United States: U.S. Implementation Of The Hague Agreement – What You Need To Know

Last Updated: February 21 2013
Article by Darrell G. Mottley1

On Dec. 18, 2012, U.S. President Barack Obama signed the Patent Law Treaties (PLT) Implementation Act of 2012 into law. The Hague Agreement Implementation section of the act adds a new Chapter 38 to the patent provisions of Title 35 of the U.S. Code. The Hague Agreement, administered by the World Intellectual Property Office (WIPO), provides only a simplified procedural avenue to obtain industrial design protection in selected member countries. The provisions directly pertaining to the U.S. Hague Implementation will become effective one year from enactment or when the U.S. deposits its implementing legislation to the WIPO.

Hague System Generally

To understand the context of the Hague Industrial Design system, a short review of the operation of the system is in order. National intellectual property industrial design regimes are based generally on two types - a substantive design examination structure or a non-examination scheme. The substantive examination structure reviews the proposed design against prior art designs (prior art) for novelty and non-obviousness. If the proposed design passes successfully through examination, upon publication, the design is enforceable against third parties. In a non-examination system, the design is not substantively examined against any prior art. The publication and registration of the design enables the design rights to be enforced under the country's national laws. In general, the non-examination systems allow substantive validity of the design rights to be challenged during litigation or other judicial proceedings.

Early versions of the Hague Agreement in the 20th century only dealt with non-examination systems, e.g., only national intellectual property design regimes having a simple registration process. In contrast, the 1999 Geneva Act of the Hague Agreement was created to accommodate national intellectual property regimes which have substantive examination. As a result, the Hague Agreement using the Geneva Act provides for an administrative global interface for coordination of both examination and non-examination systems for industrial designs.

United States Enactment

Following the enactment of U.S. patent reform with the Leahy-Smith America Invents Act of 2011, the PLT Implementation Act creates a new international design application that entitles U.S. applicants to file a design application in the 45 member countries that are Contracting Parties of the Geneva Act of the Hague Agreement. Likewise, applicants whose countries or regional systems are members of the Geneva Act can file applications in their home country, designate the U.S. for examination and receive an examination on the merits from the U.S. Patent and Trademark Office (USPTO). During substantive examination of the design application, the applicant will need to engage local U.S. counsel to respond to Office Actions issued by the USPTO.

Some noteworthy changes in the law include the term of design patents increasing from 14 years from issuance to 15 years2, and enabling domestic3 and foreign4 priority claims arising from the international design application.

Expected Changes

Provisional Rights

Notably, the new PLT Implementation Act provides for the first time provisional rights5 resulting from publication of the international design application designating the U.S. Assuming a U.S. design patent eventually issues substantially similar to a published design in the international application, this provision sets forth that a patent owner may be entitled to a reasonable royalty for any person who makes, uses, offers for sale or sells in the U.S. the claimed invention, or imports the invention into the U.S., during the period between publication of the patent application and the date the patent issued. The accused infringer must have had actual notice of the published patent application6 and a court enforcement action must be brought no later than six years after the patent issued.7

While provisional rights will be now available for design patents that mature for international design applications, 35 U.S.C. § 289 remains unchanged and sets forth a unique remedy only available for the infringement of a design patent. This statute focuses the infringement inquiry on whether or not the claimed design has been applied to an article of manufacture. Section 289 infringer profits solve the problem of apportionment for design patents.8 With respect to damages, the patent holder will need to access how much in the damages pertains to provisional rights versus Section 289 total infringer profits.

U.S. Examination of International Design Applications

While the USPTO has not issued any new rules of practice for international design applications, in accordance with the Geneva Act and the new PLT law, international design applications designating the U.S. will have the same legal effect as a regularly filed design patent application.9 There have been some questions about whether a design patent could mature from an international design application designating the U.S. and not be examined by the USPTO. The Geneva Act provides that any designated Contracting Party may refuse, in part or in whole, the industrial designs that are the subject of the industrial design registration "where the conditions for grant of protection under the law of the Contracting Party are not met."10 However, in light of Article 14(2)(a) of the Geneva Act, if a refusal has not been communicated to WIPO by the Contracting Party prior to expiration of the designated refusal period, the "international registration shall have the same effect as a grant of protection of the industrial design under the law of the Contracting Party." This provision would appear to mean that if there is no Office Action issued by the USPTO within the refusal period (mostly likely within 12 months from publication of the international design application), a design patent will grant automatically from an international design application. This view cannot be the case or the intent of the new law. The U.S. PLT Implementation Act provides that "[t]he Director shall cause an examination to be made ... of an international design application."11 And "[a]ll questions of substance and ... procedures ... regarding an international design application designating the United States shall be determined" as regularly filed design applications.12 It is submitted by the writer that "conditions for grant of protection" in the Geneva Act should include any Office Action transmitted from the USPTO to WIPO, such as unity of invention restriction/objection to a Notice of Allowance.13

