U.S. Implementation of the Hague Agreement For Designs

1. U.S. Implementation of the Hague Agreement For Designs John (Jack) J. Penny, VEvent NameLocation XX March 2014

2. 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 centralized procedure by which global examination of design applications can be conducted

3. 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

4. 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”

5. 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)

6. 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

7. 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 U.S.C. §389(b)), which includes a substantive examination process (some countries don’t have)

8. 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 applications may be required in the U.S.

9. 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 1 Pacific Coast Marine Windshields, Ltd, v. Malibu Boats, LLC (Fed. Cir. 2014)

10. 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 enforcement, where product will be sold/copied, prosecution costs, etc.

11. 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