International Design Patent Protection for US Applicants: Now and After the Patent Law Treatise Implementation

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1 International Design Patent Protection for US Applicants: Now and After the Patent Law Treatise Implementation Lance D. Reich Lee & Hayes PLLC May 2, 2013

2 Introduction International design protection is presently disjointed There is currently no harmonized scheme for US applicants efficiently filing for design protection in multiple countries, which is in contrast to the filing of utility patents through the Patent Cooperation Treaty ( PCT ) Big contrast in drawings between US and other jurisdictions (not likely to go away) New international application is not likely to solve any of these problems

3 Current US Practice Applicants may file for US Design Patent protection (Industrial Design Registration is common elsewhere) U.S. courts have interpreted an article of manufacture to include at least three kinds of designs: -a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture; -a design for the shape or configuration of an article of manufacture; and -a combination of the first two categories 6 months after filing, individually file industrial design registrations in the other countries

4 Current US Practice A design is ornamental if the claimed design as a whole is primarily ornamental, as opposed to being primarily functional Design patents have a term of fourteen (14) years beginning from the date of issue No publication, so they pend in secret US examination process is typically more focused on the formal drawingrequirements, violations of which often result in a rejection under 35 U.S.C. 112

5 Current US Practice Pros of US practice: Broken or phantom lines, advantageously allows applicants to identify what portions of the design are to be claimed and what portions are unclaimed Applicant may file a series or family of design patents protecting the various portions of a single article of manufacture Formal drawings also permit applicants to utilize a variety of symbols, in accordance with US design practice, to claim features such as color, transparency, or particular kinds of materials used in the design

6 Current US Practice Cons of US Practice: Inability to claim multiple designs in a single application, as attempts to do so will likely result in a restriction requirement Design patents are not published until they issue, so there are no provisional rights

7 Current US Practice

8 Current US Practice

9 Current US Practice

10 Current US Practice

11 Current International Practice The Hague Agreement Concerning International Registration of Industrial Designs ( Hague Agreement ) provides a format for protecting industrial designs in multiple countries through a single application filed with the World Intellectual Property Organization (WIPO) Can be utilized by any applicants who are either nationals or who have a real and active presence in one of the contracting states (US will soon be one) General standard is Registered Community Design (RCD), used by many others Generally 5 year terms of protection renewable up to 25 years

12 Current International Practice International applications may also include up to 100 different designs in a single application, so long as the designs are under the same class according to the International Classification of Industrial Designs ( the Locarno Classification ) Applicants also have the benefit of requesting that publication of the designs be deferred up to thirty (30) months in some instances Each designated party will substantively examine the design in accordance with local laws and regulations, which vary widely

13 Current International Practice Typically No ghost lines (ipod Touch: China)

14 Current International Practice Color use is not uniform

15 Current International Practice Registered Community Design

16 Patent Law Treatise Implementation Act On December 18, 2012, President Obama signed into law the Patent Law Treatise Implementation Act of 2012 ( PLTI Act ) PLTI Act implements two international treatises, the Hague Agreement as well as the Patent Law Treaty Implementation of the Hague Agreement in particular will result in U.S. design applicants having the ability to file an international design application for protection in multiple non-u.s. jurisdictions PLTI Act will become effective December 18, 2013

17 Patent Law Treatise Implementation Act Extension of the design patent term from fourteen (14) to fifteen (15) years for all design patents filed after the Act goes into effect The international application will be filed with the USPTO, which will perform the initial formalities review before the application proceeds to examination in the other designated parties Foreign applicants wishing to gain protection in the US may continue filing their international applications as before and will now be able to select the US as a contracting party However, international application drawings will remain subject to current design patent drawing requirements when they are examined by the USPTO

18 Patent Law Treatise Implementation Act International application drawings will remain subject to current design patent restriction requirements when they are examined by the USPTO One great benefit to U.S. applicants will be the ability to publish their international design application in the International Register and claim provisional rights back to the publication while the application is examined by the USPTO

19 After Implementation One really needs to see the full implementation package to have a better insight here So

20 After Implementation If USPTO rules are similar, it may be better to file a separate US and International application Potential estoppel issues Many practical issues: -Color -Ghost lines -US restriction practice

21 After Implimentation Is the 100 designs per Locarno workable in the US system?

22 After Implementation The American way.

23 Conclusion Implementation of the Patent Law Treatises will not likely change much as currently stands USPTO requirements for formal drawings will remain in full effect and are different, and often more rigorous, than those of foreign jurisdictions Applicants may need to consider filing both a US and International Design Application (different drawings) Stay tuned for implementation rules