New Law Simplifies Worldwide Industrial Design Protection
January 02, 2013

 Industrial design protection took a major step forward when President Obama signed the Patent Law Treaties Implementation Act (the “PLTIA”). The PLTIA implements two treaties: the Hague Agreement, which is more formally known as the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs; and the Patent Law Treaty (the “PLT”). Both were signed in 1999, ratified by the Senate in 2007 and passed by the House in late 2012.

The Hague Agreement
The Hague Agreement streamlines the procedures for obtaining the international protection of industrial designs. Under the Hague Agreement, any U.S. national, domicile, habitual residence or real commercial enterprise may file an international design application with the U.S. Patent and Trademark Office and seek protection in any of the 40+ countries that are signatories to the Agreement.

The major benefits of the Hague Agreement are:

  • international design protection may now be sought through the filing of
    • a single application,
    • in one language,
    • with one set of fees;
  • if the application meets certain formalities, the application will be examined by the multiple jurisdictions designated for protection;
  • examination will be conducted without requiring the U.S. applicant to enlist the aid of a non-U.S. patent agent/attorney; and
  • non-U.S. applicants (from member countries) may also do the same with respect to U.S. protection.

Under the Hague Agreement, a single application may also include up to 100 separate designs. Such an application will, however, still be subject to current U.S. restriction practice.

Patent Law Treaty
The PLT harmonizes formal patent procedures between the various countries that are members to the treaty. In particular, the PLT addresses some basic issues related to the requirements for obtaining a filing date in the U.S.

Three significant changes to U.S. patent law include:

  • a filing date will be accorded to an application filed in the U.S. Patent and Trademark Office without any claims;
  • fees associated with an application may be paid after filing of the application; and
  • procedures are established for restoring priority rights to a provisional application if the delay in filing the subsequent application within the 12-month priority period was unintentional and the subsequent request was filed within two months after the expiration of the 12-month priority period.

If you have any questions or wish to discuss how the PLTIA may impact your company, please contact your attorney at Brinks Gilson & Lione.

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