Utilization of the Hague System
in light ofthe Expansion of Global Economic Activities
August 1st, 2022
Design Division ofPatent and Design Examination Department(Physics, Optics, Social Infrastructure and Design)１

Current status of the Hague Agreement

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JPO's efforts to facilitate the smooth acquisition of
Design Rights under the Hague System

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Points to keep in mind when using the Hague System

1Current status of the Hague Agreement

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2Recent Status of International Applications
Filed under the Hague Agreement➢ The number of international applications under the Treaty of The Hague
has been increasing year by year, especially since 2015 when the UnitedStates, South Korea, and Japan joined.

➢ With China joining this year, further increases are expected in the future.
Changes in the Number of International Applications
filed under the Hague Agreement

Source: "Executive Summary Hague Yearly Review 2022“
https://www.wipo.int/edocs/pubdocs/en/wipo-pub-930-2022-execsummary-en-hague-yearly-review-2022-executive-summary.pdf

3Benefits of the Hague System➢ International applications under the Hague Agreement canobtain design rights in each country or region through asimple and easy procedure.
✔ Only one application form is OK.
Direct filingwith foreign IP Offices

International Applications✔ Only one language is OK.
under the Hague Agreement✔ Only one currency is OK.
(Swiss francs)

ApplicantsApplicants✔ Batch filing up to 100 designs ispossible.
(only within the same class ofLocarno Classification)

WIPO International Bureau✔ Formality Examination isconducted collectively at WIPO
✔ Transfer of ownership,withdrawal, etc. are collectivelyapplied for at WIPOCountryA

Country

B

Country

C

CountryA

Country

B

CountryC✔ Renewals are filed with WIPOin batches✔ WIPO will automatically send thecontents of the international
publication to each designatedcountry.
4Benefits of the Hague System➢ International design applications are published worldwide,
providing business opportunities worldwide.

Source of Hague Express images https://www3.wipo.int/designdb/hague/en/✔ Listing on The Hague Express willlead to a Business Opportunity

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Status of Member Countries of the Hague Agreement➢ Currently 69 countries are signatories to the Geneva
Amended Agreement of the Hague Convention.
➢ Further increase in the number of signatories is expected inthe future.
Parties andGovernmental Organizations
signing toGeneva Amended Agreementon the Hague Convention
As of August 202270※source https://www.wipo.int/export/sites/www/treaties/en/documents/pdf/hague.pdf
Source of Map of Member Countries

Recent New MemberCountries
China, Belarus, Jamaica,
Suriname, Mexico, Israel, andMorocco (effective July 22)

https://www.wipo.int/export/sites/www/hague/images/hague_union_845.jpg

Destinations most frequently
designated by users in Japan
EU, USA, Korea, UK, Switzerland,and Singapore

Under preparation to join
ASEAN countries such as
Indonesia and Thailand6Efforts to support emerging countries
toward accession to the Hague Agreement➢➢The expectations of Japanese users for China's accession to the Hague Agreement were veryhigh. In the future, further expansion of accession is expected, particularly among ASEAN
countries.
In order to support the accession of other agencies to the Hague Agreement, JPO conducts
training for government officials from emerging countries as needed in order to share ourcountry's experience in accession to the Hague Agreement and know-how on substantive
examination.
Invitation training for officials from emerging countries
In addition to introducing the outline of the Hague system, thepractice of Japan's substantive examination, and the opinions ofusers, JPO has been sharing the experience of Japan's accession
to the Hague Agreement with the aim of promoting theaccession of participating countries to the Hague Agreement andimproving the quality of examination.
We will continue to implement these measures.