U.S. Patent Reform - America Invents Act

The America Invents Act (AIA) amends the U.S. patent laws applicable to the conditions of patentability to convert the U.S. patent system from a "first-to-invent" system to a "first inventor-to-file" (FITF) system. A patent application with at least one claim having an effective filing date on or after March 16, 2013, will be examined under FITF provisions.14 There is no doubt that international design applications will be examined under this new scheme.15 The provisions for conditions for patentability including novelty and obviousness will be changed. The AIA enables U.S. patents and U.S. patent application publications to be prior art of their earliest effective U.S., foreign or international filing date. As discussed, international design applications designating the U.S. will be deemed published under 35 U.S.C. § 122(b).16 International design applications will be prior art as U.S. published applications per changes in the law.17 Furthermore, international design applications will be subjected to new post-grant review (PGR) procedures.18

In the Geneva Act, the applicant must be provided an opportunity to defend against invalidation of the industrial design application.19 Under the FITF system, PGR allows the Patent Trial and Appeal Board (PTAB) (which replaces the Board of Patent Appeals and Interferences) to review the patentability of a patent on any invalidity ground that could be raised under novelty, non-obviousness, written description except best mode within the first nine months after grant of a patent.20 A third party may challenge a patent based on evidence of public use, on-sale activity or other public disclosure, as well as failure to comply with written description, enablement or patentable subject matter requirements. PGR is available only for patents that issue with a priority date on or after March 16, 2013. Hence, it is certain that design patents maturing from international design applications will be subjected to PGR proceedings if challenged by a third party.

Multiple Designs in One International Design Application

An international design application allows a maximum of 100 designs to be included under a single Locarno Class. The Geneva Act enables a Contracting Party to notify WIPO that the country laws have a requirement of a unity of design.21 In the U.S., a design patent must be directed to a single design invention.22 However, the design application can contain multiple embodiments directed to the same inventive concept.23 Nevertheless, if more than one patentably distinct design is shown in the drawings in a design application, the USPTO will issue a restriction requirement and the applicant must select one of the designs to pursue in the application unless the restriction requirement is successful rebutted by the applicant. Hence, divisional applications will need to be filed to receive examination on the non-elected designs. As result, while an applicant may situate many designs in one international design application and designate the U.S., they many find themselves filing multiple divisional applications in the U.S., or possibly filing additional fees for each design divided from the international design application.24

Expedited Examination for Designs

One major benefit of filing a regularly filed design application is the benefit of the expedited examination process. Expedited examination is available to all design applicants who first conduct a preliminary examination search, file information disclosure statement, have proper drawings and file a request for expedited treatment accompanied by a special fee.25 While the USPTO has not issued any new rules of practice for international design applications, it does not appear likely that an international design application will be able to use the expedited examination procedure initially. There appears to be no explicit provisions in the new law nor within the Geneva Act to accomplish this procedure at the present time.

Duty of Candor

There is no substantive examination conducted by WIPO for industrial design applications. U.S. examination requires that each person substantially involved with the preparation and prosecution of a patent has a duty of candor and good faith in dealing with the USPTO, including a duty to disclose information that is material to patentability.26 Failure of duty of disclosure can render a patent unenforceable for "inequitable conduct" in a judicial proceeding. The most common procedure for providing information to the USPTO is by way of an Information Disclosure Statement and within certain timeframes and fees (if applicable) for consideration by the Examiner.27 It is expected that the USPTO will need to issue new rules of how these statements may be submitted in international design applications designating the U.S.

Inventor Oath or Declarations

Recent changes to the U.S. inventor's oath or declaration (declaration) requirements allow filing by the assignee as the applicant, postponing filing until the application is otherwise in condition for allowance, reusing previous declarations and providing an alternative to the declaration in situations where the declaration cannot be executed. The declaration can now be made in an inventor's assignment recorded with the USPTO. There is no process at this stage for submission of inventor declarations neither to WIPO nor to the USPTO for industrial design applications. Furthermore, the inventor declarations must be submitted prior to issuing a notice of allowance, otherwise the application runs the risks of abandonment. This issue brings to light additional risks to industrial design applications without proper U.S. local counsel support. The USPTO will need to release new rules concerning how the declaration requirement will be handled.

