The USPTO moves another step closer to providing U.S. applicants the ability to file a single design patent application in multiple countries/territories. As you may recall from prior posts, a design patent covers the ornamental design of an article of manufacture, in other words a design patent protects how an article looks rather than its structural or functional features.
On February 13, 2015, the USPTO took the next step in becoming a member of the Hague Union by depositing its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement) with the World Intellectual Property Organization (WIPO). The Hague Agreement for designs is similar to the PCT system for utility patents and the Madrid Protocol for trademarks by allowing for a single initial filing to protect your rights in multiple countries/territories.
Now that the instrument of ratification has been deposited with WIPO, the treaty will go into effect on May 13, 2015. Once the treaty is in effect, U.S. applicants may file a single industrial design (i.e., design patent) application with the USPTO or directly with WIPO to register designs in over sixty-two (62) territories, rather than filing directly in each territory. As Japan also deposited its instrument of ratification on February 13th, Japan will also become a member country to the Hague Agreement on May 13, 2015. Under the Hague Agreement each design application may include up to 100 designs.
In addition to the efficiencies and cost savings that the Hague Agreement will afford to U.S. applicants seeking global protection, the implementation of the treaty also provides benefits to applicants for U.S. design patents. One such benefit is an extension of the design patent term from 14 years from issue to 15 years from issue. Thus, any U.S. design patents issued from an application filed on or after May 13, 2015 will have a term of 15 years. Another benefit is that provisional rights, which allow for a reasonable royalty for infringement occurring between publication and issuance, will now be available to applicants from the date of publication of an international design application which designates the U.S.
The final step in implementing the Hague Agreement will be for the USPTO to publish its Final Rules for processing and examining international design applications filed pursuant to the Hague Agreement. Therefore, check back with us shortly for a summary of the Final Rules once they publish.
For more information regarding the USPTO’s implementation of the Hague Agreement you can visit http://www.uspto.gov/patent/initiatives/hague-agreement-concerning-international-registration-industrial-designs.