---DRAFT--Summary Comparison of U.S. Design Patent Law (Title 35) Before &
After Amendments in Current Bill to Implement the Hague Agreement
Topic
Current Title 35
Who may file a design patent
“application” in the U.S.?
“Whoever invents any new,
original and ornamental design
for an article of manufacture…”
can file a U.S. national
application…” §171
“international design
application” (Hague) filings at
USPTO
Only domestic applications
which may include priority
claims to a foreign application,
international applications (PCT)
or prior U.S. application.
Applications under the Hague
agreement cannot be filed at the
USPTO yet.
6 month grace period for a U.S.
filed design application to claim
priority to a foreign application
or an international application
(PCT - §365) designating at least
one country other than the US.
(§119 (a)-(d) as modified by
§172)
Foreign Priority
Domestic Priority
12 month grace period for a U.S.
filed design application to claim
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Title 35 as Proposed to be
Amended in 2010 Bill to
Implement the Hague
Agreement
“Whoever invents…” may file
U.S. national application (§171),
but only U.S. nationals or those
that are domiciled, have a
habitual residence, or a real and
effective industrial or
commercial establishment in
the U.S. may file an
“international design
application” at the USPTO
§382(a).
Design applications under the
Hague agreement (“international
design applications”) may be
filed at the USPTO by entities
described in §382(a). [§386(b)]
6 month grace period for an
“international design application
designating the U.S.” to claim
priority to a foreign application,
international application (PCT §365)) designating at least one
country other than the US or an
“international design
application” designating at
least one country other than the
U.S.(§386(b)) . (§119 (a)-(d) as
modified by §172)
National applications shall also
be entitled to the benefit of the
filing date of a prior
“international design
application” designating at least
one country other than the U.S.
[§386(a)].
12 month grace period for an
“international design application
---DRAFT--Summary Comparison of U.S. Design Patent Law (Title 35) Before &
After Amendments in Current Bill to Implement the Hague Agreement
priority to a domestic application
or an international application
(PCT) designating the U.S. (§120)
Registration Date
Patent issue date is “registration
date” of a U.S. design patent.
Effective Prior Art Date
U.S. design applications have an
effective prior art date of their
filing date in the United States
under §102(e).
Relief from Time Limits of
“international design
application”
(N/A - No international design
application)
Withdrawn , renounced,
cancelled, or abandoned
international design application
(N/A - No international design
application)
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designating the U.S.” to claim
priority to a domestic
application, an international
application (PCT) designating the
US or an “international design
application” designating the
U.S. (§386 (c)).
National applications shall also
be entitled to the benefit of the
filing date of a prior
“international design
application” designating the U.S.
[§386(c)].
Filing date of an “international
design application” in the U.S. is
its effective registration date.
§384(a)
An Applicant may request review
of the filing date by the Director
and the Director may determine
the date is different than the
effective date. [§384(b)]
International design applications
designating the United States
have an effective prior art date
under §102(e) of the filing date
of the “international design
application.” [§385]
Failure of applicant to act within
time limits required by
“international design
application” may be excused by
Director upon showing of
unintentional delay. [§387]
Designation of U.S. after the
“effective date of withdrawal,
renunciation, cancellation or
abandonment” shall have no
effect unless a claim for benefit
under §386(c) (claim to §120
type benefit) was made prior to
the “effective date of
withdrawal, renunciation,
cancellation or abandonment.”
---DRAFT--Summary Comparison of U.S. Design Patent Law (Title 35) Before &
After Amendments in Current Bill to Implement the Hague Agreement
Examination:
Substantive/procedural issue
determination for “international
design application”
US design patent applications:
provisions of Title 35 relating to
patents for inventions apply,
except as otherwise provided
(§171)
Fees for “international design
application”
Fees for US design patent
applications in § 41. See §
41(a)(3) for filing and issuance
fees.
Publication of international
design application
No publication, 1st publication on
issuance. See §122(b)(2)(A)(iv).
Provisional Rights §154(d)(1)
None - no publication prior to
issuance
Term of Design Patent §173
14 years from date of grant.
§173
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A withdrawn, renounced,
cancelled or abandoned
international application can
serve as the basis for a priority
claim under §386(a) and (b),
which is a §119(a)-(d) type of
priority claim. [§388]
Questions of substance and
procedure unless otherwise
required by the treaty and
Regulations determined as
applications filed under Chapter
16 of Title 35. [§389(b)]
Director may prescribe fees for
filing, designating U.S., or any
processing, services, or materials
relating to international design
applications…and may provide
for later payment including
surcharges. [§389(c)]
Publication of an international
design application designating
the U.S. under the Treaty is
deemed a publication under
122(b). [§390]
Provisional rights currently
provided in utility patent
application context is extended
to international design
applications that designate the
U.S. Conforming Amendment
§202(d). *Amendment not
required for Hague Agreement
Implementation.
15 years from date of grant.
Conforming Amendment §202(e)