Yes, dear reader, just like you I am delighted to see that this very exciting event will occur on January 15, 2020. And, dear reader, I can tell you that this blog posting is a scoop! You read it here first.
Yeah right. Okay folks — how many of our readers are already so familiar with the Hague Agreement system and with the DAS system that they instantly understand what this subject line means? Perhaps more importantly, how many of our readers can instantly devise an example of a fact pattern for a filer in which it somehow it will be helpful or make a difference that this event will have occurred on January 15, 2020? If you indeed already understand this one, good for you and you have my permission to skip reading the rest of this blog article. If you indeed already can describe some situation where the imminent membership of the IB in the club of Depositing-Office members of DAS for purposes of designs would be helpful to the filer, then you are indeed very trendy, modern and up-to-date and and you have my permission to skip reading the rest of this blog article.
For the rest of our readers, well, maybe you have a bit of work to do now, joining me in a discussion of why it is that we care that very soon, the IB will become a Depositing Office in DAS for the purposes of designs.
What is DAS? First of course we can remind ourselves of a sort of basic thing that any intellectual property practitioner needs to understand fully if he or she is to give the best possible quality of service to his or her clients. What is DAS?
To understand what DAS is (see DAS web page), we must first remind ourselves why DAS exists. DAS exists because in 1883 (yes about 135 years ago) a bunch of countries got together in Paris and designed the Paris Convention for the Protection of Industrial Property. It is Article 4 of this treaty (see text) that gave us the familiar 12-month priority period for patents and the 6-month priority periods for trademarks and designs. (This reminds us that if you have not already done so, you should get a copy of the Bodenhausen book on your bookshelf, and you should carefully read the section of his book that explicates Article 4.)
Article 4 directs itself to a situation where an applicant files a first application in a first Office (the Office of First Filing or OFF) and then, within the requisite number of months, files a second application in a second Office (the Office of Second Filing or OSF). If the applicant somehow manages to satisfy a long list of conditions, the applicant might later be said to have perfected a priority claim in the OSF. The application filed in the second Office might, if all goes well, be treated in the OSF as if it had been filed on the same day that the application filed in the first Office was filed. TYFNIL you do not want to find out that you somehow failed to satisfy one or more of long list of conditions back when it would have been possible to remedy whatever it is that you did wrong about the priority claim. As an example of a big mistake to make that might present itself at litigation time, see SAOSIT.
It is Article 4 that defines what we call “a Certified Copy” (“CC”). The Treaty says:
The countries of the Union may require any person making a declaration of priority [in an OSF] to produce a copy of the application (description, drawings, etc.) previously filed [in the OFF]. The copy, certified as correct by the authority which received such application [the OFF], shall not require any authentication, and may in any case be filed [in the OSF], without fee, at any time within three months of the filing of the subsequent application. They [the OSF] may require it to be accompanied by a certificate from the same authority [the OFF] showing the date of filing …
Each OSF gets to say whether it will or will not require the filer to provide a CC. Some OSFs apparently operate on the honor system, perhaps trusting that most applicants would not lie about when and where they supposedly filed their priority application, and perhaps also trusting that most applicants would not overstate the substantive content of the priority application. Another approach in some OSFs is to postpone until litigation time the requirement that a CC be produced by the filer.
Each OSF also gets to say whether its requirement for provision of a CC by a filer will apply to patents, to designs, or to trademarks. In its role as OSF, the USPTO for example does require a CC for (utility) patents and for designs, but in the USPTO if you are a trademark applicant presenting a priority claim, you are on the honor system. The USPTO will not require you to provide a CC of a priority trademark application.
Until about 1978, any CC provided by a filer to an OSF was, by definition, a physical certified copy or PCC that was physically delivered by the filer to the OSF. Breathtaking sums of money were spent obtaining PCCs and sending them by post or courier from one country to another, for the purpose of physical filing of the PCC in the OSF.
Starting in 1978, in the particular area of utility patents, a very convenient mechanism became available for CCs, namely the Patent Cooperation Treaty system. With the PCT, if a filer managed to get a CC into the hands of the IB within a stated time limit, what would happen down the line is that the various designated Offices would receive the CC directly from WIPO.
And then came the DAS system. The DAS system provides a super convenient way for CCs to be communicated electronically, rather than physically, from one Office to the next. The first part of this idea is that any OFF might be a member of DAS for the purposes of making a filed application available in electronic form to DAS. This type of membership in DAS is called “Depositing Office” membership.
The second part of this idea is that any OSF might be a member of DAS for the purposes of retrieving an electronic certified copy of a previously filed application from DAS. This type of membership in DAS is called “Accessing Office” membership.
Any Office might choose to go to the trouble of becoming a Depositing Office for purposes of less than all of the types of applications for which it might participate. An Office might, for example, be a Depositing Office for purposes of patents but not designs.
Any Office might choose to go to the trouble of becoming an Accessing Office for purposes of less than all of the types of applications for which it might participate. An Office might, for example, be a Accessing Office for purposes of patents but not designs.
