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. 

Streamlined International Filing Soon To Be a Reality

Obtaining design rights in multiple countries will soon become easier for design patent applicants.

The United States is currently in the final stages of implementing an international treaty related to design rights known as the Hague Agreement.

The Hague Agreement simplifies the process for obtaining international design rights by allowing an applicant to file a single, standardized international design application that may then be pursued in any member nations designated by the applicant. This procedure is roughly similar to the one for international utility patent applications provided for by the Patent Cooperation Treaty.

On January 14, the USPTO held a public forum to discuss its proposed rules for implementing the Hague Agreement.

The proposed rules include the following major changes for design applicants:

• Standardizing formal requirements for international design applications;

• Establishing the USPTO as an office through which international design applications may be filed and examined;

• Providing a right of priority with respect to international design applications; and

• Extending the patent term for design patents from 14 to 15 years from the date of patent grant, for applications filed on or after the date of entry into force of the treaty with respect to the United States, a date which is still forthcoming.

Interested parties now have until February 4, 2014 to submit comments to the USPTO on the proposed rules, available here.

Design Patent Links

Stanford’s Design Patents in the Modern World conference earlier this month seems to have generated a good deal of design patent buzz across the internet. This wave of interested has continued through the end of April, with several new developments in the area of designs. Below is a sampling of some of the design patent stories from the last week.

For those who weren’t able to attend, the organizers have been good enough to post video from this month’s Design Patents in the Modern World Conference at Stanford Law School. We have provided a link to the first of several videos covering the conference.

On April 23, 2013, the American Intellectual Property Law Association, the Intellectual Property Owners Association, the American Bar Association Section of Intellectual Property Law and the Industrial Designers Society of America hosted its annual Design Day conference with the USPTO. The seminar included a discussion of the written description requirement in the wake of In re Owens. If any of our readers attended the conference, we would be interested in hearing from you.

IP 360 is reporting on the first inter partes review in a design patent case, which was initiated by the PTO last week. The decision to grant this review review is notable, if for no other reason, because of the dearth of citable authority from the PTO relating to design patent law.

Patently-O posted an interesting article on Multiplicity of Design Patent Rights, covering some of the more sophisticated design patenting techniques practiced by design-patent savvy applicants.

PatentBytes commented on California Institute of Technology’s new design patent for the descent stage of the Mars rover. But one wonders whether the Mars rover is the proper subject for a design patent if nobody actually sees it during its normal, intended use.

The Daily record posted an article providing an update on USPTO regulations implementing the portions of the Hague Agreement concerning international design patent applications. While the PTO continues to mull over its international design patent regulations, Lexology reports on how to prepare a combined U.S. and international design patent application. 

Collision Repair Magazine commented on the PARTS Act, which is currently making its way through Congress. This bill would reduce the term for design patents covering car parts from 14 years to 30 months. It is unclear why the authors of the bill consider car parts to be a special case or whether the United States would even be able to carve out the term for certain design patents without running afoul of its international commitments on design patent law. IPO Daily also reported on the PARTS Act. Here is a link to the current version of the bill.

Design Patent Links - February 4, 2013

The last two weeks in design patent law brought us a Federal Circuit decision on pleading standards and several noteworthy decisions in the Apple v. Samsung cases, but there were several other smaller developments that caught our attention.  So, without further ado, we present this week's design patent links:

Several commentators offered their take on the Federal Circuit's decision in Hall v. Bed, Bath & Beyond, Inc., including Patently-O, and Dow Lohnes.  You can read our original commentary here.

In a new twist in the long and hard fought battle between Samsung and Apple, the ITC has recently issued a notice of review of the Final Initial Determination issued in October of 2012 by Administrative Law Judge Pender.  In that decision, ALJ Pender held that deceptive similarity is not "a prerequisite to a finding of infringement, but merely a consequence, or result, of the designs being substantially the same. . . . [T]he sole test for design patent infringement is whether the claimed design is 'substantially the same' as the accused design in the eye of the ordinary observer, giving such attention as a purchaser usually gives. . . . I have kept it in mind that a purchaser of the kind of devices at issue in this investigation will pay significant attention to what they are buying."  The notice of review can be found here.  ALJ Pender's order from last October can be found here.  As correctly reported by Lexology, the only new development in this story is the ITC's decision to review his findings.

In other Apple-related news, last week some commentators incorrectly reported that Apple was awarded a design patent for the appearance of its stores. However, it appears that Apple merely registered its iconic trade dress.  This accidentally raises an interesting question as to whether a store front could qualify as an "article of manufacture" under section 171...

Bill Harding of Zeis Weiderman, Malek, posted an interesting discussion of animated computer-generated icons design patents and special procedures available for prosecuting such patents before the PTO.  This little-known type of design patent has special procedures that have been in place since 2005 for this unique type of design patent.

For those who are interested, the Intellectual Property Owners Association will be offering a webinar for CLE credit on February 6 at 2:00 PM ET titled Design Patent Protection: An International Overview Including the Hague Agreement.  The webinar will cover  changes that the Hague Agreement will bring to design patent law, which continues to be a worthy topic of discussion. 

For those of you in the Portland, Oregon area, Lane Powell attorneys Brenna Legaard and Jay Smith-Hill will co-present group breakout sessions at the Technology Association of Oregon’s “Legal Forum: Trademark, Copyright, and Design Patent Boot Camp” at the Oregon Zoo on February 14 from 7:30 a.m. to noon. Brenna Legaard will be presenting on design patents.  

Finally, on February 3 at 1 PM ET, the American Bar Association Section of Intellectual Property Law and MARQUES (the European Association of Trade Mark Owners) are co-hosting a webinar discussion regarding EU design law and some of the differences with U.S. design patent law. The session will cover what subject matter is protectable, the validity tests of “novelty” and “individual character,” the exclusion for “solely dictated by technical function,” registered (25 years) and unregistered (3 years) Community design rights, and enforcement. The webinar will also touch on some of the similarities and differences with the Community Trade Mark regime.

Design Patent Links – January 14, 2013

Christopher Carani of McAndrews, Held & Malloy wrote an excellent analysis of Apple’s smartphone litigation with Samsung and several other design patent cases in an effort to discern some overall guidelines for assessing design patent infringement under the ordinary observer test.  Mr. Carani’s article was re-posted by permission on Patently-O.

Speaking of Apple v. Samsung, the German version of their ongoing design patent war will be delayed after some fancy footwork by Samsung in the EU Trademark Office in Alicante, Spain, as reported by Bloomberg.

Stephen L. Peterson of Finnegan, Henderson, recently penned an article on Lexology.com discussing several myths about design patent, including the misguided theory that “Design patents can’t protect fashion.”

IP360 recently posted an article discussing the “Benefits of US Implementation of the Hague Agreement” and the effect on international design patent prosecution. (account required).   Several other commentators recently discussed the ratification of the Hague Agreement as well, including JDSupra , Tom’s Hardware, and Bloomberg Businessweek.

Foss Patents is reporting on an anonymous ex parte reexamination of Apple’s design patent covering a page turning animation.  Apple’s page turning design patents were subject to widespread criticism when they first issued in light of traditional books and the breadth of the patents.  We will monitor this reexamination and update as warranted.

For those who live in the Boston area, the Boston Patent Law Association will be hosting a roundtable lunch seminar on “The Design Patent/Copyright Conundrum” on January 24, 2013 at Bingham McCutchen.  The roundtable will include discussion of the nature and scope of protection afforded by design patents and copyrights, the overlap in protection between the two, standards for infringement, and remedies available for infringement of design patents and copyrights.