On December 19, 2012, President Obama signed the Patent Law Treaties Implementation Act of 2012 (Act of 2012) into law. The Act of 2012 serves to implement two patent law treaties: (1) the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) and (2) the Patent Law Treaty. By signing the Act of 2012 into law, President Obama paved the way for the U.S. to become a member of the Hague Agreement one year after enactment or when the U.S. provides the World Intellectual Property Organization (WIPO) with its implementing legislation. The implementation of the Hague Agreement moves the U.S. design patent laws to more closely follow the international community. In addition, U.S. inventors will now have increased flexibility when filing their design patent applications.
Although the President signed the Act of 2012 into law last December, the U.S. Patent and Trademark Office (USPTO) has not yet issued rules of practice in accordance with the Hague Agreement for international design applications. With the one year deadline looming, it is expected that the USPTO will issue final rules for filing and examining international design patent applications in the near future. Once implementation of the Hague Agreement is complete, international design applications designating the U.S. will have the same legal effect as a U.S. national design application.
So, what does this mean to the U.S. inventor? Following implementation of the Hague Agreement in the U.S., an inventor will be able to file a single international design application to obtain protection in other selected member countries or regions of the Hague Agreement. This procedure is similar to the Madrid Protocol process used for trademarks. Currently there are approximately 60 contracting parties, including 58 member countries, the European Union and the African Intellectual Property Organization. The member countries and regional systems cover many of the world’s markets; however, many large industrial nations (e.g., Japan, Canada, South Korea and China) are not members. Commentators have speculated that now that the U.S. has become a member and is implementing the Hague Agreement, other countries will follow suit and commence or accelerate their respective internal legislative processes to also become members of the Hague Agreement.
As noted above, the key element of the Hague Agreement is the ability to file a single design application, which may occur for U.S. applicants either indirectly through the USPTO or directly with WIPO. Once the U.S. implements the Hague Agreement, applicants from member countries or regions will be able to file design patent applications in their home country and designate the U.S. for examination of their applications.
Under the Hague Agreement, there are generally two types of design patent systems: non-examination and substantive examination. In countries with non-examination systems, the filed applications are not substantively examined by the patent office. This means they are not reviewed and compared to the available prior art. Rather, non-examination systems publish and register the design patent applications only. Once a design patent is registered or issued in a nonexamination system, the applicant obtains the right to enforce their rights against third-party infringers. However, enforcement will likely lead to the infringers challenging the validity of the registered design. Countries that employ a substantive examination system will individually review each design patent application under that country’s own patent laws. For example, in the U.S., design patent applications are currently examined, and any filed under the Hague Agreement will be reviewed to determine whether the claimed invention is novel and non-obvious with respect to the available eligible prior art. Under the substantive examination systems, design applications that issue after the substantive examination will become enforceable against infringers upon publication.
As noted above, one of the major benefits of the U.S. becoming a member country to the Hague Agreement is that applicants will now be able to file a single design patent application either indirectly through the USPTO or directly with WIPO. This may enable applicants to save significant money on design patent application filing, publication and examination fees. The money savings arise due to the ability to file a single design patent application in English, which designates a number of countries or regions. For example, a single application may save money by decreasing the fees paid to foreign attorneys for translating and filing design patent applications, as well as possibly decreasing filing fees paid to foreign patent offices. The cost savings will increase as the number of countries designated by the applicant increases. However, one needs to remember that in the event a particular country’s patent office that performs substantive examinations on international design patent applications issues a rejection as to the pending application, the applicant will likely need to engage an attorney in that particular country to respond to the rejection. Thus, all foreign attorney fees may not be eliminated by the ability to file a single design patent application.