Brief History of the Hague Agreement


The Hague Agreement is part of the legal framework of the Hague System -- a system that provides a simplified mechanism for registering industrial designs in contracting states.  Under the Hague Agreement, an industrial design can be registered in any number of designated contracting states by filing a single international application, in a single language, with a single set of fees, and in a single currency.


Share

Read More

It is true what they say, secrets can come back to haunt you.  At least they did for Ford in a recent appeal before the USPTO’s Board of Patent Appeals and Interferences (the BPAI) where the BPAI affirmed that an automotive spy photograph published in Trailer Life Magazine, in combination with other art, was sufficient to render obvious the claimed design of a front grill for a Ford Expedition.

Please click here for full article with images.


Share
Plaintiff Yokohama Rubber Company LTD (“Yokohama”) sued Defendant Stamford Tyres (“Stamford”) in the U.S. District Court for the Central District of California (Case No. SACV 07-00010-CJC).  Yokohama asserted that Stamford infringed U.S. Design Patent No. D512,014 (the “asserted patent”), directed to the ornamental design for an automobile tire, by selling the Stamford ST-08 tire.  As a defense, Stamford alleged that the asserted patent was unenforceable due to Yokohama’s inequitable conduct before the United States Patent and Trademark Office (“USPTO”), for the failure to cite U.S. Patent No. D443,565S (the “prior art reference”) during prosecution of the asserted patent. 


To prove inequitable conduct, the accused infringer must present evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the USPTO. Stamford, the accused infringer, showed the non-disclosed prior art reference was material by alleging that the Japanese Patent Office rejected the Japanese counterpart to the asserted patent solely because of its similarity to the prior art reference.  Further, Stamford showed intent to deceive by alleging that one of the inventors of the asserted patent was involved with the prosecution of the Japanese counterpart to the asserted patent and knew that the Japanese Patent Office initially rejected that application because of its similarity to the prior art reference, and yet failed to disclose the prior art reference to the USPTO during prosecution of the asserted patent. 


Share

Read More

In inter partes reexamination 95/000,034, Vanguard Identification Systems Inc., v Bank of America Corporation, the BPAI reversed the examiners obviousness rejection, emphasizing the difference between a proper obviousness determination for design and utility patents. An obviousness determination for a utility patent must consider the perspective of one of ordinary skill in the art to which the invention pertains. For design patents, obviousness is based on the perspective of designer of ordinary skill who designs articles of the type involved. As this case demonstrates, failing to appreciate the distinction can lead to dire consequences for third party requesters.


Please click here for full article with images.


Share
The average time to obtain a US Design Patent under regular examination is about 15 months from filing to issue.  This pendency is short relative to Utility Patent Applications, which require on average over 35 months of examination before issuing.  However, some companies need Design Patent protection even faster.  For example, when an competitor is about to launch a similar product on the market, or when investors are demanding patent protection before further funding, or when the product is typically in vogue with consumers for only a short period of time, companies need a Design Patent as soon as possible.  In such situations, they can request the USPTO to examine their design patent applications under an expedited procedure provided under 37 CFR 1.155.  Under the expedited procedure, also known as the “Rocket Docket,” a design application issues on average within 5 months!


This expedited procedure is available upon request to any design applicant who complies with certain requirements, as discussed next.


Share

Read More