On 5 May 2022, the Geneva Act 1999 of the Hague Agreement Concerning the International Registration of Industrial Designs (“Hague Agreement”) officially came into effect in China. To assist relevant Chinese applicants to actively submit design applications through the Hague Agreement, China National Intellectual Property Administration (“CNIPA”) compiled the Guidelines on Applications for International Registration of Designs (“Guidelines”), and published them on 3 November 2023. The content of the Guidelines mainly involves the procedures for submitting design applications through the Hague Agreement (“international application”), matters needing attention in the examination process of the International Bureau and CNIPA, and related charges.
The Hague Agreement is an international intellectual property agreement applicable to the field of industrial design and is administered by the World Intellectual Property Organization (WIPO). An international application which may be submitted to the International Bureau or the Office of the Contracting Party (“Designed Office”) is an effective way to obtain design protection for at least 15 years in countries/regions that are the Contracting Parties to the Hague Agreement. As of October 2023, there are 79 Contracting Parties to the Hague Agreement, covering 96 countries/regions.
For the International Bureau examination procedure, the Guidelines highlight considerations related to matters of application, publication and views for an international application. Matters related to the application include the applicant, application date and application content. According to the Guidelines, the applicant shall be a national of a country or organization member of the Contracting Party of the Hague Agreement, or a natural or legal person with a place of business, domicile or habitual residence in the Contracting Party of the Hague Agreement. The filing date is usually the date on which an application is received by the International Bureau or the Designed Office. The content of an international application includes mandatory content, supplementary necessary content and non-mandatory content. Mandatory content refers to the information that must be included in an international application. Supplementary necessary content refers to the information that must be included in an international application designed for a Contracting Party following the notice from the Contracting Party. Non-mandatory content includes the appointment of a representative of the applicant, and claiming of priority. An international application may be filed by the applicant or by its representative.
The registration date of an international application is usually its filing date or the date of correction of irregularities. An international application shall be published after registration by the International Bureau. An applicant can choose to publish its international application immediately, within 12 months after the registration date, or at any time within 30 months after the date of registration.
The views of an international application shall ensure that all details are legible. In addition to enumerating the technical requirements for image files under the Hague System, the Guidelines also recommend numbering views, providing a sufficient number of views, including front view, back view, left view, right view, top view and bottom view, complying with professional standards when drawing and keeping the background of the views clean.
For an international application designed in China, CNIPA will focus on the review of the application’s definition, novelty, clear expression and unity, and complete its examination within 12 months. For an international application that requires a grace period for novelty, relevant supporting materials need to be submitted together with the application or within 2 months from the date of publication of the application. For an international application that does not meet the unity requirements, the applicant may file a divisional application within 2 months from the date of publication of the application or based on an examination opinion from CNIPA. For an international application claiming priority, a copy of an earlier application document shall be submitted on the application date of the application or within 3 months from the publication date of the application. CNIPA does not charge additional fees. After obtaining protection in China, the applicant can request CNIPA to issue a duplicate copy of the patent register for its international application.
The Guidelines describe the fees for filing an international application. They are the basic fee, publication fee and designation fee. The designation fee is payable to each designated Contracting Party. The Hague Agreement provides for standard designation fees but also allows eligible countries to declare individual designation fees.
According to the standards recorded on the WIPO website in October 2023, the basic fee for an international application is CHF 397, the basic fee for each additional design in the application is CHF 19; the publication fee for each copy submitted for publication is CHF 17, displaying one or more copies on the same page, the publication fee for each additional page after the first page is CHF 150. The Guidelines list a website, where the fees for an international application can be estimated.
In short, the promulgation of the Guidelines will help Chinese applicants to effectively and reasonably use the Hague Agreement to obtain legal protection for their industrial designs on a wider scale.