Streamlining Design Patent Applications Internationally
Effective May 13, 2015, applicants can file international design patent applications in a single, standardized application via the USPTO designating any of more than 62 territories, including the U.S. and European Union (EU), and can receive the same effective filing date in each jurisdiction.
This important opportunity comes from the U.S. accession to the Geneva Act of the Hague Agreement, final details of which are set forth in the USPTO’s recently published Final Rule implementing changes to the agency’s relevant design patent Regulations.1
Applicants may submit up to 100 industrial designs per application, as long as all designs are in the same Locarno Class.2 This streamlined approach should result in increased filing efficiencies and cost savings for applicants, who may file through the USPTO3 or directly into the International Bureau of WIPO.
Until the effective date, a U.S. applicant must still file a separate application on each design in each jurisdiction where it seeks protection.
Some highlights of the USPTO’s final rule:
- U.S. design patents resulting from international or national applications filed on or after May 13, 2015 will be enforceable for a 15-year term from grant, an extra year compared to the present statute.4
- International design applications designating the U.S. will undergo substantive examination based on U.S. law,5 including the written description6 and duty of disclosure7 requirements.
- Although the Hague Agreement permits up to 100 designs per application, those designating the U.S. must still be directed to a single invention. The USPTO may issue a restriction requirement if “distinct inventions” are submitted, requiring divisional applications to protect those inventions.8
- For design patent applications, color drawings and photographs will no longer require a special USPTO petition.9
- WIPO will publish Hague Agreement design applications, including those designating the U.S., following its formalities examination (typically six months after registration), but U.S.-only design applications still will not publish unless/until they issue.
- The U.S. will grant provisional patent rights for published international applications that designate the U.S.10 These provisional rights may be especially valuable (compared to utility patents) because design patent claim scope typically is not substantively changed during prosecution.
- Ownership in the U.S. of Hague Agreement design applications remains subject to the assignment recordal procedures of the USPTO.
The Hague Agreement is directed to uniform filing and registration procedures, not substantive law. Each territory still has its own substantive laws on industrial designs, including drawing requirements, meaning that drawing formats and designs patentable in one jurisdiction may be unpatentable in another. Applicants are encouraged to review the substantive laws of each designated state prior to filing, especially the drawing requirements. The ability to file up to 100 designs per application may provide strategic options for addressing different jurisdictions’ distinctive requirements.
The U.S. is a relative latecomer to the Hague Agreement, which was first enacted in 1925 and has been amended several times since. Several countries, including the U.S., did not ascribe to the Agreement because it did not adequately provide for the substantive examination by national offices of all design applications. Instead, it catered to countries with pure registration systems where designs are registered and kept on file, but only examined substantively if challenged by a third party.
The Geneva Act of 1999 amended the Hague Agreement to attract countries such as the U.S. that conduct substantive examination, by extending the notification of refusal period to twelve months and allowing contracting states to set higher fees.11 These changes provided national offices with time and money to conduct substantive examination, while maintaining a uniform right of priority worldwide. In view of these modifications, Japan is also joining the Hague Agreement on May 13, 2015.
This new standardized application should simplify international filing for industrial design patents for many inventors.
To speak to a Brinks attorney about the new opportunities presented by the Hague Agreement or your specific design patent interests or needs, please contact Trevor K. Copeland or Daniel A. Parrish.
1 Changes To Implement the Hague Agreement Concerning International Registration of Industrial Designs, 80 Fed. Reg. 17,918 (April 2, 2015) (effective May 13, 2015).
2 The international industrial design classification system established by the 1968 Paris Convention for the Protection of Industrial Property, held in Locarno, Switzerland, and implemented by WIPO.
3 Only persons who are nationals of the U.S. or who have a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the territory of the U.S. may file international design applications through the USPTO. 37 C.F.R. § 1.011(a) (effective May 13, 2015).
4 35 U.S.C. § 173 (effective May 13, 2015).
5 35 U.S.C. § 389 (2012).
6 35 U.S.C. § 112(a) (2012).
7 37 C.F.R. § 1.56 (2012).
8 MPEP § 1502.01(D) (9th ed., Mar. 2014).
9 37 CFR § 1.84(a)(2).
10 35 U.S.C. § 154(d) (reasonable royalty available from time of publication for substantially similar inventions).
11 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, July 2, 1999, 2279 U.N.T.S. 156 (available at http://www.wipo.int/treaties/en/text.jsp?file_id=285198).