Brief Report on a virtual meeting on the Hague Agreement held between the O/o CGPDTM and the USPTO

A virtual meeting on the USPTO’s Hague Agreement experience was held on October 30, 2024, from 5:30 to 6:30 PM (IST), with participants from both sides.

The Hague System's legal framework, including Articles 1-34, Common Regulations (Rules 1-37), and Administrative Instructions (Parts 101-902), was discussed. The delegate from USPTO initiated with explanation of two types of filings. In indirect filing, a design application is filed at the USPTO, transmitted to the International Bureau (IB), and then sent to the designated contracting party's office. In direct filing, the design application is filed directly at IB and forwarded to the contracting party.

The USPTO delegate highlighted key U.S. declarations under the Hague Agreement. A single claim is mandatory for U.S. designated applications, and publication deferment is not allowed. Each application must cover only one independent and distinct design, with patentable distinct designs requiring divisional applications. Ownership changes take effect in the U.S. only upon USPTO's receipt of necessary documents. Design protection lasts 15 years from patent grant, and an oath or declaration by all creators is required. The individual designation fee is split between filing and allowance stages, and the filing date depends on timely IB receipt. The refusal period extends to 12 months, and protection starts at publication, with full protection upon patent grant and fee payment. Applicants filing directly with the IB or USPTO must demonstrate a qualifying connection to a Hague Agreement Contracting Party.

The delegation also informed that filing directly with the IB offers advantages like no transmittal fee and faster processing, but U.S. applicants may need to opt for the indirect route if a foreign filing license is needed, with USPTO review. The USPTO has 12 months from publication to examine and communicate results of an International Design Application refusal. Official communications are received through WIPO, and responses must be filed with WIPO. Replies to refusals must be submitted directly to the office, not via the International Bureau, and subsequent communications from the Contracting Party are typically not sent through the International Bureau.

The USPTO clarified that the MPEP is an internal document for examiners and does not have legal standing in court. Regarding the docketing of international design applications, the USPTO explained that while the docketing system remains the same, a different code is used for Hague applications, reflecting their status and varying time requirements.

Way Forward:

The Office of CGPDTMs may consider the following takeaways from this virtual meeting:

1. Develop action plans leveraging USPTO’s experience with the Hague Agreement to address challenges in accession.
2. The Office may consider to form a working group to address IT and process streamlining issues.
3. Conduct further sessions with foreign IP offices for deeper insights into the Hague System.
4. Explore joint events to enhance bilateral cooperation in design protection.