Observations on Use of the Hague System

While the Hague System enables a simplified filing procedure to member countries, it is not a "one-size-fits-all" approach. To accommodate the simplified processing, a single set of drawings is used in the application for all of the designated countries. Various provisions are limited to the most restrictive country law that is designated in the application. For example, there is no provision in the Geneva Act to designate only certain designs to a subset of contracting parties. It is an all or nothing approach, so to speak. For example, maybe a design owner wants to defer publication in the European Union for design/business strategy reasons and also designate the U.S. in the international design application? While the Geneva Act allows deferment of publication up to 30 months, the U.S. patent law has no provision for deferment of publication. Other contracting parties, such as Singapore, have no deferment period under their national laws. As a result, the applicant will need to directly file a national application in the target country to get the desired national treatment or file multiple industrial design applications with the desired designated countries.

The aim of most global patent systems, like that of the U.S. patent system, is to promote progress and innovation in science and technology. Many jurisdictions have geo-specific patent principles similar to those of the U.S., but each design system also has various nuances and implementations. Under the Hague system, the local substantive examination process remains unchanged and the legal standard for obtaining a design patent is not affected. Hence, the applicant's country selection and drawings should be based on dynamics, including strategies to maximize design rights, and whether the intellectual property rights (IPR) regime of the member country accepts partial designs, shaded or unshaded figures, the strength of IPR enforcement, where the product would be sold, potential copying, design prosecution and examination cost, and the like. Because there is no substantive examination by WIPO, the applicant's quality of design drawings, including shading, contouring and further features of the drawings, will still need to be addressed and customized prior to filing a design application under the Hague Agreement.

The next few years may be "undiscovered country" for patent lawyers as the new law is implemented. Applicants should carefully navigate the legal issues to obtain desired design protection when using the Hague System.

Originally published in Intellectual Property Today

Footnotes

1 Darrell G. Mottley is a shareholder of the intellectual property law firm of Banner & Witcoff, Ltd., focusing on patent, trademark and copyright cases, including opinions, licensing and litigation. He blends combinations of design patent, utility patent, trademark and copyright intellectual property tools for creative, driven-design clients.

2 35 U.S.C. § 173.

3 35 U.S.C. § 386(c).

4 35 U.S.C. §§ 386(a)-(b); See also Geneva Act, Art. 6(1)(a)-(2)(Priority under Paris Convention must be recognized by the Contracting Party).

5 35 U.S.C. § 154(d)(1).

6 35 U.S.C. § 154(d)(1)(B).

7 35 U.S.C. § 154(d)(3).

8 See generally Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437 (Fed. Cir. 1998) (discussing of the genesis of statutory infringer profits remedy for design patent infringement).

9 Geneva Act, Art. 14(1); See 35 U.S.C. § 385.

10 Geneva Act, Article 12.

11 35 U.S.C. § 389(a).

12 35 U.S.C. § 389 (b); See 35 U.S.C. §§ 171(a)-(c), 173 which incorporates the provisions of patent law of title 35 for design patents.

13 35 U.S.C. § 389 (d)(a patent may issue from an international design application designating the United States in accordance with the provisions of Title 35). 35 U.S.C. § 151 governs issuance of a patent which requires a written notice of allowance and payment of a fee within three months.

14 The PLT Implementation Law for the Hague Agreement will be effective at least after Dec. 18, 2013.

15 The first-to-file provisions become effective on March 16, 2013.

16 35 U.S.C. § 390.

17 35 U.S.C. § 102(a)(2) (effective on March 16, 2013).

18 35 U.S.C. § 321.

9 See Geneva Act, Article 15.

20 See 35 U.S.C. § 282(b)(2) or (3) for any grounds to challenge the validity of patents.

21 See generally, Geneva Act, Article 13(1) (provisions for special requirement concerning unity of design by contracting parties).

22 See MPEP § 1502.01(D).

23 SeeMPEP § 1504.05; See also In re Rubinfield, 270 F.2d 391, 395 (CCPA 1959) (discussing that a design application can disclose more than one embodiment of the design).

24 See Geneva Act, Article 13(3).

25 See 37 C.F.R. § 1.155.

26 See 37 C.F.R. § 1.56.

27 See 37 C.F.R. § 1.97.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions