Patent Law Treaties Implementation Act Bringing Changes to Design Patents for US Inventors and Companies

The Patent Law Treaties Implementation Act (the Act) has passed the House and Senate and is expected to be approved by President Obama before the end of the year. The Act implements the Geneva Act of the Hague Agreement, which is an international registration system for the protection of industrial designs (or the aesthetic designs eligible for design patent protection in the US). The Act will go into effect one year from the date of enactment.

The most apparent benefit of the Act is that it will allow US inventors and companies to file international design patent applications directly with the US Patent and Trademark Office. This will reduce the cost of obtaining foreign design protection by eliminating the need to have foreign counsel involved in the filing process. However, at the present time, the list of member states to the Hague Agreement is very limited. The European Union is the most notable member state and will likely provide the most benefit for US inventors and companies. A complete list of member states can be found here.

In addition to direct access to foreign design protection, the Act also provides another important benefit with respect to enforcement of design rights in the US. International design applications are usually published shortly after filing. The Act provides that such publications can provide provisional rights – the possibility of obtaining damages for the period between publication and issuance – for US design patents. Previously available for utility patent publications, the effect of provisional rights has been minimal because of the requirement that the invention as claimed in the publication be “substantially identical” to the invention as claimed in the issued patent. Provisional rights may prove more useful in connection with designs because far fewer substantive amendments are made during the design examination process. In addition, the early publication of the design and increased likelihood of provisional rights could provide a substantial deterrent to would-be infringers.

The Act also increases the term of a US design patent to 15 years from issue (up from 14 years). We will provide additional information as the effective date of the Act approaches. However, in the meantime, if you have any questions, please feel free to contact us.

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