December 30, 2012
On December 19, 2012, President Obama signed into law the Patent Law Treaties Implementation Act of 2012 (“PLTIA”).
The PLTIA implements two treaties: the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva on July 2, 1999 (“Geneva Act”) and the Patent Law Treaty (“PLT”). The PLTIA creates new procedures for the processing of design patent applications, and more generally modifies certain provisions of U.S. law that will apply to all patents.
The first portion of the PLTIA implements the Geneva Act. The Geneva Act created an International Design Application (“IDA”) which is similar in many respects to an International Application under the Patent Cooperation Treaty (“PCT” applications). Unlike a PCT application, however, an IDA, if deemed allowable, results in a true International Design Registration that provides design protection in all jurisdictions designated by the applicant. The filing of an IDA does not require a basis in any prior national application or registration and may include several different designs (a so-called “multiple application”), up to a maximum of 100 designs (in some countries), so long as all designs belong to the same class as specified by the Locarno International Classification for Industrial Designs.
After filing, the IDA will be published by the International Bureau (“IB”) of the World Intellectual Property Organization. Publication will occur soon after filing the IDA, but can be delayed upon petition up to 30 months, if desired. Once published, the IDA will be considered prior art as of the application filing date. The IDA then will be examined by the IB for formalities and then will be transmitted to the countries or regions designated by the applicant for national examination. The countries and regions that can be designated by the applicant must be members of the Hague Agreement. A list of the current Hague member entities can be found here. Notably, the Europe Union is a member.
Upon publication of the IDA, applicants will be afforded “provisional rights” similar to those relating to published utility patent applications. These rights include the right to claim pre-issuance damages from infringers having actual knowledge of a pending design application. Regular U.S. design applications will not be published. This presents certain strategic considerations. For example, if an applicant believes it will benefit from provisional rights in the U.S., it will need to file an IDA designating the U.S. in order to obtain the desired provisional rights. If the applicant is only interested in design protection in a limited number of countries, the benefit of obtaining provisional rights will have to be weighed against the additional expense of filing an IDA to determine whether domestic applications or an IDA should be pursued.
One notable feature of the IDA is that applicants wishing to protect a design in multiple jurisdictions can now file international applications directly with the U.S. Patent and Trademark Office (USPTO), using one counsel to accomplish these filings. There is no need to retain local counsel in each jurisdiction to initiate the filing. Additionally, maintenance fees can now be handled through payment of a single fee to one authority, the IB. In these respects, these procedures are similar to the procedures for International Trademark Applications handled by the IB currently. It is anticipated that most national offices will issue some form of office action that requires applicants to retain local counsel for handling the response, but in many cases the administrative savings afforded by the single filing and maintenance fee authority are expected to lead to overall cost savings if the IDA enters into force in multiple countries.
An IDA may claim priority to an earlier-filed application. To claim priority, the IDA must be filed within six months of the first national filing to which priority is claimed. In the U.S., an applicant who wishes to claim priority to an earlier design application filed outside the U.S. can file an IDA that designates the U.S. in lieu of a regular U.S. design application.
In addition, the first portion of the PLTIA also extends the term of all U.S. design patents (whether an IDA or a regular U.S. design application) to 15 years from the date of grant (instead of the current 14-year term), starting with applications filed on the implementation date of the PLTIA. IDAs are valid for an initial period of 5 years and can be renewed for one or more additional periods of 5 years upon payment of required maintenance fees up to the expiry of the total term of protection allowed by each designated country. The maximum term varies from country to country and is usually between 15 and 25 years, as can be seen here. Given that IDAs are subject to 5-year maintenance fees, it is contemplated that applicants seeking U.S. design protection may choose to file a domestic design application in the U.S. and will use the IDA for any desired non-U.S. applications, because maintenance fees are not required for domestic design patents.
This portion of the PLTIA is expected to go into effect approximately one year after enactment (by December 19, 2013).
The second portion of the PLTIA implements the Patent Law Treaty. The PLT portion of the PLTIA implements a number of other significant amendments to U.S. patent law that are intended to harmonize U.S. law with the law of other countries:
• Under revised 35 U.S.C. 111, utility patent applications will now be given a filing date even if filed without claims.
• Under revised 35 U.S.C. 119, the USPTO will provide a procedure for restoration of priority rights. This creates an effective 2-month grace period beyond the normal 12-month priority deadline to claim priority to an earlier foreign filing or domestic provisional application if the delay in filing the application is unintentional. The Director of the USPTO is empowered to create a similar grace period under 35 U.S.C. 365(b) (for priority claims to international applications that designate countries other than the United States).
• Under new 35 U.S.C. 27, the Director may establish procedures to revive unintentionally abandoned patent applications; to accept unintentionally delayed payment of issue fees; or to accept unintentionally delayed responses in reexamination proceedings. Current patent law provides for revival of unintentionally abandoned applications; this portion of the PLTIA changes the procedures somewhat.
• Under revised 35 U.S.C. 261, the USPTO will maintain a register of “interests in patents and applications.” Though not expressly specified in the PLTIA, the PLT itself indicates that these “interests” can include license agreements and security interests.
The implementation date of these provisions is also one year after the date of enactment of the PLTIA (i.e., December 19, 2013). Once implemented, these provisions will apply to all patents and patent applications regardless of filing or issue date, except that the provisions relating to the harmonized filing date standard will apply only to applications with an effective filing date on or after December 19, 2013. Additionally, these provisions will not apply to a patent that is the subject of litigation in an action commenced before December 19, 2013.
For more information, please contact Fitch Even partner Edward E. Clair.