Patent Law Treaties Implementation Act of 2012 Modifies U.S. Design Patent Law

by Womble Bond Dickinson
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While much attention has been given to the recent, significant changes in U.S. patent law arising from the America Invents Act (“AIA”), lesser attention has been given to patent law changes brought about by further congressional action. Specifically, the Patent Law Treaties Implementation Act (“PLTIA”) enacted December 18, 2012, implements the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. This new law makesseveral important changes to U.S. design patent law that may be of particular importance to U.S. companies with an international footprint. Specifically, the new lawprovides U.S. design patent applicants with increased flexibility and, like the AIA, further harmonizes U.S. patent laws with international norms. 
Under the new law, U.S. applicants will, for the first time, be able to file a single, international design patent application (a so-called "IDA") with the U.S. Patent and Trademark Office (“USPTO”) that ultimately can be extended to many countries. In many aspects, an IDA is the design equivalent of a Patent Cooperation Treaty ("PCT") application. Whereas a PCT application does not itself grant any rights, though, a granted international design patent is enforceable in any of the member countries designated by the applicant at the time of filing. There are presently 60 members to The Hague Agreement, most notably the European Union (and many European countries separately). The complete country listing can be found at http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/hague.pdf. The following aspects of the international design patent under the Geneva Act are further of note.
  • Applicants have greater options for priority claims. Specifically, a U.S. national design application may claim priority, within six months from filing, to an IDA designating at least one country other than the U.S. Further, an IDA designating the U.S. may claim priority, within six months from filing, to any of: i) a prior foreign application, a PCT application designating at least one country other than the U.S., or a prior IDA designating at least one country other than the U.S.
  • Unlike U.S. design applications, an IDA publishes "soon" after filing and becomes prior art as of its filing date. The specific timing of publication is yet to be determined.
  • In line with publication, the IDA provides provisional rights for infringement (which is not available for directly filed U.S. design patents).
  • The term of all design patents in the U.S. is extended from the current term of 14 from issuance to 15 years from issuance. Maintenance fees still will not be required for directly filed U.S. design patents; however, maintenance fees (payable to the International Bureau) are due for the international design patent at five year intervals. An IDA registered in countries outside the U.S. may have a term ranging up to 25 years. 
  • Whereas U.S. national design applications are typically limited to a single design, an IDA may include up to 100 different designs (so long as they are all in the same art classification).
Despite its advantages, the international design patent does not replace a U.S. national design patent, and applicants must carefully consider the different treatments afforded under each system and how it factors into their overall strategy. For example, in cases where an applicant believes there is potentially infringing activity by a competitor, even if the applicant only wishes to seek a design patent in the U.S., it may be advantageous to file an IDA designating the U.S. rather than a direct U.S. national design application. The IDA will potentially publish sooner than a direct U.S. application will become an issued patent, and the provisional rights available with the IDA may provide for earlier access to damages. A directly filed U.S. design patent application will not publish, and infringement rights only accrue upon issuance of the patent. 
When filing an IDA, formalities are carried out by the International Bureau, but the IDA is transferred to the country designated for examination, and the examination is carried out under the existing design patent laws of the examining country. In particular, non-U.S. applicants residing in a country that is a member of the Geneva Act will be able to file an IDA in their home country, designate the U.S., and have their application examined at the USPTO under U.S. laws. 
Beneficially, a design patent may be obtained in a number of countries without the necessity of paying examination costs and engaging local counsel in every country where patent protection is sought. This can be a significant cost savings in some instances. The PTLIA thus essentially allows an applicant to "forum shop" (within the spectrum of member countries) based upon a variety of considerations, such as product market, IP enforceability, likelihood of copying, and costs of examination (including the possible requirement of obtaining local counsel to attend to office action responses). It is important to also note that the country designated for examination can affect the formal aspects of the application, such as the nature of the drawings, including rules for shading and contouring and whether broken lines are allowed. This may impart a further advantage in that examination may be carried out in a country with less strenuous formal requirements, and the issued patent may still be registered in other, designated countries (including countries with more strenuous formal requirements). 
Cost analysis also may lead an applicant to file both a U.S. national design application and a separate IDA to obtain protection outside the U.S. This may be desirable, for instance, since maintenance fees are not required for the U.S. national patent. Utilizing the IDA for the non-U.S. countries then enables payment of only a single maintenance fee regardless of the number of designated countries.
The PLTIA requires that the amendments are effective one year after enactment of the Act – i.e., beginning December 18, 2013. The Office of PCT Legal Administration at the USPTO has recently indicated, however, that the implementation process may extend beyond this deadline for a variety of reasons, including the effects of the federal sequester.
As can be seen from the foregoing, implementation of the Geneva Act is expected to provide several advantages for design patent applicants. Practitioners and applicants will need to be aware of the associated rules to ensure all available options for obtaining design patent rights are pursued. 

For more information, please contact Ryan Cagle or the Womble Carlyle attorney with whom you normally work.

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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