【Course Objectives】
Mainly for non-member countries of The Hague, JPO will
introduce an overview of the Hague system, Japan's substantive
examination practice through the examination of applications forinternational design registration, and users' opinions, as well asshare Japan's experiences related to its accession to The Hague
in order to introduce the participating countries to The Hague
and its substantive examination system and improve the qualityof examination.
【Target Participants】
Design examiners from countries that are not members of theHague Agreement, or those involved in preparations for Hague
accession.
【Main target countries in recent years】
Indonesia, Thailand, Malaysia, Philippines, Laos, Myanmar, Brazil,
Argentina, Chile, Peru, etc.

Individualized training

We have received requests from foreign government agencies
for training on Japan's experience in accession to the Hague
Agreement, methods of substantive examination, and knowhow in making similarity judgments.
In response to these requests, we provide various training
programs on a case-by-case basis using an online conference
system.
■Examples of this year's training programs
Training on Examination of Image Designs for Design Officials of theDirectorate General of Intellectual Property (DGIP) of Indonesia
May 30-31, 2022

In this training course, the JPO shared its knowledge on theexamination guidelines, the operation of examination, and the designclassification at the JPO for designs containing images, and the DGIP
also introduced the design examination system in Indonesia.

7JPO's efforts
to facilitate the smooth acquisitionof Design Rights under the Hague System8

To facilitate the smooth acquisitionof design rights under the Hague Agreement➢➢

Most of the reasons for refusal of international applications based on the Hague Agreement incountries that conduct substantive examinations are related to(1) insufficient disclosure of designs and (2) the requirement of unity of design.
Since its accession to the Hague Agreement, JPO has made various institutional and operationalrevisions to reduce the number of reasons for refusal (1) and (2) as much as possible.

①Many reasons forrefusal concerning
inadequate disclosureof designs②Many reasons forrefusal concerning
the requirement ofunity of design（In Japan, regulations andexamination standards wererevised in 2019 tosubstantially relax therequirements for drawings,etc.）③Surprisingly few reasons for （In Japan, theexamination guidelines
refusal concerning essential
registration requirements for were revised
sequentially in 2019 anddesigns such as novelty
2020, to relax theSource of statistical data: WIPO/HS2/19/5 presentation material

requirements regarding
the scope of what canbe filed as a singledesign.）

https://www.wipo.int/edocs/mdocs/hague/en/wipo_hs2_19/wipo_hs2_19_5.pdf

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To facilitate the smooth acquisitionof design rights under the Hague Agreement
JPO studied how to disclose designs in accordance with the actual state of creation, andin 2019, significantly relaxed the requirements for drawings while maintaining theclarity of designs.

■Requirements for disclosure of design
JPO abandoned “6-view requirement”. Under the present design examination standard, on condition that the claimed
design is fully (accurately) disclosed, the number and angle of views are left to applicant’s discretion,
filed designs with only partial claiming and/or partial disclosure in the entire form of an article are deemed as partial designs【Case１】✔

【Case２】✔

(Explanation) Deemed as a partial design claiming only the disclosed
part (other than the back).

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To facilitate the smooth acquisitionof design rights under the Hague Agreement■ Omitting of disclosure of portions
other than those for which a design registration is sought
Even if the form of the entire article is not disclosed, if the position, size, and extent of the "portion forwhich a design registration is sought" can be sufficiently derived in the light of the nature of the article, etc.,
the design shall be deemed to be concrete.

■Enabling the illustration of articles, etc.
other than the design of the application
If it is necessary to express the content of thecreation, it was decided to allow the illustration ofarticles, etc. other than the design pertaining tothe application.
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To facilitate the smooth acquisitionof design rights under the Hague Agreement
The scope of what can be applied for as a single design, and the requirements for the applicationof a design for a set of articles have been relaxed in order through revisions of laws, regulations,standards, etc.

