Spreading the protection blanket in Mexico

01-10-2018

Alejandro Moreno Hernández

Spreading the protection blanket in Mexico

Green Apple Studio / iStockphoto.com

Mexico would be well suited to joining the Hague Agreement on designs, which is a practical and cost-effective solution for international IP owners, says Alejandro Moreno Hernández of Uhthoff, Gómez Vega & Uhthoff.

The Hague Agreement establishes a system where a single design application gives access to protection in 69 contracting parties covering 81 countries through the international bureau of the World Intellectual Property Organization (WIPO).

The agreement provides a practical and cost-effective business solution for registering a single international design application rather than multiple applications in different national offices.

Who can apply?

A legal entity or person having a connection with a contracting party can apply for a single design application either through establishment, domicile, nationality, or habitual residence.

Currently, there are two acts of the Hague Agreement in operation: the Geneva Act (1999) and the Hague Act (1960). Filing a single design application through habitual residence is applicable only for those contracting parties under the 1999 act, which is most of the parties.

The legal entity or person can include up to 100 designs in a single international design application provided they are all in same Locarno class (under the Locarno classification for designs). The design application must contain at least a reproduction of the design and the designation of at least one contracting party.

Deferment

After filing a design application, and assuming it complies with all the requirements of a formal examination, the international bureau issues a publication of the corresponding registration in an international designs bulletin; this publication can be deferred for a period of 12 to 30 months from the filing date or, where priority is claimed, from the priority date of the application concerned depending on the act governing the designated party.

It may be suitable to defer a design publication because in some circumstances it is important to keep a design confidential before launch or keep it as ‘secret prior art’. Taking into account that not all the countries are members of the agreement, there may also be a necessity for deferment in order to bring the design applications of non-member countries into line with the member jurisdictions as a possible intellectual property strategy.

"Designs may be separated into two main groups: (i) industrial models consisting of three-dimensional features; and (ii) industrial drawings directed to bi-dimensional features."

It is worth noting that once a design application is published, the office of each designated contracting party applies its criteria for reproductions of the design and carries out a substantive examination based on the local laws to determine registration or refusal of an application. Therefore, even though the Hague Agreement is an international treaty, registration or refusal will depend on jurisdiction to jurisdiction due to the legislation from each party.

What does a design cover?

Designs may be separated into two main groups: (i) industrial models consisting of three-dimensional features; and (ii) industrial drawings directed to bi-dimensional features as well as lines and colours, both covering the ornamental or aesthetic appearance of an article or product.

The articles include, but are not limited to, fabrics, jewels, toys, electrical devices, clothes, and graphic user interfaces (GUIs).

GUIs have been a boom within different jurisdictions, for members and non-members of the Hague Agreement. Although some jurisdictions allow computer programs in patent applications, others prohibit them and in such circumstances applicants may select a type of protection under copyright and/or design law containing GUIs. For example, mobile device or smartphone companies protect not only devices or apparatus with design applications, but also the multiple GUIs displayed on the screen.

Hence, filing a single design application with the Hague Agreement is a very practical and cost-effective strategy.

Updates

On March 13, 2018, the UK deposited its instrument of ratification, with membership coming into effect from June 13.

On July 23, the government of Canada deposited its instrument of accession to the Geneva Act of the agreement; its membership will come into effect from November 5.

In summary, the Hague Agreement will continue to have requests for accession by new members. Taking into account that Mexico incorporates international norms in its patent prosecution, it could be one of the new members incorporating the Hague Agreement within a short period of time.

 

Alejandro Moreno Hernández is a patent attorney at Uhthoff, Gómez Vega & Uhthoff. He has more than five years’ experience in IP matters, including patent application drafting and filing, novelty and patent landscape searching, infringement and validity advice. He can be contacted at: amoreno@uhthoff.com

Alejandro Moreno Hernández, Uhthoff Gómez Vega & Uhthoff, Hague Agreement, design, design application, Geneva Act

WIPR