Picture This Throughout the World - International Design Registration. Episode 85
- Adam Diament
- Mar 20
- 4 min read
The Reality of International Patent Protection
Wouldn’t it be wonderful if you could file a patent application in one place, have it examined by one examiner, and receive worldwide patent protection—a world patent? That would be ideal, but unfortunately, that’s not how patent systems work.
Each country has its own patent system, meaning you must have a separate patent for each country where you want protection. Some regions offer regional patents covering multiple countries, but in general, one patent applies to one country. However, some procedures can simplify the process, reducing the redundancy of filing from scratch in each country. I previously discussed the Patent Cooperation Treaty (PCT), which allows applicants to file a single international application that gets examined once before moving into the national phases in different countries. However, PCT applications only apply to utility patents, which cover inventions with functional uses. They do not apply to design patents.
The International Design Registration System (IDR)
Fortunately, a similar process exists for design patents. This process is called the International Design Registration (IDR) system, also known as the Hague Agreement. If you want protection for 3D objects, 2D patterns, fonts, or icons in multiple countries, you may want to consider using the IDR system.
Currently, around 70 countries participate in this agreement. If you're interested in obtaining international design protection, you should verify whether the countries you need protection in are included. The IDR system is closer to a true worldwide patent than the PCT system, as it often requires less interaction with individual country examiners.
The United States only joined this treaty in 2015, making it relatively new for U.S. applicants. Before this, the process of obtaining international design protection was much more complex.
Traditional Design Patent Filing vs. IDR
Before the IDR system, you would typically file a U.S. design patent application and then, within six months, file corresponding applications in other countries where you wanted protection. This six-month deadline is critical because, unlike utility patents that allow 12 months to claim priority for foreign filings, design patents typically have only six months to do so.
When using the Hague Agreement, you file a single international design application, which is examined according to a single set of formal requirements. This eliminates the need to modify your application to fit the specific requirements of different countries.
How to File an International Design Application
The World Intellectual Property Organization (WIPO) administers the IDR system, and they publish a 128-page guide on how to apply. You could read the entire document or hire an attorney who specializes in international design filings to handle it for you.
Filing can be done through various national offices, including the U.S. Patent and Trademark Office (USPTO), but the recommended route for U.S. applicants is to file through the USPTO. The application includes selecting the countries where you want protection. Each country has different fees, and the costs vary significantly. Some countries, like Hungary, may have fees as low as $70, while others, such as Japan, may cost over $600.
Examination Process by Country Category
Countries fall into three categories regarding how they handle international design applications:
Level 1 Countries: These do not examine the design at all and automatically register it.
Level 2 Countries: These perform limited examination, mainly ensuring the design does not include prohibited content such as state flags or offensive material.
Level 3 Countries: These conduct a full examination to ensure the design is novel and non-obvious. The United States falls into this category.
Benefits of Using IDR
Once you file an international design application, WIPO notifies all designated countries. If no objections are raised, the design is registered, providing protection for up to 15 years. Most countries require renewal fees at the five-year and ten-year marks, though in the U.S., no renewal fees are required.
Some advantages of using IDR include:
Cost Savings: Filing a single international design application is significantly cheaper than filing separate applications in multiple countries. For example, filing separately in six Level 2 countries could cost around $45,000, whereas an IDR application covering the same territories might only cost about $1,500.
Simplified Examination: Unlike direct national filings, IDR applications are reviewed once for format compliance, and individual countries cannot reject an application based on formatting inconsistencies.
Multiple Designs in One Application: The IDR allows up to 100 related designs in a single application, far more than what is typically allowed under U.S. design patent rules.
Consistency in Drawings: U.S. design applications require specific shading rules, while other countries, such as South Korea, prohibit shading. The IDR ensures uniform acceptance of drawings across multiple jurisdictions, eliminating the need to modify drawings for each country’s specific rules.
Disadvantages of IDR
The main drawback is cost when filing in only one or two countries, as it may be cheaper to file directly with each country rather than through WIPO. Additionally, while IDR simplifies the filing process, rejected applications must still be dealt with individually in each rejecting country.
Conclusion
International design registration offers significant advantages for those seeking broad protection. However, nuances in design laws and national examination procedures require careful planning. The IDR system simplifies and reduces the cost of obtaining design protection in multiple jurisdictions while providing a more unified filing system.
I’m Adam Diament, and until next time, keep on inventing.
