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New changes to U.S. design patent law

Alan Norman Tom Polcyn May 5, 2015

American-based companies seeking protection for industrial designs will soon be encountering significant changes. On May 13, 2015, the United States will become a contracting party to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague Agreement”). As a result, both domestic and international design patent protection will be altered. Domestically, design patents will be entitled to a 15-year term from issuance. Internationally, an applicant will be able to seek design protection in multiple jurisdictions with the filing of a single application.

What Is the Hague Agreement?

The Hague Agreement is an international treaty relating to the protection of industrial designs. It enables a company or an individual to file one application for an industrial design and obtain protection within multiple jurisdictions. The application can contain up to 100 different industrial designs.

As of May 13, 2015, there will be a total of 49 contracting parties to the Hague Agreement. Some of the notable contracting parties include the European Union, the African Intellectual Property Organization, Japan, Norway, Switzerland, and the Republic of Korea. While Canada, China, and Russia are currently not part of the Hague Agreement, those countries are reportedly exploring the possibility of joining. 

How Does the Hague Agreement Work?

Upon the filing of an application with the World Intellectual Property Organization (WIPO), the International Bureau of WIPO will verify that the necessary formal requirements are met. If the requirements are fulfilled, the international design application will be given a filing date. The application will then be published in due course (typically six months after the filing date). After publication, the designated jurisdictions will substantively review the international design application to determine whether, based on their individual national laws, protection should be afforded to the industrial design(s) included therein.

What Is the Impact of the Hague Agreement?

The United States’ decision to become a contracting party to the Hague Agreement will result in several substantive changes to U.S. design patent law. Most notably, design patents resulting from applications filed on or after May 13, 2015, will be entitled to a 15-year term from issuance. Currently, design patents only have a 14-year term from issuance. Additionally, color drawings and photographs will no longer require a petition and fee. As a result, a company seeking the broadest possible protection for a particular design may elect to file additional applications containing photographs or color drawings.

For companies with an international design patent portfolio, the Hague Agreement also provides for potential cost savings and centralized asset management. The international design application is filed in one language with one set of fees at one location. Consequently, a company need only docket one renewal deadline rather than having to juggle multiple renewal deadlines in various jurisdictions. Additionally, if a subsequent change of ownership occurs with respect to a particular design, notification of such change can be provided to a single source.

The Hague Agreement provides for several strategic advantages as well. For example, U.S. patent law grants provisional rights to published patent applications. Design applications are not published and thus are not eligible for provisional rights. International design applications filed pursuant to the Hague Agreement, however, are published. Publication typically occurs six months after the filing date of an international design application. If desired, an applicant can request immediate publication. Accordingly, starting May 13, 2015, a company wishing to obtain provisional rights within the United States for an industrial design can do so by filing an international design application with WIPO. This is just one example of how the Hague Agreement may alter a company’s management strategy of a design patent portfolio.