■Having relaxed the requirements regarding the scope of what can befiled for as a single design applicationa design for sets of articles

The examination guidelines were revised in 2019 to clarify the scope of what can be filed as a single
design as follows.
Even in cases where multiple constituent objects are represented in the drawings, if the following apply, theexaminer should determine whether or not they constitute a single article, etc. by also complementarily
considering such aspects.
(a) Where all of the constituent objects physically constitute a single bundle, or where they are coordinated as asingle shape, etc. such as the case where they have been created in an integrated manner with close
relevance in shape, etc.
(b) Where all of the constituent objects could be commonly used in an integrated manner“Jelly with a container”[Perspective view]“Tail lamp for a passenger car”
[Perspective view][Reference view showing the taillamp installed on a vehicle]

The revision of the Design Law in 2019 and therevision of the METI Order and the Design
Examination Standards in 2020 will greatly expand
the scope of designs that can be applied for as adesign for a set of articles.
“A set of tableware”

１）Introduction of partial design for a set of articles

In 2020, the Examination Guidelines were further revised to relax the requirements as follows.
Even where multiple constituent objects are not found to have any connection with each other, if the constituent
objects could be commonly distributed in an integrated manner, and all constituent objects are created in an
integrated manner with close relevance in shape, etc., the examiner should determine that they constitute a single
article, etc.
“Toothbrush with toothpaste
and a packaging container”[Front view]■Having relaxed the requirements for filing“Assorted cookies and table plate with packagingcontainer”[Perspective view]

２）Relaxation of requirements for component
articles for which an application can be filed as
designs for a set of articles
Before the change of operation, the Examination
Guidelines for Design specified that the constituent
articles that can be included in the design of a set ofarticles were listed in advance in a limited manner.
After the change of operation, however, theapplicant can select constituent articles at his
discretion under certain conditions.

12Points to keep in mind when using the Hague System

特許庁

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Points to keep in mind when using the Hague System(1) In Order to Forestall Possible Refusals on the Ground of
Insufficient Disclosure of an Industrial Design by Examining Offices
WIPO has a guideline on its website that explains how to prepare applications anddrawings that are less likely to be rejected by the examining authorities.
These guidelines may be referred when preparing the application and drawings.
Guidance on Preparing and Providing Reproductions in Order to Forestall Possible Refusals on theGround of Insufficient Disclosure of an Industrial Design by Examining Offices
https://www.wipo.int/export/sites/www/hague/en/docs/guidance.pdf【Cases in which a design may be rejected by the examining authority
as insufficiently disclosed】（a） Not enough views（b） Unclear representations of the claimed design（c） Unclear relief or contours of surfaces of a three-dimensional
product（d） Difference in form/color between the representations of theclamed design
14Points to keep in mind when using the Hague System（c）Unclear relief or contours of surfaces of a three-dimensional product(Some examples from the guidelines)

It may be considered by Examining Offices that the design has not been sufficiently disclosed if
the scope of the claimed design has not been clearly defined with the submitted views incombination with any additional written description.

■EXAMPLE OF POSSIBLE PROBLEMATIC PRACTICE
Indication of the product: “Pharmaceutical tablet”
Legends: 1.1) Perspective (front, top and right);
1.2) Top; 1.3) Bottom; 1.4) Front.
Description：The parts shown by means of broken lines
in the reproductions are not part of the claimed
design. The left side view, the right side viewand the back view are omitted because they
are identical with the front view, respectively.

The concavo-convex shape of the part to be protected is unclear.

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Points to keep in mind when using the Hague SystemGuidance in Order to Forestall Possible Refusals(a)Shading, hatching, dots, or lines should be provided in the representations where it is difficult
to represent relief or contours of surfaces of a three-dimensional product without them.

(b)

Shading, hatching or lines should not be provided on unclaimed subject matter where they
may lead to confusion as to the scope of the claimed design.
The purpose of the shading, hatching or lines provided in the representations should beclearly stated in the description in order to avoid any confusion with patterns on the surfaces.

(c)＊ Where China and/or Japan is designated, it should be noted that submitting sectional views or perspective views to represent
relief or contours of surfaces of the product concretely is a more preferable way than providing shading, hatching, etc. in therepresentation.

