International Design Patent Filing Option Available May 13, 2015, to U.S. Filers

Eversheds Sutherland (US) LLP

Beginning May 13, 2015, U.S. applicants will be able to file international design patent applications through the U.S. Patent and Trademark Office. In addition, U.S. design patents resulting from applications filed on or after May 13, 2015, will have a 15-year term from issuance, which represents a term increase of one year.

The Hague Agreement, which was originally signed into law by President Obama on December 18, 2012, goes into effect for U.S. applicants on May 13, 2015, and enables design owners to obtain international patent protection for their designs in a streamlined process. The Hague Agreement arose from a need for simplicity and economy in design patents and is comparable to the Patent Cooperation Treaty for utility patents. Specifically, the Hague Agreement offers design owners a means of obtaining patent protection in several countries by simply filing one application, in one language, with one set of fees in one currency. An international registration produces the same effects in each of the designated countries as if the design had been registered directly with each national office, unless protection is refused by the national office of that country.

Design owners are therefore relieved from the need to make a separate national application in each of the countries in which they desire protection. Thus, they avoid the complexities arising from procedures that may differ from country to country. Design owners do not have to file documentation in various languages, or monitor renewal deadlines, which may vary from country to country, for a series of national registrations. In addition, design owners avoid the need to pay fees in multiple currencies. Under the Hague Agreement, the same result can be obtained by filing a single international application accompanied by the payment of a single set of fees, with one office.

The Hague Agreement simplifies the management of an international industrial design registration portfolio, since it is possible to record subsequent changes or to renew the registration through a single procedural step with the World Intellectual Property Organization. Moreover, by having a single international registration with effect in several countries, the subsequent management of the protection obtained is also considerably simplified. For instance, a change in ownership, or in the name or address of the holder, can be recorded in the International Register and have effect in all the designated countries, by means of one simple procedural step.

In short, the Hague Agreement is a welcome addition to the array of tools facilitating the protection of intellectual property internationally.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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Eversheds Sutherland (US) LLP

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