When to Walk in Wooden Shoes: Making Sense of the Hague

Transcription

When to Walk in Wooden Shoes:
Making Sense of the Hague Agreement
Brent M. Dougal, of Knobbe Martens & Mark A. Charles of The Procter & Gamble Co.
Presentation Overview
• Part one: Overview of the Hague
Agreement
• Part two: Real-World Walkthrough
© 2015 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
2
Part One: Overview of the Hague
Agreement
©2015
Knobbe,
Martens,
& Bear,
LLP
all rights reserved.
©2012 Knobbe
Martens,
Olson &Olson
Bear, LLP
all rights
reserved.
3
What is the Hague Agreement?
• Design Patent Treaty Administered by the World
Intellectual Property Office (WIPO)
• Seek design patent protection in multiple countries
with a single application
– (Like a PCT for utility patent applications)
• Goal to provide a simplified design application filing
procedure
4
What is the Hague Agreement?
• Design Patent Treaty Administered by the World
Intellectual Property Office (WIPO)
• Seek design patent protection in multiple countries
with a single application
– (Like a PCT for utility patent applications)
• Goal to provide a simplified design application filing
procedure
• U.S. joins May 13, 2015
5
Multi-National Coverage
• Access to 78 countries
Direct Access
Intergovernmental Orgs.
– Japan
– Singapore
– European Union
– Korea
– Switzerland
– African IP Organization
– Norway
– U.S.
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Multi-National Coverage
• Access to 78 countries
Direct Access
Intergovernmental Orgs.
– Japan
– Singapore
– European Union
– Korea
– Switzerland
– African IP Organization
– Norway
– U.S.
• Notable Non-Members:
– Australia, Canada, China, India, Mexico, Russia
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Hague Application Process
• File design application with either the applicant’s
home IP office or with WIPO
• Designate countries to enter
• Application – Mandatory Contents
– Applicant name, figures, indication of product, No. of designs
• Application – Mandatory Contents Country Specific
– For U.S., a claim, inventors, oath/declaration
• Fees
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Basic Timeline
1) Hague Filing
& Formalities
Review
2) Publication
3) National
Phase
0-30 mo.
USPTO WIPO
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Timeline – Entering the U.S.
1) Hague Filing
& Formalities
Review
2) Publication
3) National
Phase
0-6 mo.
USPTO WIPO
U.S.
10
Timeline – Most Likely for U.S. Applicants
1) U.S. Design 2) Hague Filing
Priority Filing & Formalities
Review
6 mo.
3) Publication
4) National
Phase
0-24 mo.
U.S.
WIPO
11
Timeline – Foreign Originating Entering the U.S.
AKA Reminder to Educate your Clients and Foreign Associates
1) Foreign
2) Hague Filing
Design
& Formalities
Priority Filing Review
6 mo.
3) Publication
4) National
Phase
5) 1st OA
10-12 mo.
0 mo.
U.S.
WIPO
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Significant Changes for U.S. Applications
• Increase in patent term from 14 to 15 years for all
design patent applications filed on or after May 13,
2015.
• Extra bonus: No longer required to file a petition or
pay fees to file color drawings in all design
applications.
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Limitations of Hague Design Filings
• Limited membership
– Many countries where US applicants file are not
members of the Treaty, including: Australia,
Canada, China, India, Mexico, Russia
• Same application is filed in every designated country
• Local rules unchanged
• Fees
– For each embodiment in most countries, Per word
of the description over 100 words, Per Figure
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Limitations of Hague Design Filings
• Getting country specific counsel after filing may be too
late (i.e., after the Office Action)
• No Continued Prosecution Applications (CPA)
• CON or DIV after Hague Application does not get
provisional rights based on parent
• Publication opens file history of
unpublished priority applications
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Benefits of Hague Design Filings
• Simplified process for filing for foreign protection
• Applicants may save time and money
– Use of foreign counsel may be reduced
– Ability to include up to 100 designs in the same
Locarno class can save or delay costs
– Annuity and Maintenance fees can go through
WIPO
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Benefits of Hague Design Filings
• Provisional rights arising after publication for Hague
Applications that designate the U.S.
• Ability to select publication timing
• Immediate publication to support cease and desist
letters
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Resources
• Filing Forms, information on various member
countries, and other details:
http://www.wipo.int/hague/en/
• WIPO Fee Calculator:
http://www.wipo.int/hague/en/fees/calculator.jsp
• Final Rules: https://federalregister.gov/a/2015-06397
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Part Two: Real World Redux:
Right or Wrong…it’s Complicated
Or
Hague - A Way to Publicize Competency
©2015
Knobbe,
Martens,
& Bear,
LLP
©2012 Knobbe
Martens,
Olson &Olson
Bear, LLP
all rights
reserved.
19
Case Study: Registration vs. Patent
Preliminary Matters
• Product Design location
• Attorney location
• Foreign Filing License Requirement
• Recognition of various local rules regarding design
• Hague does NOT harmonize design practice
• Inventorship/Creator
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• Eukanuba®
• Premium Tier
• Unique Color Scheme
• New Excel Branding
• Chevron elements
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• Key Question: Is this a useful registration?
• Consider Competitive Landscape
– Copying of aesthetic
– Tradedress devaluation
– Costs of litigation
– Costs of filing
– “Blinking first”
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Case Study: Trademark
• Metamucil®
• Consistent Color Scheme
• Branding has evolved
• Consistent 3D Packaging
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Case Study: Trademarks
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• European Community Trademark Requirement
- May consist of any sign capable of being represented
graphically, particularly words, including personal
names, designs, letters, numerals, the shape of goods
or of their packaging
- 3D products/2D representations of packs
• Offers the potential for additional rights
• May offer superior rights over a weak trademark
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• Possible conflict with Trademark practice
- May be used to help acquire distinctiveness by
discouraging third parties
- Depending on the region, may also be used against
the rights holder – essentially double dipping
- Know your geography
• Layering protections require significant strategy work
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Case Study: Copyright - Publicity
• Pampers®
• Consistent Color Scheme
• Branding has evolved
• Consistent 3D Packaging
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Case Study: Right of Publicity
• Types of use, geography, length of use
• Contract terms important to filing patterns
• Consider securing broad use for any talent
• Understand the ownership of works by employees
• Know your geography
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Case Study: Color
• Olay®
• Multicolor product form
• Consistent Branding
• Evolving 3D Packaging
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Case Study: Color
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Case Study: Color
608.0
2
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Case Study: Color
• Color rules are involved
• Different regions have different requirements
• Not harmonized
• Not always fixable
• Know your geography
40
Questions?
©2015
Knobbe,
Martens,
& Bear,
LLP
©2012 Knobbe
Martens,
Olson &Olson
Bear, LLP
all rights
reserved.
41

When to Walk in Wooden Shoes: Making Sense of the Hague

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