Design Patents and the Hague Agreement Option: Evaluating the Benefits and Risks of Filing an IDA
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Thursday, September 22, 2022
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide patent counsel on the application process under the Hague Agreement as well as the pros and cons of filing under the Agreement. The panel will discuss lessons learned from the first few years that U.S. applicants have had access to the Hague System. The panel will offer best practices for filing design patent applications.
Ms. Durkin heads the firm’s Mechanical and Design Patent Group. With nearly 30 years of experience obtaining and enforcing IP rights, she has a deep understanding of utility and design patents, trademarks, and copyrights. Ms. Durkin has been an Adjunct Professor at George Mason University Law School and has spoken internationally on topics such as the interplay between design patents and trade dress, and protection of user interface and the user experience. She is currently a Vice Chair of the Industrial Designs Committee of IP Section of the ABA.
Mr. Klancnik spent about two decades in private practice as a counselor, litigator, and prosecutor before joining the USPTO in 2021. He is part of the team that interfaces with international counterparts and represents the USPTO and the United States in international forums relating to industrial designs, including WIPO’s Hague Working Group, among others. Prior to going into private practice, he clerked for Judge Rader on the Federal Circuit Court of Appeals.
Mr. Sim is responsible for the filing, examination, renewal, and centralized management of international registrations under the Hague System. Before joining the Hague Registry, he managed outreach initiatives, training activities and user relations for the PCT System. Prior to WIPO, he held various functions with the Government of Canada. He has a Bachelor of Applied Science (BASc) in Mechanical Engineering from the University of Ottawa and is a registered Professional Engineer with the Province of Ontario.
Under the Hague Agreement, applicants may apply for design protection by filing a single, standardized International Design Application (IDA) in a single language. Applicants will see potential cost savings and will enjoy provisional rights in the U.S.
However, filing under the Hague Agreement is not without its challenges. For example, there is no universal drawing standard and countries have different requirements. Patent counsel must understand the IDA process and its benefits and risks to carefully evaluate and determine whether to file an IDA under the Hague Agreement or file direct national applications.
Listen as our authoritative panel of speakers from the USPTO, WIPO, and private practice discuss the pros and cons of filing under the Hague System and its impact on design patent filings globally.
- Overview of the Hague System globally, its members, who is using it and how
- Update from the USPTO on how it is approaching examination of IDAs, including best practices for filing an IDA indirectly through the USPTO
- Practice tips for preparing an IDA for filing in multi-jurisdictions including examination countries like the U.S., Japan, and Korea
The panel will review these and other key issues:
- What are the advantages and disadvantages of utilizing the IDA under the Hague Agreement?
- What are the lessons learned since U.S. applicants have had access to the Hague System?
- What best practices should counsel employ when filing an IDA?
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