Congress approved both the Hague Agreement Concerning International Registration of Industrial Designs (the "Hague Agreement") and the Patent Law Treaty ("PLT") in 2007.3 It was not until December 18, 2012, however, that the Patent Law Treaties Implementation Act of 2012 ("PLTIA") was enacted in order to bring the United Sates in alignment with these treaties.4
The U.S. Patent and Trademark Office ("USPTO") will propose and incorporate changes resulting from the two treaties separately.5 For example, the USPTO released "Changes to Implement the Patent Law Treaty" ("Proposed Rules") on April 11, 2013.6 These Proposed Rules only provide guidance on the portion of the PLTIA that relates to the PLT.7 A separate rule proposal will be released on the portion of the PLTIA that relates to the Hague Agreement.8
Changes due to the PLT are discussed below, which include and incorporate some of the Proposed Rules. Changes due to the Hague Agreement are also discussed below, but this discussion is necessarily limited to reading the PLTIA and the Hague Agreement given that the potential rules package has not yet been proposed by the USPTO.
- Changes Due to the PLT
The PLT streamlines filing and processing procedures for patent applications filed as international applications under the Patent Cooperation Treaty, but does not apply to provisional, reissue, design, or plant applications.9 Changes relating to the establishment of a filing date will only be effective for patent applications that are filed on or after December 18, 2013.10 All other changes will apply to all patents and applications (issued or pending) on December 18, 2013.11
- A Filing Date Will be Easier to Obtain
To comply with the PLT, non-provisional U.S. utility patent applications filed without claims will be given a filing date.12 The PLTIA amends 35 U.S.C. § 111 to state that "the filing date of an application shall be the date on which a specification, with or without claims, is received."13 There are, however, some limitations associated with this change. First, it does not apply to design patent applications, as these are covered under newly amended 35 U.S.C. § 171, which the USPTO interprets as requiring a claim.14 Second, while a claimless application may meet the requirements of 35 U.S.C. § 111, it may not meet the requirements of 35 U.S.C. §§ 112 (specification requirements) and 113 (drawing requirements).15 It is also likely to pose inventorship concerns, as it is difficult if not impossible to predict inventor identities without claims upon which to base the determination. Therefore, failure to include at least one claim could prevent the application from maturing into a patent, prevent it from serving as a priority or benefit application, or create other problems later based on improper inventorship.16 Third, if the Proposed Rules are adopted, failure to provide a claim within eight months of filing will result in a patent term reduction.17 As a practice tip, it is highly recommended to still include one or more claims at the time of filing.
Additionally, a filing date may be obtained even if drawings are not filed with the application.18 Without drawings, however, an application may be insufficient under 35 U.S.C. § 113, which requires an applicant to provide drawings where necessary for the understanding of the subject matter.19 It might be difficult to obtain a patent from an application filed without drawings, particularly in the mechanical arts, because drawings submitted after the filing date may not be used to: 1) overcome an argument that the specification is insufficient based on lack of enablement or an argument otherwise regarding inadequate disclosure (e.g., lack of written description) or 2) supplement the original disclosure for the purpose of claim scope interpretation.20 The USPTO discourages an applicant from omitting drawings from applications.21
A filing date for a non-provisional application can be received even without a specification, as long as applicant files the application "by reference."22 In most cases, this is accomplished by merely referencing an application number and an authority or country in which the priority application was filed.23 According to the Proposed Rules, any application by reference will be treated like an application with missing parts, and the applicant will be given a period of time to provide the missing part(s).24
- Rights Extended or Revived Under the Lower "Unintentional" Delay Standard
An extension to the right of priority under 35 U.S.C. § 119(a) will be available if a petition is filed within a two-month period after the twelve-month period expires.25 For design patents, a two-month extension is available after the six-month period.26
In order to comply with the PLT, only a showing of "unintentional" delay is required to: revive an abandoned application; accept a delayed maintenance fee; or accept a response by the patent owner in a reexamination proceeding.27 Previously, the delay was required to be "unavoidable."28 Similarly, extension of a priority period under 35 U.S.C. § 119(a), as discussed above, only requires an applicant to show "unintentional" delay.29 The USPTO will initially charge $1,700 for any extension or revival, subject to future increases.30
- Changes Due to the Hague Agreement
Previously, a design patent applicant wanting to file a patent application outside of the United States was required to file in each country or jurisdiction—unless that patent applicant was a company that had a location within a contracting party to the Hague. This sometimes resulted in a disadvantage to smaller companies that did not have international locations.31 The PLTIA remedies this problem and also provides for other advantages, such as longer patent terms for design patents, easier and more efficient filing procedures, a possible increase of designs allowed per application, etc.
