[authors: Marshall J. Brown, Jeanne M. Gills]
On December 5, 2012, the U.S. House of Representatives passed the Patent Law Treaties Implementation Act. The Senate previously passed the Act on September 22, 2012. Once in force, the Act will permit U.S. applicants to greatly streamline certain design patent and industrial design filings around the world, while also providing new benefits to owners of U.S. design patents.
The Act includes implementing legislation for the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs and the Patent Law Treaty, both of which were signed by the United States in 1999 and ratified by the U.S. Senate in 2007. The provisions of the Act are expected to go into effect approximately one year after enactment.
The U.S. Introduction of the International Design Patent Application
Once the provisions of the Patent Law Treaties Implementation Act go into effect, any person who is a national of the United States, or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States, will be permitted to file international design applications with the USPTO. This application may designate the United States and any of more than 40 other jurisdictions around the world. Once the application has been reviewed for certain formalities, it will be automatically transmitted to the designated jurisdictions, where it will proceed to examination and/or registration. Similarly, foreign applicants will be permitted to designate the United States in their own international applications initially filed abroad. In both instances, applicants will no longer need to work through local patent counsel to initiate the filing and registration process in jurisdictions outside of where the international design application was filed. Applicants also will be permitted to include up to 100 designs within a single Hague application (although the U.S. application would still be subject to the current restriction practice).
The portions of the Act dealing with the Patent Law Treaty aim to synchronize various formal procedures with foreign countries relating to the patent prosecution process. Relevant provisions address issues such as the requirements necessary to obtain a U.S. filing date, the restoration of priority rights, and other formal items.
Other Key Provisions
Additionally, the Patent Law Treaties Implementation Act includes several other provisions of note. Among other items, the term of granted design patents will be extended from 14 years to 15 years for all new design patent applications filed after the effective date of the Act. Additionally, the publication of an international design registration designating the United States will be treated as a “publication” under U.S. law, thereby providing the possibility of obtaining pre-issuance damages for the infringement of certain United States design patents.
Once the provisions of the Patent Law Treaties Implementation Act fully take effect, U.S. and foreign applicants will have the opportunity to greatly streamline their design patent/industrial design filing process for many countries, potentially reducing overall design prosecution costs around the world. It also is believed that the U.S. implementation of the Hague Agreement is likely to spur other countries to adopt the Agreement in the near future. Additional updates analyzing the impact of this legislation as it is signed into law and enters the rulemaking process will be available on Foley.com.