Geneva Act

U.S. Continues to Delay Ratification of the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs

June 11, 2010
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.
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Patent Law Treaties Implementation Act of 2012

December 10, 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:
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Hague Agreement (Guest Post)

April 10, 2013
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.
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USPTO Publishes Final Rule on Changes to Implement the Hague Agreement Concerning Industrial Designs

April 2, 2015
On April 2, 2015, the U.S. Patent and Trademark Office ("USPTO") published its Final Rule on Changes to Implement the Hague Agreement Concerning the International Registration of Industrial Designs ("Hague Agreement").  80 F.R. 63, pp. 17918-17971.  These changes go into effect on May 13, 2015.  Some of the changes only apply to patent applications filed on or after September 16, 2012 (e.g., power of attorney, application by assignee, inventor’s oath/declaration, and application data sheet).  Other changes only apply to patent applications filed on or after December 18, 2013 (e.g., continuing applications and filing of a certified copy of a previously-filed application).
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Recap of USPTO's Design Day 2017

May 8, 2017
The U.S. Patent and Trademark Office (USPTO) held its 11th annual Design Day on April 25, 2017.  Andrew Hirshfeld, Commissioner for Patents, again kicked off this year's presentations with a welcome address and highlights.  Commissioner Hirshfeld also introduced Karen Young, Technology Center (TC) 2900's new director, who took over TC 2900 upon the retirement of former TC 2900 Director Robert Olszewski.

Director Young took the opportunity to introduce herself to the design patent community in attendance and wish former TC 2900 Director Robert Olszewski well in retirement.  Director Young then discussed the state of TC 2900, including statistical breakdowns of various metrics such as number of design patent application filings, backlog, pendency, and workforce, and a showcase of the design examiners in the Silicon Valley and Detroit satellite offices. 

David Gerk, Attorney-Advisor for the USPTO's Office of Policy and International Affairs, followed Director Young and discussed developments in international design protection.  Among other topics, Mr. Gerk discussed trends and developments in the Hague Agreement; various online resources pertaining to the Hague Agreement (e.g., Hague Express Database, USPTO, WIPO); topics from a recent meeting of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) surrounding graphical user interfaces (GUIs)/icons/typeface; and ongoing projects for the Industrial Design 5 Forum (ID5) (ID5, generally speaking, is a forum focusing on "improving consistency in registration policies, cataloging office practices, promoting interoperable procedural frameworks, and protecting emerging designs such as graphical user interfaces (GUIs), animations and other new technology designs.").

Next, Todd Hunter, Director Copyright and Industrial Design Branch of the Canadian Intellectual Property Office (CIPO), provided statistics relating to industrial design application filings in Canada and discussed similarities/differences between industrial design practice in Canada and design patent practice in the United States.

Richard Stockton next presented on the topic of seeking early dismissal in design patent litigations.

The final discussion before the lunch break involved a panel of design examiners and design practioners discussing design patent prosecution best practices.  Notable issues addressed by the panel included why a preliminary amendment (PA) might be filed when filing a design patent application, objections/rejections based on broad titles and possible ways to prevent or overcome such objections/rejections, how to disclaim aspects of a photographic image, and appendices filed with design patent applications.    

The next presentation, after the lunch break, was given by Matthew Zacherle and Thomas Boshinski of WestRock Company, indicated to be the second largest paper packing company in the world. This presentation gave us a peek into the design process (from Mr. Zacherle, Senior Designer for WestRock) and some of the legal issues of working with designers (from Mr. Boshinski, Senior Counsel for WestRock).

The next presentation also focused on the interaction between industrial designers and intellectual property protection. Specifically, this presentation was a panel that explored how the fashion industry uses intellectual property to protect fashion designs, which can change and evolve very rapidly. Several of the presenters noted that fashion designers and fashion brands are investing in design patents.

After a short break, the presentations resumed with a mock argument that explored how prosecution can affect in claim interpretation and enforcement of design rights. The mock arguments were very well done and solicited quite a few laughs from the audience. However, the underlying message was serious; in each case, a seemingly inconsequential event during prosecution resulted in a judgement that was counter to the result that the audience expected. The takeaway was to always be thinking of how the decisions made in prosecuting a design application could affect future enforcement of the corresponding design patent.

The final presentation for Design Day 2017 was a summary of recent decisions by Joseph Anderson. Mr. Anderson provided an overview of decisions involving design patents from the Court of Appeals for the Federal Circuit and district courts, as well as the Patent Trial and Appeals Board.
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The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important design patent issues. These postings are in no way representative of the opinions of the Oblon firm, or its clients, but rather the personal views of the individual authors.