Friday, February 13, 2015

Hague Agreement Implementation for Design Patents

This morning marks a major development in design patent practice which may change the way U.S. applicants pursue foreign design patents, beginning in May.  This morning, the United States formally became a participating member of the Hague Agreement Concerning the International Registration of Industrial Designs (“the Hague Agreement”).  Under the Hague Agreement, U.S. applicants will be able to file a single international design application with the USPTO to obtain protection for up to 100 designs in over 62 territories.  The Hague Agreement will drastically simplify international design patent applications.  Currently, U.S. applicants wishing to pursue protection for designs in multiple jurisdictions must file individual applications in each of the respective jurisdictions.  The Hague Agreement also extends the term for issued design patents from 14 to 15 years..   

The ability to file a single design patent application covering the United States and 61 other territories should reduce the costs and administrative burden for U.S. Applicants to seek foreign design patent protection.  The USPTO will be issuing final rules implementing the Hague Agreement in the coming weeks and the rules are slated to go into effect on May 13, 2015.  As we previously reported, the USPTO published its proposed rules for implementing the Hague Agreement on November 29th, 2013.  On February 4th, the period for submitting comments ended. 

One question now on applicants minds is whether it makes sense to delay applying for U.S. patent protection until May, when international applications can be filed at the U.S. Patent Office.  The design patent term extension, will not be retroactive, so filing your design patent application today may seem like voluntarily relinquishing 9 extra months of design patent protection.  However, in making the decision to delay filing for design patent protection, applicants and practitioners should be mindful of any potential bars to foreign design patent protection.  While U.S. design patent protection may be sought up to a year after publication of the relevant design, foreign rights are extinguished upon publication.  Thus, if May 13 falls after a planned publication date, applicants may want to reconsider waiting. 

As always, we will keep you informed as the USPTO issues its final rules regarding international design patent prosecution and let you know about any material deviations from standard U.S. design patent prosecution.  Here is a link to the USPTO's press release on Hague implementation

Thursday, February 5, 2015

Looking at Inter Partes Review for Design Patents

It has been nearly one year since the Patent Trial and Appeals Board first invalidated a design patent in inter partes review. Munchkin, Inc. v. Luv N' Care, Ltd. decision, No. IPR2013-00072 (P.T.A.B. Apr. 21, 2014).  The Ordinary Observer reported on that decision last April.  The time seems right to check in on the PTAB to see how design patents have fared since that decision made waves in the patent community.

Despite the impact made by the PTAB in Munchkin, IPR remains a rarely used tool for defendants in design patent litigation.  In addition to Munchkin, we have found 7 petitions for review on 7 design patents from 3 petitioners since the practice began in September 2012.  To date, only Munchkin has reached a final decision on the merits.  While this subset is still limited, it may give us some insight into how the Board is interpreting these petitions, and where the practice may be headed.

We begin by looking at the petitions filed by each of the three petitioners.