Breaking the Status Quo of International Design Law: How the United States' Design Law Frustrates the Purpose of the Hague Agreement.

• Author: Mack, Nicholas P.

TABLE OF CONTENTS I. INTRODUCTION 1295 II. THE HAGUE AGREEMENT AND THE UNITED STATES: PAST AND PRESENT 1302 A. The History and Purpose of the Hague Agreement 1302 B. Protecting Industrial Designs on an International Scale 1304 C. The United States Signed and Ratified the Geneva Act of the Hague Agreement 1307 D. Current US Design Law Under the Hague System 1309 II. THE PUZZLE OF US DESIGN LAW: HOW IT FITS INTO THE INTERNATIONAL DESIGN REGIME 1314 A. Incentives Created by US Design Law Versus That of the Rest of the World 1314 B. Industrial Designs and Patents in TRIPS with Relation to US Design Law 1316 C. US Design Law is Problematic to International Industrial Design Applications Filed Under the Hague Agreement 1319 1. US Design Patent Law's Substantive Requirements are Problematic 1319 2. US Design Patent Law's Processing Lead Time is Problematic 1324 3. US Design Patent Law's Associated Costs are Problematic 1326 D. Benefits and Drawbacks to Other Hague Agreement Contracting Parties' Industrial Design Protections 1328 IV. A "NONOBVIOUS" SOLUTION TO THE INTERNATIONAL PROBLEMS OF US DESIGN LAW 1332 A. A Requirement of Nonobviousness Has No Place in Design Law 1333 B. Industrial Design Legislation's Fighting Chance in Today's US Political Climate 1336 C. The Macro-Level Impacts of Industrial Design Legislation in the United States 1338 V. CONCLUSION 1340 I. INTRODUCTION

What does a handbag designer in the United States have in common with one in Estonia? Aside from both being handbag designers, each can file an international application for industrial design protections for their handbag designs using the Hague System, an international system that enables industrial design protections in several countries and regions with little procedural formalities. (1) Using this system, a designer can designate numerous countries to seek design protections through a streamlined application process. (2) For argument's sake, assume that the United States designer sought design protections in only Estonia and the Estonian designer in only the United States under the Hague System. This is when a key issue arises. Because the Hague System only streamlines application processes, not municipal law, each designated party reviews the application under its own law. (3) In this instance, the United States handbag designer's design will be examined under Estonian design law--which mirrors that of nearly every other design-protecting regime in the world--requiring only that the design be novel and have individual character. (4) However, the Estonian handbag designer's design application will face many more obstacles due to the United States' utilization of its design patent law to examine such application, which enumerates more substantive requirements and necessitates a much longer processing lead time and higher associated costs. (5) When it comes to the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement) and its contracting parties, the United States is an outlier in this respect. The implications of the difference between US design law and the law of most major US trading partners are explored in this Note.

Fortunately for handbag designers and other designers alike, industrial design protection has gained significant international traction over the last two decades, as evidenced by sixty-five contracting parties--including individual states and intergovernmental organizations--signing or joining with effect the most recent iteration of the Hague Agreement: the Geneva Act of 1999 (the Geneva Act). (6) The Hague Agreement provides its members with the opportunity to register industrial designs for protection on an international scale. (7) Originating in 1925, the Hague Agreement has seen many renditions throughout its existence, but its most representative act is the recently enacted Geneva Act. (8) The World Intellectual Property Organization (WIPO), the Hague Agreement's administrator, states that "an industrial design may consist of three dimensional features, such as the shape of an article, or two dimensional features, such as patterns, lines or color." (9) Under this definition, industrial design protections can extend from product packaging manufactured by American consumer goods company Procter & Gamble all the way to handbags, accessories, and clothing produced by the British fashion design house Alexander McQueen. (10)

An application filed under the Hague Agreement for industrial design protections is reviewed under the specified contracting party's law where protections are sought. (11) This means that, if protections are granted, the registered industrial design will receive the same protections in the protection-granting contracting party as an industrial design registered through the municipal process. (12) Article 14(1) of the Geneva Act of 1999 explains this concept, stating that "the international registration shall, from the date of the international registration, have at least the same effect in each designated Contracting Party as a regularly-filed application for the grant of protection of the industrial design under the law of that Contracting Party." (13) Thus, how each contracting party implements its responsibilities under the agreement--and their corresponding municipal design laws--impacts other contracting parties. For example, if the Estonian handbag designer applies for industrial design protections under the Hague Agreement in the European Union (EU), the application is reviewed under EU industrial design law. Likewise, if protections are granted, the design will be protected under EU industrial design law.

But what happens when a contracting party lacks a coherent and cohesive industrial design regime that differs from the rest of the world? Enter: the United States. The United States is party to the Geneva Act of the Hague Agreement, joining with effect on May 13, 2015. (14) Unlike the above example concerning the EU, the United States does not have a statute designated to address industrial design protections, instead protecting designs using copyright, trademark, trade dress, and design patents under its existing intellectual property regime. (15) Thus, the US regime clearly opposes the Hague Agreement's purpose to support easily and efficiently acquired industrial design protections in various contracting parties by simplifying procedures for obtaining protection. (16) This frustrates the Hague Agreement's purpose because US design law differs markedly from how other contracting parties protect designs, effectively disrupting the status quo of protecting industrial design on a global scale. (17) While the Hague Agreement remains a procedural agreement, streamlining municipal design laws to closely mirror that of other contracting parties theoretically eases the process of international design registration. However, that did not stop the United States from joining the Geneva Act.

While the United States has now been party to the Geneva Act since 2015, it continues to try to fit industrial designs into its existing intellectual property regime. (18) Currently, 35 U.S.C. [section] 389 governs the US Patent and Trademark Office's (USPTO) examination of international industrial design applications filed under the Hague Agreement. (19) The language of [section] 389(b) states that "all questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16." (20) Chapter 16 references Title 35 of the United States Code chapter 16, which houses statutes regarding design patents. (21) In essence, the statute provides that all international industrial design applications must meet the parameters of a design patent, which is an intellectual property protection that requires different substantive requirements, takes longer to process, and is more costly than what the vast majority of other contracting parties consider an industrial design. (22)

As recently as June 2020, the United States has demonstrated its commitment to maintaining this practice by releasing administrative guidance from the USPTO that illustrates its failure to align its design law with that of the contracting parties. (23) Specifically, the guidance document, the Manual of Patent Examining Procedure, explains the procedure for examining international industrial design applications in [section] 2920.05(b) by reproducing the language found in [section] 389. (24) Thus, although the United States joined the Hague Agreement in 2015, its problematic implementation of its responsibilities under the agreement persist today, signaling an ongoing issue with troubling implications for designers around the world.

Due to the USPTO using [section] 389 to examine international industrial design applications, the result of the United States' implementation of its responsibilities under the Hague Agreement is vastly different than other parties adhering to the same agreement. This practice, as compared to other contracting parties, increases the substantive requirements, application processing time, and associated costs involved with attaining design protection, highlighting the problem with current US design protection law under the Hague System. For instance, necessary prerequisites for design patents under US law include originality and ornamentality, in addition to the general patent requirements of novelty and nonobviousness. (25) This is contrary to what many other Hague Agreement contracting parties require for industrial design protections. (26) For example, the EU only requires that an industrial design be new and have an individual character. (27) As a result, this may lead to more rejected applications under the Hague Agreement for protections in the United States due to the United States' imputation of...