- The Design Patent Term Increases to Fifteen Years
The patent term for design patents is extended from 14 years from the date of grant to 15 years from the date of grant.32 Design patent applications filed on or after December 18, 2013 will receive the longer patent term, as this amendment only applies to applications filed on or after the effective date of the PLTIA.33
- International Filing is Streamlined and More Efficient
Beginning December 18, 2013, a design patent applicant may file an international design application with the USPTO if the applicant is a person who is a national of the United States, or has a domicile, habitual residence, or a real and effective industrial or commercial establishment in the United States.34 The applicant may then designate multiple jurisdictions in which he or she would like to receive design patent protection.35 This is done using one international application and generally lowers transaction costs.36 Additionally, an international design application that designates the United States shall have the effect of a design patent application filed at the USPTO, with all questions and procedures determined under 35 U.S.C. §§ 171-173, unless otherwise required by the Hague Agreement.37 The international design application must include: 1) a request for international registration under the treaty; 2) a designation of a contracting party to the Hague Agreement; 3) data concerning the applicant; 4) reproductions of the industrial design; 5) an indication of the product(s) that constitute the industrial design; 6) fees; and 7) other particulars.38
The PLTIA adds new section 386 entitled "Right of Priority."39 Both a national application and an international design application that designates the United States are entitled to: 1) a right of priority in accordance with 35 U.S.C. §§ 119 and 172 to a prior international design application if the prior international design application designates at least one country other than the United States; and 2) the benefit of the filing date in accordance with 35 U.S.C. § 120 of a prior international design application if that international design application designates the United States.40 Additionally, the international design application is entitled to: 1) a right of priority in accordance with 35 U.S.C. §§ 119 and 172 to a prior foreign application or to a prior international application filed under the Patent Cooperation Treaty ("PCT Application") if the PCT Application designates at least one country other than the United States; and 2) the benefit of the filing date in accordance with 35 U.S.C. § 120 of a prior national application or of a PCT Application that designates the United States. 41 The PLTIA also amends the definition of an effective filing date in 35 U.S.C. §§ 101 and 102(d)(2) to incorporate the new section 386.42 The amendments relating to sections 101 and 102(d)(2) only apply, however, to applications or patents that contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.43
- Publication of Design Applications Under the Hague Agreement Can Lead to Provisional Rights
According to the Hague Agreement, an international design application will be published by the International Bureau of the World Intellectual Property Organization.44 Within the United States, provisional rights may start at the date of publication of an application.45 The PLTIA amends 35 U.S.C. § 154 to recognize that publication under the Hague Agreement falls within the definition of "publication" in regards to provisional rights.46 Therefore, an international application that designates the United States may be used as the basis for provisional rights.47
- A Design Application May Contain More than One Design
Under the Hague Agreement, an international design application may include two or more industrial designs.48 In fact, an international application may contain up to 100 different designs per application.49 Currently, a design patent application filed with the USPTO can only contain one patentably distinct design.50 It is unknown how the USPTO will address the ability to file up to 100 designs in one application, but early indications are that conventional U.S. restriction practices will still be applied. Details relating to how the USPTO will implement this change, and other changes within the PLTIA relating to the Hague Agreement, will be available upon the USPTO’s release of proposed rules.