You probably didn’t read much about it in the papers, but on December 18, 2012, President Obama signed the Patent Law Treaties Implementation Act3 into law. The reason why this may be important news for you is because this bit of legislation grants some creators an important new weapon against copycats.
Some background: more than 75 countries, including the members of the European Union and the African Intellectual Property Organization, have joined something called the Hague Agreement. It’s not a Jason Bourne thriller; instead, it’s a system to simplify registration of what most of the world calls industrial designs. (In the U.S., it’s called a design patent.) When the law takes effect in December 2013, it will let someone in the U.S. seeking a design patent apply for protection in all participating nations with a single filing. The statute also stretches a design patent’s life from 14 to 15 years.
All good, but the big news is the extension to design patents of what are called provisional rights. For utility patents — the kind that protect functional aspects of an invention — the U.S. Patent and Trademark Office publishes the applications long before a patent is granted. To protect applicants in the meantime, U.S. law has allowed them to sue someone who copies their inventions while the patent is pending and recover a reasonable royalty — the “provisional rights.”
Under the new law, applications for design patents also will be published, and provisional rights will be available, too. The standard for relief is whether the drawings for the ultimately issued patent are “substantially identical” to those submitted for the application. Utility patent applications often are revised; design patents, not so much. Moreover, design patent applications probably will get published faster than utility patent applications, so provisional rights likely will be available even longer. Finally, seeking a design patent typically is less complicated and less costly than getting a utility patent.
So what qualifies for a design patent? That’s a question best answered in a specific context by a patent attorney. As a general proposition, they protect original ornamental design elements of an otherwise functional or useful item. So it might be the styling of a strap on a high heel, the ornamentation on a handbag or the appearance of a set of sunglasses, among many other things. And it also might be an effective new way to crack down on copyists.