Hague International Design Application

Overview of the Hague International Design Application

What Is a Hague International Design Application?

　The Hague International Application is an international design application and registration system that allows you to file a single application with the WIPO International Bureau or the Japan Patent Office and obtain the same effect as if you had filed separate applications in each designated country. While it is possible to file a Hague application with the Japan Patent Office, currently about 80% of applications are filed using E-filing, which allows for online submission via the Internet to the WIPO International Bureau. Since there is no need to appoint a local agent when filing, costs can be kept lower.

What is a Direct Application?

　A direct application refers to filing a foreign design application with local agents in each country through a Japanese patent attorney or similar professional. A local agent is appointed for each country, and the application is prepared in the language of that country using its specific filing format. In particular, since the rules for drawing design drawings vary by country, design drawings compliant with each country’s requirements must be prepared. The primary advantage of a direct application is that the local agent can review and revise the design drawings.

List of States Parties to the Geneva Conventions (Hague)

There are currently 75 contracting states to the Hague Agreement

　There are currently 75 contracting states to the Hague Agreement. Previously, because there were few Hague contracting states, the only way to obtain design rights abroad was to file a design application directly with the desired country. However, with Japan’s accession to the Hague Agreement, it has become easier and more cost-effective to file foreign design applications compared to the past.

　Since "Taiwan" is not currently a contracting party to the Hague Agreement, it is not possible to file a Hague international design application there. It is necessary to file a foreign design application directly with Taiwan.

(As of June 2022)

"Japan" is also eligible for Hague International Design Applications

It is also possible to designate Japan in a Hague International Design Application. In such cases, if a claim of priority under the Paris Convention is made, or if a claim for an exception to the loss of novelty is made, the relevant “certificates” must be submitted to the Japan Patent Office within the following time periods.

1. Priority ................... Within 3 months from the filing date or the date of international publication　
2. Exceptions to loss of novelty: Within 30 days of filing or international publication

Comparison of Direct Applications and Hague International Design Applications

Local Agent

　With a Hague International Design Application, you can file a foreign design application without appointing a local representative. However, if an Office Action (notification of refusal) is issued, you must appoint a local representative.

Application Formats and Drawing Rules

　The application must be prepared in the local language and in accordance with local filing requirements. Drawings must be prepared in accordance with the drawing rules of each country. Since drawing rules may differ from those in Japan depending on the country, it is necessary to prepare drawings that comply with the specific drawing rules of that country.

Renewal

　Procedures such as renewal of rights can be handled collectively through the WIPO International Bureau. There is no need to engage a local agent in each country.

List of Exceptions to the Loss of Novelty in Design

Exceptions to Loss of Novelty by Country

In Japan, it is now sufficient to file an application within one year of the loss of novelty, but in some countries, a design application must be filed within six months.

Requirement for Submission of Certificates

While some countries, such as the United States, do not require a certificate, others, such as Japan, do require one.

Limits on Actions

In Japan, the exception to loss of novelty applies to acts attributable to the design registrant, such as sales, social media posts, and exhibition entries. However, some countries have stricter regulations, such as limiting the exception to entries in exhibitions certified by the government of that country.

List of Countries with and without Substantive Examination

Countries Without Substantive Examination

　While substantive examination is standard practice for Japanese designs, some countries adopt a system where only formalities are examined, and registration is granted without substantive examination. Below is a summary of countries that conduct substantive examination and those that do not.