Based on the Hague Agreement, you may achieve design protection in multiple countries by means of a single design patent application.
1. What is an international design patent?
The Hague System for the International Registration of Industrial Designs provides an option for registering a design in countries which are member of the Hague Agreement. Thereby, the applicant may obtain design protection in one or several countries. An international design patent produces the same effects in each of the designated countries, as if the design had been registered directly at each national office, unless protection is refused by the national office of that country.
An international design patent applications must be filed directly at the WIPO in English or French. Payments have to be made in Swiss Francs.
Protection of an international design can be obtained only in those countries which have acceded to the Hague Agreement. Currently, there are about 40 member states of the Hague Agreement (for details see the WIPO website). On filing of an international design patent, one or more countries, in which design protection shall become effective, have to be selected. If the application is accepted, the application is registered and published.
An international design registration is initially valid for 5 years. Thereafter, the international registration can be renewed for another 5 years for all designated states. Any further extension depends on the national law of each designated State. In Germany, the protection can be renewed up to a total of 25 years.
2. What can be registered as an international design patent?
Any two-dimensional or three-dimensional appearance of a product, or of a part of it, can be protected. A product can be any industrial or handicraft item, including packaging, equipment, graphic symbols and typographic characters and items that can be assembled into a complex product. A computer program is not considered as a product. The design of a product must not be based on the technical function or the purpose of use of a product. I.e., designs that are considered to be dictated exclusively by the technical function of a product cannot be protected.
A design can only be protected, when the design is new and has individual character.
A design shall be considered to be new if no identical design has been made available to the public. Please note that an own publication of the design up to 12 months before the filing date of the design application will not be considered in assessing novelty (grace period), so that the design is new despite of the own publication.
A design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public. The overall impression only needs to be slightly different from that of any existing design. A special creative achievement shall not be required.
The scope of the protection conferred by a design patent shall include any design which does not produce on the informed user a different overall impression.
Please feel free to contact us if you have any question about international design protection. Our European design patent attorneys in Munich will be pleased to advise you.
3. How do I register an international design patent?
International design applications must be filed directly at the WIPO in English or French. Payments have to be made in Swiss Francs.
4. What happens after filing the international design patent?
The examination of an international application by the WIPO limited to only formal requirements (such as the language, the designation of at least one Contracting party, etc.). The International Bureau does not examine any substantive grounds, such as novelty.
Each designated Contracting Party has the right to refuse, in its territory, the protection for an international registration. In case of a refusal, the national Office of a Contracting Party notifies the International Bureau of the refusal of the international registration within 6 or 12 months from the date of publication of the international registration in the International Designs Bulletin.
The International Bureau then records any refusal communicated by the Office, publishes it, and sends a copy of the notification of refusal to the holder of the international registration. The holder of the international registration may then request a review of, or appeal against the refusal in the designated Contracting Party concerned.
Please note that an international design will be registered even if the design is not new and has no individual character. In this case, however, the registration does not have any legal effect, but is only a pseudo registration from which no rights can be derived. The validity of the design is usually not assessed until litigation proceedings, cancellation proceedings or revocation proceedings take place. I.e. the holder of a design registration has to bare a significant risk that it turns out that the design is actually not valid.
Please feel free to contact us for any questions about international designs. Our German and European patent attorneys in Munich will be pleased to advise you.
5. How much does it cost to file an international design application?
This depends on the content of the application, the number of designs, illustrations and the total number of pages, etc.. Please contact us for an individual offer. Our European design attorneys in Munich look forward to hearing from you.