International Design Patent Applications Available Soon

January 24, 2013

By: Darrell L. Wong

Hamilton Brook Smith Reynolds Alert

  • U.S. applicants will soon be able to file an international design patent application in the U.S. Patent Office.
  • International design patent applications will be published and provide for provisional damages in the U.S.
  • The term of design protection in the U.S. will change from 14 to 15 years.

On December 18, 2012, President Obama signed into law the Patent Law Treaties Implementation Act of 2012, which implements the Hague Agreement Concerning International Registration of Industrial Designs.  This law will make it considerably easier for applicants to file design patents in multiple jurisdictions.  It is expected that the U.S. Patent and Trademark Office will issue specific or clarifying rules about filing the international design application in the U.S. when the act is closer to implementation.  The Act is effective one year after its enactment.
 
From the 2012 Act and information on the Hague International Design System, including information from the World Intellectual Property Organization (WIPO) website for the Hague System, the following can be expected to be available to U.S. applicants.
 
An applicant in the United States will be able to file an international design patent application in the U.S. Patent and Trademark Office and designate member countries or regions of the Hague Agreement in which protection is desired.  Priority may be claimed to an earlier filed U.S. design patent application if the international design patent application is filed within six months of the earlier filing.

Substantive examination of the international design patent application will be separately conducted by each designated country or region according to its own law, and particular countries or regions can choose to reject or refuse protection.  In the past, a typical procedure to pursue foreign design patent protection used by U.S. applicants was to file a design patent application in the U.S. and then, within six months, file individual foreign design patent applications in each country or region where protection was desired, claiming priority to the earlier U.S. design patent application.

The international design patent application provides a U.S. applicant with the options to file a U.S. design patent application for pursuing protection in the U.S. and then, within six months, file an international design patent application for pursuing foreign protection, or to only file an international design patent application for pursuing protection in both the U.S. and foreign countries.  The member countries and regions of the Hague Agreement Concerning the International Registration of Industrial Designs listed on the WIPO website is currently fairly limited but includes the European Union.  The Far East does not have many countries listed; however Mongolia, North Korea and Singapore are listed as members.  Consequently, presently, in addition to an international design patent application, some applicants might need to file additional design patent applications in individual countries not on the member list in order to obtain protection in those countries.

An international design patent application can include up to 100 different designs, as long as they are in the same classification.  However, it may still be desirable to file separate applications for separate designs if there are particular intellectual property ownership, sale or licensing issues.  Under the new law, the term of protection in the U.S. will change from 14 to 15 years.  International design patent applications will be published and, like published utility patent applications, provide for provisional damages in the U.S.
 

Overview

January 24, 2013

By: Darrell L. Wong

Hamilton Brook Smith Reynolds Alert

  • U.S. applicants will soon be able to file an international design patent application in the U.S. Patent Office.
  • International design patent applications will be published and provide for provisional damages in the U.S.
  • The term of design protection in the U.S. will change from 14 to 15 years.

On December 18, 2012, President Obama signed into law the Patent Law Treaties Implementation Act of 2012, which implements the Hague Agreement Concerning International Registration of Industrial Designs.  This law will make it considerably easier for applicants to file design patents in multiple jurisdictions.  It is expected that the U.S. Patent and Trademark Office will issue specific or clarifying rules about filing the international design application in the U.S. when the act is closer to implementation.  The Act is effective one year after its enactment.
 
From the 2012 Act and information on the Hague International Design System, including information from the World Intellectual Property Organization (WIPO) website for the Hague System, the following can be expected to be available to U.S. applicants.
 
An applicant in the United States will be able to file an international design patent application in the U.S. Patent and Trademark Office and designate member countries or regions of the Hague Agreement in which protection is desired.  Priority may be claimed to an earlier filed U.S. design patent application if the international design patent application is filed within six months of the earlier filing.

Substantive examination of the international design patent application will be separately conducted by each designated country or region according to its own law, and particular countries or regions can choose to reject or refuse protection.  In the past, a typical procedure to pursue foreign design patent protection used by U.S. applicants was to file a design patent application in the U.S. and then, within six months, file individual foreign design patent applications in each country or region where protection was desired, claiming priority to the earlier U.S. design patent application.

The international design patent application provides a U.S. applicant with the options to file a U.S. design patent application for pursuing protection in the U.S. and then, within six months, file an international design patent application for pursuing foreign protection, or to only file an international design patent application for pursuing protection in both the U.S. and foreign countries.  The member countries and regions of the Hague Agreement Concerning the International Registration of Industrial Designs listed on the WIPO website is currently fairly limited but includes the European Union.  The Far East does not have many countries listed; however Mongolia, North Korea and Singapore are listed as members.  Consequently, presently, in addition to an international design patent application, some applicants might need to file additional design patent applications in individual countries not on the member list in order to obtain protection in those countries.

An international design patent application can include up to 100 different designs, as long as they are in the same classification.  However, it may still be desirable to file separate applications for separate designs if there are particular intellectual property ownership, sale or licensing issues.  Under the new law, the term of protection in the U.S. will change from 14 to 15 years.  International design patent applications will be published and, like published utility patent applications, provide for provisional damages in the U.S.
 

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