US Patent Law Treaties Implementation Act is passed

On 5 December 2012 the US House of Representatives passed the Patent Law Treaties Implementation Act. The Act was earlier voted through by the Senate on September 22, 2012. Once in force, it will greatly streamline certain design patent and industrial design filings around the world, while also providing new benefits to owners of US design patents.

Background

The Act includes implementing legislation for the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs and the Patent Law Treaty, both of which were signed by the US in 1999 and ratified by the US Senate in 2007. The provisions of the Act are expected to go into effect approximately one year after enactment.

The US introduction of the International Design Patent Application

Once the provisions of the Patent Law Treaties Implementation Act go into effect, any person who is a national of the US, or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the US, will be permitted to file international design applications with the USPatent and Trademark Office.

This application may designate the US and any of more than 40 other jurisdictions around the world. Once the application has been reviewed for certain formalities, it will be automatically transmitted to the designated jurisdictions, where it will proceed to examination and/or registration. Similarly, foreign applicants will be permitted to designate the US in their own international applications initially filed abroad.

In both instances, applicants will no longer need to work through local patent counsel to initiate the filing and registration process in jurisdictions outside of where the international design application was filed. Applicants also will be permitted to include up to 100 designs within a single Hague application (although the US application would still be subject to the current restriction practice).

The portions of the Act dealing with the Patent Law Treaty aim to synchronize various formal procedures with foreign countries relating to the patent prosecution process. Relevant provisions address issues such as the requirements necessary to obtain a US filing date, the restoration of priority rights, and other formal items.

Other key provisions

The Patent Law Treaties Implementation Act includes several other provisions of note. Among other items, the term of granted design patents will be extended from 14 years to 15 years for all new design patent applications filed after the effective date of the Act. In addition, the publication of an international design registration designating the US will be treated as a “publication” under US law, thereby providing the possibility of obtaining pre-issuance damages for the infringement of certain US design patents.

Implications

Once the provisions of the Patent Law Treaties Implementation Act fully take effect, US and foreign applicants will have the opportunity to greatly streamline their design patent/industrial design filing process for many countries, potentially reducing overall design prosecution costs around the world. It also is believed that the U.S. implementation of the Hague Agreement is likely to spur other countries to adopt the Agreement in the near future. Additional updates analyzing the impact of this legislation as it is signed into law and enters the rulemaking process will be available on Foley.com.

Marshall J. Brown is Vice Chair, Mechanical & Electromechanical Practice, Foley & Lardner LLP