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).
As previously reported in this blog (here, and here), the Hague Agreement basically establishes an international registration system that facilitates protection of industrial designs (i.e., design patents) in member countries and intergovernmental organizations (“Contracting Parties”) by way of a single, “standardized,” international design application filed either directly with the International Bureau of WIPO or indirectly through an applicant’s Contracting Party (which now includes the USPTO).
Specifically, the Final Rule addresses these eight main changes to U.S. practice:
- Standardizing formal requirements for international design applications;
- Establishing the USPTO as an office through which international design applications may be filed;
- Providing a right of priority with respect to international design applications;
- Treating an international design application that designates the United States as having the same effect from its filing date as that of a national design application;
- Providing provisional rights for published international design applications that designate the United States;
- Setting the patent term to 15 years from the date of patent grant, for design patents issuing from both U.S. national design applications and international design applications designating the United States;
- Providing for USPTO-based examination of international design applications that designate the United States; and
- Permitting an applicant’s failure to act within prescribed time limits in an international design application to be excused as to the United States under certain conditions.
Also worth noting:
- Pursuant to Article 10(5) of the Hague Agreement, the USPTO will “keep international design registrations confidential until publication of the international registration by the International Bureau. This provision does not alter the Office’s long-standing practice to make application files available to the public to satisfy the constitutionally mandated quid pro quo requiring public disclosure of patented inventions.”
- Rule 1.84(a)(2) is amended to “eliminate the requirement for a petition and fee set forth in § 1.17(h) to accept color drawings or photographs in design applications.”
- Rule 1.109 is amended “such that its definition of ‘effective filing date’ is no longer restricted only to first inventor to file applications, but applies regardless of whether an application is a first to invent or a first inventor to file application.”
- Rule 1.155 is amended “to provide for expedited examination of an international design application that designates the United States” provided that “the international design application must have been published pursuant to Hague Agreement Article 10(3).”
- New Rule 1.1011(a) “specifies that only persons who are nationals of the United States or who have a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the territory of the United States may file international design applications through the [USPTO].”
- An international design application that designates the U.S. must contain a claim in order to be entitled to a filing date in the U.S. If such an application does not contain a claim, “the International Bureau will invite the applicant to submit the claim within a prescribed time limit and will accord a date of international registration as of the date of receipt of the claim (assuming there are no other filing date defects).”
- New Rule 1.1028 is added to “make clear that an international design application may contain a request for deferment of publication, provided the application does not designate the United States or any other Contracting Party that does not permit deferment of publication.”
- New Rule 1.1052 is added to “set forth a procedure for converting an international design application designating the United States to a [U.S.] design application.”
- The Final Rule does not provide for the filing of a continued prosecution application (“CPA”) in an international design application.
- “An international design application designating the United States has the effect of a U.S. patent application and thus is subject to § 1.56 [the duty of disclosure].”
- “International design applications designating the United States are subject to the same substantive conditions for patentability as regular U.S. applications, including the written description requirement under 35 U.S.C. 112(a).”