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The UK to join The Hague Agreement

The Hague Agreement governs the international registration of industrial designs. It allows industrial designs to be protected in multiple countries or regions. An applicant may take advantage of the Agreement to file a single “international” design application with the International Bureau (IB) of the World Intellectual Property Office (WIPO).

For example, an applicant would file just one international design application (IDA), designating a selection of countries. The applicant pays the registration fee to WIPO specifically for those countries, and will include everything required by the Hague Agreement, as well as any additional requirements that are specific to the countries they have selected. Depending on the countries selected, there may be further processing, examination, or opposition periods for the designs. Renewal fees, however, are paid through WIPO (in most countries within 5 and 10 years).

This system allows for the filing of up to 100 different designs (provided they are all in the same Locarno class) in a single application. Rather than filing applications in every country individually, designers only need to deal with one application, one filing office, one language and, importantly, one set of filing fees – provided that all of the territories of commercial interest are members of the Agreement. The Agreement is somewhat limited in that not all countries have signed up (notable examples of countries which are not contracting parties include China, India and Brazil) and it was rarely used until Japan and the US joined in 2015. Even so, in many cases use of the Hague system can still save applicants a good deal of time, money and effort.

There are currently 67 members of the Hague Agreement, including many individual European countries. The European Union has been a contracting party of the Hague Agreement since 2008 in its own right and, by extension, all of the member states of the European Union have access to the system, including those who are not direct members of the Hague Agreement independently of their EU membership.

Until the end of January 2018, the UK’s status as a contracting party of the Hague Agreement was somewhat uncertain, thanks to the plans for the UK to leave the EU. On 23 January, the Designs (International Registration of Industrial Designs) Order 2018 was published, this being the final piece of legislation required for the UK to join the Hague Agreement independently of the European Union.

Next, the UK will need to deposit its instrument of ratification and then, three months later, the UK will be a member of the system. Originally the plan was to launch the service in early April. Meeting that deadline is a little unlikely but, assuming that the instrument of ratification is (or was) deposited on schedule, it won’t be too long before the UK is officially a member.

Those who wish to protect their designs will be pleased to learn that they will still be able to file either a UK national design application or an international application through WIPO, with no interruption to this service.

In more good news for designs applicants, Russia also joined the Hague agreement at the end of February 2018.

Useful resources:
For more information regarding designs see our Introduction to the Protection of Designs and International Design Registration under the Hague Agreement information sheets or contact us on 0131 243 0660 if you’re looking for specific advice.

Rebecca Douglas

This entry was posted in Uncategorized.

Cambodia becomes an EPO Validation State

As of 1 March 2018, Cambodia is an EPO (European Patent Office) validation state, making it the first country in Asia to hold such a status.

A validation state is a non-contracting state to the European Patent Convention (EPC) that has entered into a validation agreement with the European Patent Office (EPO). This enables the validation of European patent applications in that state. After validation, the applicant for the patent will have the same protection for their invention as they would for any patent granted by the EPO in any EPC contracting state.

Cambodia is not the first non-European country to become a validation state, though. Morocco and Tunisia are both validation states (having joined in 2015 and 2017, respectively). The Republic of Moldova is the only European state that is a validation state rather than a member state or an extension state. Together with Cambodia these states are unique in that European Patents can be validated for them, in spite of their not actually being members of the EPC.

This marks another step in Cambodia’s recent work in strengthening their Intellectual Property infrastructure. They joined the World Trade Organization (WTO) in 2014 and were the 151st State to join the Patent Cooperation Treaty (PCT) in 2016. Cambodia also joined the Madrid Protocol for trade marks in 2015 and the Hague Agreement for designs in 2016 (see our information sheets regarding patent, trade mark and design protection around the world for more information about the respective systems). All of this is impressive work in just a few years, especially given that patent law was only put in place in Cambodia in 2003.

The EPC system can be an especially cost effective one, allowing patent applicants to file just one application at the EPO initially, stating which of the 44 states they would like validation in when the patent is granted. Until grant, the applicant only need deal with communications with one Patent Office (the EPO). Importantly, fees (including renewal fees) are only paid to the EPO before grant and are only paid to the patent offices of the individual validation states after grant. The EPO also carries out substantive examination of patents, leading to potentially “stronger” granted patents than might otherwise be granted in certain states which operate a registration only system.

It’s important to note however, that under Cambodian patent law, pharmaceutical products are currently excluded from protection. This would exclude European patents for pharmaceuticals from being validated in Cambodia, even if they are accepted in other EPC member and validation states. Thanks to Article 70 of TRIPS (Trade-Related Aspects of Intellectual Property) – such patents may still be filed (and will therefore get a filing date, important for assessing novelty) and at a later date, when pharmaceutical patents are no longer excluded, they may come into force.

In the meantime, for most other applications, the addition of Cambodia as a validation state represents an efficient (and typically cost-effective) route to protection in that state that may be more straightforward than direct filing. Protection for many other Asian territories is available via the PCT (as indeed it still is for Cambodia) or via direct filing.

Rebecca Douglas

This entry was posted in European Patents.