The Patent Law Treaties Implementation Act was passed by the U.S. House of Representatives on December 5th. The act was passed on September 22 of this year by the Senate, and once implemented will make the process of filing for certain design patents and industrial design around the world much more streamlined. Owners of U.S. design patents will also enjoy new benefits provided by the Act.

Legislation implemented in the Act includes two provisions which were signed by the U.S. in 1999 and ratified in 2007 by the U.S. Senate. These include the Patent Law Treaty, and the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs.

The U.S. Introduction of the International Design Patent Application

Those who will be permitted to file international design applications with the USPTO upon the provisions of the Patent Law Treaties Implementation Act becoming effective include any individual who has a habitual residence, domicile, or real and effective commercial or industrial establishment in the U.S., or who is a United States national. The international design application may designate any of over 40 jurisdictions globally as well as the United States. Once reviewed for specific formalities, the application will be transmitted automatically to the jurisdictions designated; it will then proceed to registration and/or examination. International applications initially filed abroad by foreign applicants will also be permitted to designate the U.S. In either case, it will no longer be necessary for applicants to initiate filing and registration process through local patent counsel in jurisdictions which are outside of where the application was initially filed. As many as 100 designs may be submitted by applicants within one Hague application (however the current restriction practice would still apply to the U.S. application).

The Patent Law Treaty portions of the Act are intended for synchronization of various formal procedures related tot he patent prosecution process with foreign countries. Issues such as the restoration of priority rights, requirements necessary to obtain a U.S. filing date and other formal items are relevant provisions addressed in the Act.

Other notable provisions of the Act include the extension of the term of granted design patents from 14 to 15 years for new design patent applications filed after the Act has taken effect. In addition, under U.S. law the publication of an international design registration designating the U.S. will be treated as a publication. Essentially, this provides the possibility of securing pre-issuance damages for certain United States design patents infringement.

Implications

U.S. and foreign applicants will have the opportunity to substantially streamline the process of filing for design patent/industrial design for numerous countries once the provisions of the Patent Law Treaties Implementation Act fully take effect. This means that potentially, prosecution costs for overall design will be reduced around the world.