What about international applications?
In the industrial design context, protection must be obtained separately in each country of interest. For example, a Canadianindustrial design registration protects the design only in Canada. To protect the same design in the United States, a separate United States design patent is required.
There are a few strategies for obtaining design protection in multiple countries.
For example, most countries have signed the Paris Convention, which allows a design applicant to claim priority to an industrial design application filed within the previous six months. As a result, in most countries, it is sufficient to file within six months of the date on which the earliest application was filed, provided that the earliest application is itself filed before any public disclosure of thedesign anywhere in the world. A few countries are not members of the Paris Convention, and special consideration must be given to filing applications in such countries to avoid loss of design rights there.
Another option is to use the Hague System for the International Registration of Industrial Designs. The Hague System provides a simplified procedure enabling applicants to obtain design protection in multiple countries through a streamlined process. Canada, as well as many major industrial countries and regions, are members of the Hague System.
Filing under the Hague System requires filing a single international application through the World Intellectual Property Office. Applications in various countries are then filed by “designating” foreign member jurisdictions. In each of the designated foreign member countries, the application will be substantively reviewed for compliance with local laws.
One significant advantage of the Hague System is that administrative matters after registration (e.g., updating ownership of the design, paying maintenance fees) can usually be processed in a single procedural step across all designated countries. This greatly simplifies the management of industrial design portfolios.
Another advantage associated with the Hague System is that if there are no substantive objections raised by the designated states, there can be significant cost savings relative to filing individual national applications through local counsel.
One disadvantage of filing under the Hague System is that you are unable to defer the decision of which countries to file in. Instead, states are designated at the time of the international application. Additional designated states cannot be added to an existing international application.
Another disadvantage of filing under the Hague System is that several large markets, such as India and Australia, are not members. Consequently, separate regular national applications would need to be filed in such countries to obtain industrial design protection.
We invite you to speak to a member of our team if you are interested in pursuing protection through the Hague System.