By Dr. Jean-Fançois Joly, Ph.D. and André Merizzi
On November 5, 2018, Canada acceded to the Hague Agreement, which is an international procedural agreement for the centralized acquisition and maintenance of industrial design rights. Canadians can now pursue a Hague International Registration, in which a single IP title for Industrial Designs, also commonly referred to as “Design Patents”, is centrally and flexibly managed under the World Intellectual Property Organization (WIPO). Likewise, foreign applicants may now designate Canada as an option when filing through the Hague system.
An international application under the Hague system can have certain advantages such as:
- An International application may be filed once (one application);
- A hub from which a single application to be pursued in many countries can be monitored and managed;
- A single payment for all designated countries and in one currency;
- Applications filed under the Hague system may also contain up to a hundred different designs, as long as they are all under a single design class; contain an unlimited number of representations; and include photographs, drawings, CAD files (in black and white or in colour).
That being said, as unique national rules and requirements still apply in different jurisdictions, seeking national representation even before international filing may be prudent to ensure proper national registration in jurisdictions of interest. Notably, US-specific requirements should be taken into account at filing, and subsequently when dealing with the USPTO, as is the case with a number of other jurisdictions. Accordingly, while foreign filers may now prosecute their own Hague applications in Canada (and vice versa for Canadians filing abroad), applicants may still wish to retain local national counsel to ensure compliance with local practices, and consider national requirements at the outset, for example, to ensure sufficient and adequate disclosure and design representations.
Finally, while some notable jurisdictions are now available to Canadian applicants through the Hague system, such as the U.S., Japan, the European Union, the U.K. and the Republic of Korea, a number of other key jurisdictions must still be pursued directly if protection is to be sought in those jurisdictions.
In light of these changes, MRF can now add the Hague System as yet another tool to service their clients, local and foreign, in the development of an effective design protection strategy in Canada, and abroad. Have any questions… we’d be happy to help!