Patent Treaty Implementation Act Eases Foreign Design Patent Filings

by Bradley Arant Boult Cummings LLP
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After a long delay, the United States will soon implement two multilateral treaties that will assist U.S. applicants in securing design and utility patents in foreign countries. The Hague System Agreement will allow design patent applicants to apply for design patents or industrial designs in multiple jurisdictions with a single application; the Patent Law Treaty will synchronize U.S. patent prosecution procedures with those of other nations.

Design Patents Go International

The Hague System was initially created in 1960 to streamline international design patent and industrial design applications. President Clinton signed the treaty in 1999, the Senate ratified it in 2007, and Congress recently adopted the implementing statute. The Hague System Agreement (and related US implementing statute) creates procedures at the United States Patent and Trademark Office (USPTO) to receive and prosecute international design applications.

The most beneficial aspect of The Hague System is allowing United States applicants to file a single design application to target over 40 nations and the European Union. The applicant can file the application with the USPTO and may designate any number of the contracting nations to receive the application. The USPTO then submits the application to the World Intellectual Property Organization (WIPO), which reviews the application to assure compliance with formal requirements and then submits it to the contracting countries for substantive examination. Patentees familiar with international utility patent applications will find this procedure very similar to the international patenting process created by the Patent Cooperation Treaty.

In addition, a single international design application may include up to 100 independent designs. However, when the international application re-enters the United States, applicants will be required to restrict the application to a single design and file additional design patent applications.

Design Patent Publication Grants Provisional Rights

While the United States historically has not published design patent applications, The Hague System publishes applications within six months after the WIPO completes its review of formal requirements. The United States implementing statute for The Hague System Agreement gives design patent owners whose applications are published by WIPO the ability to collect damages for pre-issuance infringement in the United States. This may be particularly helpful for design patents, because designs tend to be easily identified, more readily copied, and less prone to amendments during prosecution than utility patents.

15-Year Design Patent Term

Additionally, the United States implementing statute adds one year to the term for design patents. This provision results in a 15-year term, beginning with the date of issuance by the USPTO.

Benefits for Design Patent Owners

  • Ability to file a single application for multiple foreign jurisdictions will reduce design patent costs.
  • Design patent owners can submit multiple designs in a single application, which can help establish an earlier priority date for multiple designs in a cost-effective manner.
  • Provisional rights against pre-issuance infringement of design patents increase an owner’s leverage in combating counterfeit or copied designs.
  • Design patents receive an additional year of enforcement.

Patent Law Treaty

The United States implementing statute includes the Patent Law Treaty which the president has signed and the Senate has ratified. The United States implementing statute provisions regarding the Patent Law Treaty synchronize certain United States formal requirements with other international patent systems. These provisions (i) reduce the formal requirements for obtaining a filing date by requiring only the submission of a specification, (ii) expand the rights of applicants to revive abandoned applications in certain situations, and (iii) allow foreign applicants to restore priority rights lost by delayed filings.

Effective Date of Changes

The United States implementing statute, including most of the changes based on The Hague System Agreement or the Patent Law Treaty, will take effect one year after President Obama signs the bill into law. This statute is expected to become law no later than December 21, 2012.

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Bradley Arant Boult Cummings LLP
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