Deadlines for International Design Patent Protection Explained

After filing a U.S. design patent application, you have a six-month window to file international applications and claim priority to your U.S. filing date. This priority claim is governed by the Paris Convention for the Protection of Industrial Property, which facilitates the protection of industrial property, including industrial designs, across its member countries. Alternatively, you can file the design patent application under the Hague System for the International Registration of Industrial Designs which offers a streamlined process for filing in multiple countries through a single application.

Filing Options: Paris Convention vs. Hague System

1. Paris Convention: Under the Paris Convention, you must file separate applications in each country where protection is desired. This approach is generally more cost-effective if you seek protection in only a few countries. The Paris Convention has 180 member countries, making it one of the most widely adopted treaties for international protection of industrial property.
2. Hague System: The Hague System allows you to file a single international design application that can cover multiple contracting parties. This option is typically better if you want protection in multiple countries, as it simplifies the process and can save costs in the long run. As of 2023, the Hague System comprises 79 contracting parties, covering 96 countries.

The Six-Month Deadline and Priority Claim

The six-month deadline pertains to the claim of priority under the Paris Convention. Claiming priority means that your foreign design applications will be treated as if they were filed on the same date as your U.S. design application. This ensures your earlier filing date is recognized, giving you a time advantage over competitors who may file later. Also, if you publicly disclosed your design after filing the U.S. design application, your own public disclosure won’t be counted as prior art to your later filed foreign design application.

If you miss this six-month window, you lose the ability to claim priority to the U.S. application. However, this does not necessarily prevent you from filing a foreign application—it just means your priority date will be based on the actual date you file in each country, which could affect your rights if a competing application is filed in the interim (i.e., intervening reference).

Filing After the Six-Month Deadline Without Priority

If you have not publicly disclosed your design, you can still file international applications after the six-month priority deadline. However, you cannot claim priority to the earlier U.S. filing date. Be cautious: if you did publicly disclose your design after filing the U.S. application, the six-month deadline becomes critical. Most foreign countries operate under a first-to-file system and do not allow a grace period for public disclosure before filing. If you miss the deadline and your own disclosure is public, it could bar you from obtaining a design patent in those countries.

Major Countries for Filing Design Applications

• Europe: The European Union is a member of both the Paris Convention and the Hague System. Filing through the Hague System can provide protection across EU member states.
• Canada: Canada is a member of both the Paris Convention and the Hague System, allowing design protection through either system.
• China: China is a member of the Paris Convention but is not part of the Hague System. Design protection in China must be sought through a direct national application.
• Australia: Australia is a member of the Paris Convention but not the Hague System. Design protection in Australia requires a direct national application.

For complete lists of member countries, consult the following resources:

• Paris Convention Members: WIPO Paris Convention Member List
• Hague System Members: WIPO Hague System Member List

Exception to the six month deadline: Petition to Restore Priority

In certain cases, you can extend the six-month priority deadline by filing a petition to restore priority. This option may be available if:

• You publicly disclosed your design after filing your U.S. design application, and
• You missed the six-month deadline but still wish to claim priority to the U.S. filing.

Steps to File a Petition to Restore Priority:

1. Act Promptly:
   File the foreign application within two months after the six-month deadline (i.e., within eight months from the U.S. filing date).
   • Check here to determine whether the desired foreign country allows for a petition to restore priority.
2. Provide Justification:
   Show that the delay in filing was unintentional, as required by most jurisdictions.
3. Pay the Required Fees:
   Each country or filing system (e.g., Paris Convention or Hague Agreement) may impose specific fees for restoring priority.
4. Submit a Formal Petition:
   Include a declaration explaining:
   • Why the restoration is necessary.
   • Confirmation that the delay was unintentional.

Restoring priority ensures that you maintain the earliest possible filing date for your design, even after missing the initial six-month deadline.

Practical Tips

• Plan early: Ensure you identify target countries for protection and prepare the necessary filings within the six-month window.

This proactive approach will maximize your chances of securing design patent protection both in the U.S. and abroad.

Need help protecting your design internationally? Call me at (949) 433-0900 to schedule a consultation and discuss your strategy for securing design patent protection worldwide.