciliary or establishee of a contracting State

21. Advantages of the Hague system • File a single application instead of multiple applications around the world • Maybe you will “get lucky” and not have to hire foreign counsel • One-stop shopping for address changes • One-stop shopping for renewals • One-stop shopping for changes of ownership • No need to hire foreign counsel to carry out address changes, renewals, or changes of ownership

22. Advantages of Hague system • No need to file documentation in various languages • No need to keep track of various national procedures • No need to keep a watch on varying renewal dates in various offices • No need to deal with various currencies in various offices

23. Up to 100 designs • So long as they are all in the same Locarno class

24. Korea, US, Japan, China did not yet belong to Hague as of these dates These numbers are likely to Increase greatly in coming years

26. Hague can be inbound or outbound • Today we will focus on the outbound aspects of Hague

27. Filing routes • Legacy route • File first in the US, then within six months file in Paris Convention countries • New routes as of May 13, 2015 • File first in the US, then within six months file a Hague application designating foreign offices, and maybe also file in other Paris Convention countries • File a Hague application designating the US as well as foreign offices, and within six months maybe also file in other Paris Convention countries

28. OFFICE 1 APPLICANT OFFICE 2 OFFICE 3 OFFICE 1 APPLICANT InternationalBureau OFFICE 2 OFFICE 3 National/Regional Route International Route

29. Foreign filing license • Don't forget that if your invention was made in the US, then you need a Foreign Filing License to file in countries outside of the US • If you file first in the US, then you will likely have your FFL before six months have passed • This is what has always permitted you to file Paris Convention foreign design filings within six months • This is what will permit you to file a Hague application directly at the International Bureau within six months

30. No foreign filing license? • For a particular client it may be preferable to do a “Hague first” filing • In other words file a Hague application that is not preceded by any domestic US design application • If the invention was made in the US ... • then one way to do the “Hague first” filing is to file in the USPTO as the “office of indirect filing” • another way is to obtain a faxed FFL and then file at the IB

31. Picking the designations • When you do a Hague application, you have to pick your designations up front • Typical choices might include: • US • EM (European Union Registered Community Design, filed in OHIM) • JP (Japan) • KR (South Korea) • soon, CN (China)

32. Registered Community Design

33. Designating the US? Note that if you take a hairpin turn to the US, that application is not able to have a CPA filed If you are going to want to do a CPA, don't use a US designation, instead, do a US domestic filing Of course you can still file continuations and divisionals even if you do a hairpin turn

34. Filing at the IB – Validations are thorough Fees may be paid accurately and immediately No transmittal fee required Might be only option if one of the applicants lacks a US connection Reduces delays and risks of problems at USPTO But of course you might need an FFL Picking a place to file

35. Filing at the USPTO – Last-minute filer will get a few extra hours to file No need to worry about FFL Reproductions can be PDF if desired But each applicant is required to have a US connection Picking a place to file

36. If filing in IB • Applicant must satisfy one of the following requirements • Citizen of ... • Domiciliary of … • Habitual resident of … • Real and effective industrial or business establishee of … • … a contacting party (e.g. the US)

37. If filing in US • Each applicant must satisfy one of the following requirements • Citizen of ... • Domiciliary of … • Habitual resident of … • Real and effective industrial or business establishee of … • … the US • And in addition, the US must be the “contracting party” for each applicant

38. How is a “contracting party” different from citizen, domiciliary etc.? • The applicant must indicate its “contracting party” in the international design application • For a filing at USPTO, the application had better list the US as the “contracting party” • Failure to get this right is fatal to a would-be Hague filing at the USPTO • There is no savings provision for such a choice-of-office failure in the Hague system as there is in the PCT system

39. Filing other than electronically in USPTO? • Rules permit hand delivery or mail delivery • Neither approach is a Best Practice • Per-page fees for paper filings • USPTO rules do not permit fax filing

40. Filing other than electronically in IB? • Rules permit hand delivery or mail delivery or fax delivery • None of these approaches is a Best Practice • Per-page fees for paper filings

41. Best Practice is to do a complete practice filing in the IB filing system, making careful notes of each validation result Only after this, should you complete Form DM/1 and upload it to EFS-Web You will also need drawings Filing in EFS-Web

43. If you use the USPTO as your office of indirect filing, you must pay the $120 transmittal fee to the USPTO How about all of the other fees? Fee to the IB Fees to the Designated Offices Paying fees

44. Fee to the IB Fees to the Designated Offices You can try to pay these fees to the USPTO You will be paying US dollars What you need to pay is Swiss Francs You will almost certainly not guess correctly as to how many US dollars to pay to add up to some particular number of Swiss Francs You will be over or short How about all of the other fees?

45. Fee to the IB Fees to the Designated Offices Over or short? If you are over, then you don't get the extra money back If you are short, you will have to pay the deficiency to the IB in Swiss Francs It's better to suck it up and just pay all of the Swiss Francs directly to the IB How about all of the other fees?

46. What happens next? • The IB examines the design application • IB's examination is limited to formal matters • The IB grants the International Registration • The IB transmits the IR to each designated office • The IB publishes the design application

47. In the designated offices • Many DOs are “registration” offices • Such a DO will simply grant the registration • No news is good news

48. In the designated offices • Some DOs carry out substantive examination • Such a DO might mail an Office Action • No news is good news (in most DOs) • You might have to hire local counsel to deal with the Office Action

49. Renewals • If any renewals are needed, you attend to them by means of direct payment at the IB • All in one currency • All in one place This is very convenient!

50. Strategic choices • Should you include 100 designs? • Maybe “yes” if the sole protection sought is from OHIM • Maybe “no” if protection is desired in countries that impose restriction requirements