Illustrative Implementations Taking Into Account the above Guidance

Legends： 1.1) Perspective (front, top and right); 1.2) Top; 1.3) Bottom; 1.4) Front.
Description： The parts shown by means of broken lines in the reproductions are not part of the claimed design.
The parallel thin lines and the radial thin lines in the representation represent contours only and do not illustrate anornamentation or decoration on the surface of the product.
The left side view, the right side view and the back view are omitted because they are identical with the front view,
respectively.

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Points to keep in mind when using the Hague System（d）Difference in form/color between the representations of the clameddesign(Some examples from the guidelines)
It may be considered by Examining Offices that if one (or some) of the reproductions are in adifferent form or only one (or some) of the representations are in color, the contents of theclaimed design shown in all the reproductions, such as color, pattern, etc., are inconsistent witheach other.
■EXAMPLE OF POSSIBLE PROBLEMATIC PRACTICE
Indication of the product: “Cup””– At least one of the reproductions of an industrial design is a photograph. The remaining ones are line drawings.
– At least one of the reproductions of an industrial design is a line drawing. The remaining ones are computer graphic representations.
– At least one of the representations of an industrial design is in color. The remaining ones are in black and white.

The presence/absence of color does not match among the figures.
17Points to keep in mind when using the Hague SystemGuidance in Order to Forestall Possible Refusals
No Mixing of the Reproductions in Different Forms; No Mixing of the Representations in Black andWhite and in Color(a) All reproductions should be in the same form13.
(b) Representations should be all in either black and white or color.
Illustrative Implementations Taking Into Account the above Guidance
Design 1 is represented in the form of a line drawing and design 2 is represented in the form of a computer graphic
representation in the same international application. Design 1 is in black and white and design 2 is in color.

✔

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Points to keep in mind when using the Hague System(2) In Order to Forestall Possible Refusals Concerning Unity ofDesign
An applicant may include multiple designs in a single international
application (up to a maximum of 100) provided they belong to the sameclass of the Locarno Classification.
However, Offices of certain Contracting Parties may refuse the effects of aninternational registration containing multiple designs due to their domestic
law requirements relating to unity of designs or related designs.
Therefore, when designating these countries, it is advisable to grasp inadvance the content of the unity requirement of the country and the contentof the related design system.

Declarations, including national unity requirements, of each country can be foundon the following WIPO website:Hague System: Declarations by Contracting Parties
https://www.wipo.int/hague/en/declarations/<Reference> Countries currently declaring unity requirements
China, Estonia, Kyrgyzstan, Mexico, Romania, Russian Federation, Syrian ArabRepublic, Tajikistan, United States of America, Viet Nam

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Points to keep in mind when using the Hague System
WIPO has a guideline on its website that explains how to avoid
reasons for refusal for international applications containing
multiple designs. It is advisable to prepare the application anddrawings with reference to these guidelines.
Guidance on Including Multiple Designs in an International
Application in Order to Forestall Possible Refusals
https://www.wipo.int/export/sites/www/hague/en/docs/hague_system_guida
nce_multiple_designs.pdf“Guidance on Including Multiple Designs in an International Application in Order to Forestall Possible Refusals”より

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Points to keep in mind when using the Hague System
・ In Japan and the Republic of Korea, the related design system can be used toacquire design rights for the applicant‘s own designs that are mutually similar toeach other. In doing so, it should be noted that the requirements for registration ofrelated designs differ between Japan and Korea, and that the indication of theoriginal design is required in both countries.
・ In China, it is possible to file up to 10 similar designs for the same article at thesame time, and in such cases, the main design must be selected and indicated.
＊For details, refer to the following website of WIPO.
https://www.wipo.int/hague/en/guide/ia.html#r16

Excerpt in part from DM1

https://www.wipo.int/export/sites/www/hague/en/docs/form_dm_1-editable1.pdf

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Thank you for your attention.