Entries in international design application (4)


IPO submits comments regarding Proposed Hague Rules

As previously reported, on November 29, 2013, 78 FR 71869 was published as a proposed rule to implement the Hague Agreement. 

On February 4, 2014, the Intellectual Property Owners Association (IPO) submitted comments on the proposed Hague rules.

In summary, the IPO comments are directed to:

  1. 37 CFR 1.53(d)(1)(ii) - continued prosecution application (CPA) practice in international design applications (IDAs); and
  2. the payment of fees for IDAs when filing through the USPTO (indirect filing).

Proposed Rules Published: Changes to Implement the Hague Agreement concerning International Registration of Industrial Designs

The Patent Law Treaties Implementation Act of 2012 has resulted in new rules being proposed for implementing the Act. 

On October 21, 2013, 78 FR 62367 was published as a final rule to implement the Patent Law Treaty, which generally does not affect design patents, but does provide restoring the right of priority after the 6-month period to claim priority, within 2 months from the expiration of the 6-month period and upon grant of a petition that shows the delay was unintentional.

On November 29, 2013, 78 FR 71869 was published as a proposed rule to implement the Hague Agreement.  Of note, according to the proposed rule:

  1. an international design application is a "national application" or a "nonprovisional application" under 37 CFR 1.9;
  2. an international design application can include two or more designs, but there is a requirement for only one independent and distinct design - 37 CFR 1.1021 and 1.1064;
  3. a CPA cannot be filed in an international design application under 37 CFR 1.53;
  4. an international design application will typically publish at 6 months from filing/registration, but publication can be deferred or immediate publication can be requested; and
  5. the publication of the international design application will trigger access to an unpublished application (i.e., an unpublished/unexamined US design application related to the international design application) - 37 CFR 1.14.

The comment deadline date for providing written comments regarding the proposed rules is January 28, 2014.


Hague Agreement (Guest Post)

Further to our prior coverage of the implementation of the Hague Agreement, we are pleased to publish the following from Audrey Pastoret, a guest of ours from France.

The Patent Law Treaties Implementation Act of 2012 signed by President Obama on December 18, 2012 implements the Hague Agreement in the United States. It is intended to provide industrial designs with protection in states and governmental organizations parties to this arrangement through a single international application effected at the WIPO. Before the Hague Agreement, an application had to be filed in every country where protection was desired, resulting in several applications being filed for a single design patent. Under the Hague agreement a single application can provide protection in multiple countries.

An international application under the Hague Agreement does not require a prior national deposit, and can be filed either at the WIPO or at the national office. The application may be in English, French or Spanish.

When filing an application under the Hague Agreement, one must either be a citizen of a Contracting Party or a Member State of an international organization that is a Contracting Party. Alternatively, one must have either a residence or an habitual residence on the territory of a Contracting Party, and one must have an effective industrial or commercial establishment on the territory of a Contracting Party.

The Hague Agreement consists of three International Treaties, but since 2010 only two of them are still enforced:  The Geneva Act (1999) and The Hague Act (1960). (The London Act of 1934 was frozen in 2012).

The Geneva Act and the Hague Act are independent from each other, such that one country can join one or both. Accordingly, when asking for protection under the Hague Agreement in several countries, it is crucial to confirm that those countries are parties to the same Act. The United States are party to the Geneva Act but not the Hague Act. Consequently, the United States can ask protection in countries party to the same act (the Geneva Act) but cannot ask for protection in a country which is party only to the Hague act.

The Hague Agreement increases the protection duration for design patents in the US from 14 years to 15 years. This increase in protection duration is based on an initial 5 year protection which may be renewed for an additional 5 years, every 5 years until the total protection is reached, in countries where protection is desired. The total duration of design patent protection may vary according to each country’s rules.

Under the Hague agreement, an international application may contain a maximum of 100 Designs. All designs must belong to the same Locarno classification, which is an International Classification for Industrial Designs. Application costs are expected to increase with the number of designs claimed.

Under the Hague Agreement, publication takes place six months after the date of the international registration. However, an applicant may request immediate publication or request a deferment of publication.


Patent Law Treaties Implementation Act of 2012

S. 3486 (the "Act") has passed the House and the Senate, and awaits signature by the President.  

The summary of this Act reads, with emphasis added:

Amends federal patent law to implement the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Treaty) and the Patent Law Treaty. (Both treaties were ratified by the Senate on December 7, 2007.) Standardizes application procedures to be consistent with other member countries.

Of note:

1) The Act will amend 35 USC 173 to change the term of a design patent from 14 years to 15 years from the date of issuance.

2) The Act will add 35 USC 381-390, of which 390 provides for the publication of the international design application, and will amend 35 USC 154(d) to expand Provisional Rights to a published international design application.

3) Under the Hague Agreement and the Geneva Act, WIPO states the "international application may include up to 100 different designs.  All designs must, however, belong to the same class of the International Classification of Industrial Designs (the Locarno Classification)." Although not specifically set forth in the Act, it is expected that International Design Applications filed under this Act will also be able to be filed with up to 100 different designs belonging to the same Locarno Classification.