On December 5, 2012, the US Congress passed the Patent Law Treaties Implementation Act of 2012, which is expected to be signed into law by the President. The Act implements provisions from two treaties:
- The Hague Agreement Concerning International Registration of Industrial Designs
- The Patent Law Treaty. The new law attempts to simplify the formal obligations and reduce costs for American inventors when seeking patent protection outside the United States.
For industrial patent designs, the new law streamlines the filing of industrial design patent applications by allowing a single application to be filed in the US Patent and Trademark Office instead of separate applications in multiple countries. Other changes to existing law on industrial design patent filings would include:
- Extending the design patent term by an additional year, with the resulting term to be 15 years from the date of issuance;
- Allowing applications to include multiple design inventions within a single international application;
- Creating provisional damages rights in the publication date of the international application.
In an attempt to further harmonize the patent application process with procedures abroad, changes implemented under the Patent Law Treaty would include:
- Reviving unintentionally abandoned foreign patent applications;
- Accepting an unintentionally delayed response by the patent owner in a reexamination proceeding;
- Allowing for extensions to file non-provisional applications in the US for previously filed foreign provisional applications or applications for the same invention in a foreign country;
- Allowing for unintentionally delayed claims to priority filing dates under the Patent Cooperation Treaty.
Once signed into law, patent applicants will want to carefully evaluate whether they can take advantage of the new provisions for industrial design applications and the changes relaxing the effect of missed deadlines, unintentionally abandoned applications, and late priority claims for foreign-filed patent applications.