WIPO provides an extremely helpful searchable index showing which Offices participate in DAS and showing the ways that a particular Office participates. In this index you could for example find that the most trendy, modern and up-to-date Office in terms of DAS participation is IP Australia. IP Australia is a Depositing Office with respect to everything for which it is possible to participate, namely for designs applications, for domestically filed patent applications, for PCT applications that were filed in the RO/AU, and trademark applications. IP Australia is also an Accessing Office with respect to everything for which it is possible to participate, namely for designs applications, for patent applications, and for trademark applications. The biggest straggler is EUIPO (blog article), which at press time is not a Depositing Office or Accessing Office for any kind of application.
The IB being a Depositing Office? This then brings us to the question of what exactly it means for the IB to be a Depositing Office? The notion here is that some filer might find itself in the position of getting ready to file an application in some OSF, and the would-be second application might be claiming priority under Article 4 of the Paris Convention. So let’s talk through the three kinds of industrial property to which Article 4 applies, and let’s talk about how it might arise that the IB might be in the position of being an OFF.
Patents. It is possible to file a PCT application that does not claim priority to any previous patent application. If so, we call this “PCT first”. Such a PCT application might well serve as a priority application for a second patent application filed in some OSF. For the perfection of the priority claim, the filer would very likely find that the OSF will recognize the priority claim only if the filer produces a CC from the Receiving Office. In the old days, the only way to do this was to obtain a PCC from that RO, and then physically deliver the PCC to the OSF.
(Why by the way might the applicant feel that it is somehow important to proceed this way in the OSF rather than by the much easier path of entering the national phase from the PCT in that second Office? There are several real-life situations where an applicant might choose this path rather than national-phase entry. There are at least three very interesting scenarios in which this might be the way to go. Post a comment below if you can think of one or two or all three of the scenarios.)
Of course what could be very helpful is if the RO that is the OFF in a particular case happens to be a Depositing Office in DAS. There are sixteen ROs that are trendy, modern, and up-to-date in this way:
RO/AU, RO/BR, RO/CL, RO/CN, RO/DK, RO/EP, RO/FI, RO/GE, RO/IN, RO/IL, RO/MA, RO/NL, RO/ES, RO/SE and RO/IB.
RO/AU of course appears on this list because, as mentioned above, IP Australia is the most trendy, modern, and up-to-date Office for purposes of DAS participation. Conspicuous by their absence on this list are IP5 Offices RO/JP, RO/KR, and RO/US.
Trademarks. At present there is only one Office that participates in DAS for trademarks, and that is IP Australia. I blogged about this here.
The natural question given that we are talking today about the IB’s participation in DAS is why the IB might not already be a participant in DAS for purposes of trademarks. And the answer is, the IB is never in the position of being an OFF for trademarks. What about Madrid Protocol, you might ask? And the answer is that when a Madrid Protocol application gets filed, it never actually gets filed in the IB as the Office of First Filing. It gets filed in an Office of Origin that is by definition not the IB.
Designs. Which brings us to designs. The super exciting news here is that the IB will in a few days become a Depositing Office for purposes of designs.
Why do we care? What real-life situation or situations might somehow draw upon this development?
The idea here is that the IB might serve as an OFF for purposes of an Article 4 priority claim. This draws upon two things that some design practitioners might not fully appreciate. First, we should remind ourselves that a Hague application is not required to claim priority from any previous application. It might be the first application filed on some particular design. As such, we realize that just as one can file a “PCT first”, one can also file a “Hague first”. The second thing to appreciate is that if you are making a list of places where one might file a Hague application, one of those places is the IB.
The point being that it might happen that you file a Hague application at the IB and you might want to use it as a priority application for purposes of some later design application filed in some second Office. If so, it might happen that that second Office is one of the Offices that says it requires you to provide a Certified Copy. And if so, you would prefer not to have to provide a Physical Certified Copy if you can avoid it. That is, if some electronic interchange system were available, of course you would want to use that rather than having to provide a PCC.
Of the ID5 (the five biggest design Offices), four are full participants in DAS (both Accessing and Depositing) namely CN, JP, KR and US. Conspicuous by its absence is, once again, EUIPO.
But what we are taking about here is that you might for example file a “Hague first” case and then find that DAS is helpful for some second filing.
The alert reader will of course immediately ask, well, if it is so darned important for the filer to obtain design protection in that second Office, why not simply designate that second Office as one of the designations in the Hague application? And the answers include:
- Maybe the filer slipped up and did not realize the importance of protection in that second Office until after the Hague application had been filed.
- Maybe that second Office is not a member of the Hague system.
In either such case, DAS might be a perfect way to transmit a CC from the IB to that second Office.
Still another possibility is the applicant that files a Hague application and for some business reason or strategic reason makes the active choice not to use a designation from the Hague application as the way of reaching that Office but instead chooses to do a direct domestic filing in that Office (and thus will wish to claim priority from the Hague application).
What are examples of Offices that are Accessing Offices for designs but do not belong to the Hague system?
The examples are AU, CL, CN and IN.
And what are examples of Offices that are Accessing Offices for designs and do belong to the Hague system, but maybe you forget to designate them in your Hague application and might want to use Article 4 of Paris, or maybe you might make some business decision or strategic decision not to use a Hague designation as your way of reaching that Office?
The examples are CA, DE, JP, KR, ES and US.
These are all Offices where you might do a “second filing” under Article 4 and you would it very helpful to be able to use DAS to get a electronic certified copy from the IB.