The United States has finally taken the steps necessary to join a major international treaty concerning the protection of design patents. This will mean significant changes in the protection of designs in foreign countries. At present, U.S. design patent applicants have six months after the U.S. filing date to file foreign design applications claiming priority to the U.S. filing, and the foreign applications must be filed separately in each country. In countries that adopted the 1999 Geneva Act of the Hague Convention Concerning the International Registration of Industrial Designs, filers enjoy a simplified procedure for filing design applications in all member countries.
Although the United States adopted this Hague Convention in December 2012, the final steps necessary to achieve membership only recently took place on February 13, 2015, and the Hague Convention will be effective for U.S. design applicants starting on May 13, 2015. This will impact the filing of domestic and foreign design patent applications in several significant ways.
First, the term of a U.S. design patent based on an application filed after May 13, 2015 will now be 15 years, as opposed to the current 14 year term. Thus, if you have a new design filing, it may be prudent to wait a few months before filing, to take advantage of the new term. This needs to be balanced against the need for prompt filing, particularly after the adoption of the “first inventor to file” rules a few years ago as part of the America Invents Act.
Second, industrial designs can be protected in approximately 62 member countries by means of a single filing, rather than the national filing procedure currently used. This can be done by either filing a design application in the U.S. Patent and Trademark Office designating the Hague Convention, or by filing it directly with the World Intellectual Property Office (WIPO). In either case the applicant needs to designate those member countries where protection is sought.
A single international application may include up to 100 different, yet related, designs, provided that the designs are all in the same general class. However, it is expected that applicants will have to divide out separate designs in U.S. applications so as to include only a single invention in each application, and will still need to have a common inventor for each design. Formalities can also be handled more easily. For example, the transfer of an international design registration to a new owner can be handled with a single filing instead of having to record the transfer in multiple countries, as is currently required.
Not all key countries are members yet, with the most notable exception being Canada, China and Russia, but is hoped that these countries will be joining soon. Japan is joining on the same schedule as the United States, and South Korea became a member last year.
The U.S. Patent and Trademark Office will soon be publishing its final rules concerning the adoption and implementation of this Hague Convention, so some of the details on how this will be implemented are still being worked out. For example, it is not yet clear if a continuation application filed after May 13, 2015 but claiming priority to an earlier application will be entitled to the 15 year term. We will provide additional information as these rules are adopted.
