How do you file foreign design patent applications?

If you are considering foreign design patents, first check to make sure your invention is eligible for foreign patent protection. Unlike the US, most foreign countries require that you secure a patent priority date before publicly disclosing your invention. That means that if you had publicly disclosed your design prior to your earliest patent filing date for that design, you might not be eligible for foreign patent proection.

What is the deadline for filing foreign design patent applications?

The deadline for filing a foreign design patent application that will get the benefit of your earlier US filing date is 6 months. If over 6 months have already passed since your US filing date, you might still be able to file foreign design applications without the priority claim as long as you have not made any public disclosures.

What is the Hague Agreement for international design patents?

On May 13, 2015, the U.S. became a participant in the Hague Agreement on international registration of design patents. U.S. applicants can now file a single design patent application and seek protection in multiple member countries of the Hague Union, similar to the streamlined patent protection afforded by the Patent Cooperation Treaty (PCT) for utility patent applications and that offered by the Madrid Protocol for trademark applications.. Applicants no longer need to file individual design patent applications in each desired (member) foreign country.

For U.S. design patent applications filed on or after May 13, 2015, the term has been extended from 14 to 15 years from the issue date even if the Hague process is not used. International design patent applications under the Hague system will be published generally 6 months after the filing date. This provides applicants with potential provisional rights that can predate the grant date, but only for a single embodiment.

The potential cost savings for a Hague application can be significant, as fees for individual foreign counsel may be bypassed at least for the initial filing. U.S. applicants will have the option to file electronically through the USPTO site. However, the substantive examination of a design patent application will still be subject to the particular rules and rejections of each member country or region. So, for example, requirements concerning the number of views or the formatting of the drawings (e.g., shading) may differ.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
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