Oct 14, 2015

Registration of Designs - International Issues

Designers who want to register their designs on an international level, in countries such as, for example; Japan, Korea and the US, will be disappointed to learn that it is not as straightforward as they may think especially if they have experience of the relatively simple European registration process.

Europe

To register a design within Europe the Hague System for the International Registration of Industrial Designs allows you to simultaneously apply for a design in many different countries or territories, through a single application to the World Intellectual Property Organisation ("WIPO"). An application under the Hague System will cover the UK if the EU is selected. Once a design is filed in the home jurisdiction, an international application is made claiming priority within six months of the date of the application. However, WIPO does not provide for filing copies of the priority document. As none of the designated states or offices are 'examining offices', this does not matter as they won't actually look at the priority document anyway. An applicant will only need to produce a copy of the priority document in the case of litigation.

South Korea

Korea, on the other hand, takes design registration very seriously, particularly in the case of international design applications. The authorities must see a certified copy of the priority document in every case. It also seems that the date by which the priority document should be sent is decided by the International Publication date and not the date set by the Korean Intellectual Property Office ("KIPO"). This means that the applicant is left to monitor this date themselves in order to avoid missing the deadline, they may also have to appoint an attorney and file the priority document in every case. At this time it does not appear that either WIPO or KIPO consider it their responsibility to inform applicants when this deadline is due, therefore many applicants may miss out on claiming priority.  The Japan Patent Office also currently uses this method, but it is not known whether the United States Patent and Trademark Office operates in the same way.

This confusion means it is essential that reform of the system takes place sooner rather than later.  To this end WIPO must permit the filing of a priority document in the International Phase.  It should then forward a copy (or allow electronic access) to any office who wants it, whilst national offices extend mutual electronic access to their design priority documents.  They have effectively dispensed with this requirement in the field of patents some years ago which has forced applicants to use local attorneys in each state, on every application, who then have to file something which offices have little use for and have the means to exchange directly.  This unneccessarily increases the costs of an international design filing.

This could have been dealt with in the prospective Design Harmonisation Treaty, but it is understood that Brazil scuppered those plans and other countries are now seeking to impose their own unrelated demands.

in: Designs, EU/International, News

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