Design Patent Law Changes in effect May 13, 2015
In December 2012, Congress passed the Patent Law Treaties Implementation Act, which authorizes the United States to become a member of the Hague Agreement for the Registration of Industrial Designs (i.e., design patents). Today, the U.S. took the final step to become a member of the Hague Agreement. The membership will become effective on May 13, 2015.
The Hague Agreement is an international treaty that establishes filing procedures for design patents, similar to the Patent Cooperation Treaty (PCT) for utility patents. Entry into the Hague Agreement will allow U.S. inventors and companies to file international design patent applications directly with the U.S. Patent and Trademark Office. The Hague Agreement harmonizes basic filing requirements across member countries, in effect avoiding complexities related to, for example, languages, fees, and deadlines for renewal. Beginning May 13, 2015, an applicant may submit a single design patent application to the U.S. Patent Office, which will then be transmitted to various additional countries that the applicant selects. Practitioners expect the U.S. Patent Office to promulgate its final rules governing U.S. practice under the Hague Agreement within the next month.
Significantly, the United States' membership in the Hague Agreement also triggers a change in patent term from 14 to 15 years for all design patent applications filed on or after May 13, 2015. Prospective design patent applicants should consult with their patent counsel to discuss the tradeoffs associated with delaying filings for new design applications, as well as continuations and divisionals, until May 13, 2015, to take advantage of this change in term.
In addition to the U.S., many other countries have joined, or are considering joining, the Hague Agreement. South Korea joined last year, Japan is also joining effective May 13, 2015, and Australia, Canada, and China are all expected to join soon. Most European countries (and the EU) are already members.