American Intellectual Property Law Association
U.S. Implementation of the Hague Agreement For
Designs
John (Jack) J. Penny, V
Event Name
Location
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XX March 2014
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U.S. Implementation of the Hague Agreement For Designs
• BACKGROUND
– In December 2012, U.S. President Barack Obama
enacted the Patent Law Treaties Implementation Act
of 2012 (PLTIA)
– Title I of PLTIA amends the U.S. patent laws (35
U.S.C.) to implement the provisions of 1999 Geneva
Act of the “Hague Agreement Concerning
International Registrations of Industrial Designs”
(Hague Agreement)
– The Geneva Act of the Hague Agreement
(administered by the WIPO) establishes a
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centralized
procedure by which global examination
of design applications can be conducted
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U.S. Implementation of the Hague Agreement For Designs
• BACKGROUND (cont’d)
– The Hague Agreement creates a new single,
standardized international design application by
which an applicant can apply for design protection
in all member countries
– Allows U.S. applicants to request design protection
in the European Union and 44 contracting parties of
the Geneva Act of the Hague Agreement
– Non-U.S. applicants can file a Hague design
application designating the U.S. for examination by
the U.S. PTO
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U.S. Implementation of the Hague Agreement For Designs
• STATUS
– 29 November 2013, U.S. PTO published proposed
rules to implement the Hague Agreement
– Written comments on the proposed rule changes
were due by 28 January 2014
– Changes will take effect upon “the entry into force of
the Hague Agreement with respect to the United
States”
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U.S. Implementation of the Hague Agreement For Designs
• MAJOR CHANGES
– Term of design patents increases to 15 years (from
14 years) from issuance (35 U.S.C. §173)
– Provides U.S. domestic priority (35 U.S.C. §386(c))
– Provides foreign priority (35 U.S.C. § §386(a), (b),
see also Geneva Act Art. 6(1)(a)-(2) – Paris
Convention priority must be recognized)
– International design applications that designate the
US have the same effective filing date as a U.S.
national design app. (Geneva Act, Art. 14(1), 35
U.S.C. § 385)
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U.S. Implementation of the Hague Agreement For Designs
• MAJOR CHANGES (cont’d)
– Provide provisional patent rights for published
international applications that designate the U.S.
• If issued U.S. design patent is substantially similar to
published international application, patent owner is entitled
to a reasonable royalty between publication and U.S. issue
date (see 35 U.S.C. §154(d)(1))
– Establishes U.S. PTO as office through which
international design applications can be filed
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U.S. Implementation of the Hague Agreement For Designs
• SUBSTANTIVE EXAMINATION OF DESIGN IN U.S.
– Under Article 12 of the Geneva Act provides that any
Contracting Party may reject the industrial designs
“where the conditions for grant of protection under
the law of the Contracting Party are not met”
– PLTAI provides that “[t]he Director shall cause an
examination to be made … of an international design
application” (see 35 U.S.C. §389(a))
– Therefore, the examination in the U.S. of any design
patent application designating the U.S. shall be
conducted according to U.S. patent laws (see 35
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U.S.C.
§389(b)), which includes a substantive
examination process (some countries don’t have)
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U.S. Implementation of the Hague Agreement For Designs
• SINGLE DESIGN INVENTIONS IN THE U.S.
– The Hague system allows for applicants to include
up to 100 designs in a single registration if all of the
designs are in the same Locarno class
– But, in the U.S., a design patent must be directed to
a single invention (see MPEP § 1502.01(D))
– U.S. PTO will issue a restriction requirement(s) if
more than one patentably distinct design is shown
in the drawings
– Therefore, while the international application may
contain many designs (up to 100), divisional
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applications
may be required in the U.S.
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U.S. Implementation of the Hague Agreement For Designs
• SINGLE DESIGN INVENTIONS IN THE U.S. (cont’d)
– Recent U.S. Federal Circuit case1 held that
prosecution history estoppel does apply to U.S.
design patents when figures are cancelled due to a
restriction requirement
– In order to avoid prosecution estoppel, and to
secure protection for the cancelled figures,
divisional applications must be filed directed to the
non-elected embodiments
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1 Pacific Coast Marine Windshields, Ltd, v. Malibu Boats, LLC (Fed. Cir. 2014)
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U.S. Implementation of the Hague Agreement For Designs
• PRACTICE HINTS
– Consider all options when applying for international
design protection
– While Hague Agreement offers a simplified
procedure for filing in all member countries, there
are some disadvantages
• Single set of drawings is used in all designated countries
• Drawing requirements may be different in some countries
• Local examination process and legal standard remains
unchanged
– When selecting countries, consider strength of
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enforcement,
where product will be sold/copied,
prosecution costs, etc.
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Thanks for your attention! Questions?
John (Jack) J. Penny V
Partner, Chair Intellectual
Property Group
Nutter McClennen & Fish, LLP
155 Seaport Blvd.
Boston, MA 02110
+1-617-439-2566
jpenny@nutter.com
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