On August 2, 2012, U.S. Senators Patrick Leahy (D-Vt.) and Chuck Grassley(R-Iowa), in a rare non-partisan effort, introduced legislation to finally implement two patent law treaties that are so old that they were signed by President Bill Clinton in the 1990s. The short title of the bill is he Patent Law Treaties Implementation Act of 2012.
Upon introducing the bill, Leahy said it would “help American businesses expand into foreign markets by reducing obstacles for obtaining patent protection overseas.”
One of these two treaties, the Hague Agreement Concerning International Registration of Industrial Designs, would for the first time permit for design patent applicants a benefit that utility patent applicants have had for decades — the ability to file a single, standardized, English-language application at the U.S. Patent & Trademark Office to obtain IP rights in multiple countries through the Patent Cooperation Treaty. By permitting design patent applicants to file in this manner, the Hague bill should greatly reduce the cost to U.S. applicants of obtaining foreign design rights.
The treaty was ratified by U.S. Senate in 2007. Passage of the implementing legislation, as introduced by Leahy and Grassley, is required for the United States to become a member and for the treaty to take effect in the United States.
While supporters of the treaty have for years touted the idea that it will herald a one-size-fits-all filing strategy, it remains to be seen whether that will become reality, in view of the variety of drawing and formality requirements of the individual member countries. For example, while the USPTO allows shading and broken lines in design drawings, other countries do not. How a single set of such drawings will be treated in each country may be problematic.
Implementation of the Hague Treaty will also bring some welcome changes to U.S. patent law — for example, the term of design patents will extend to 15 rather than 14 years from the patent’s issue date. The exception to this will be international applications filed under the Hague Treaty, which will have a 15-year term, but that term will run from the filing date, rather than the issue date. This change will make the term more like that of utility patents, where prosecution delays count against the term of a patent stemming from an International application. Fortunately, the pendency of design patent applications, at least currently, is less than two years, so prosecution delay is not a significant issue. Of course, that could change if implementation of the Hague Treaty significantly increases the number of design patent filings at the USPTO.
Another interesting addition to the patent law that will occur if this legislation is passed is the extension of provisional rights under 35 U.S.C. Section 154(d)(1) to international design applications filed under the treaty that designate the United States. Such rights have only been available to utility patents up till now. This amendment was not required for implementation of the Hague Agreement, so it is not clear why it was added. It also does not extend such rights to U.S. national applications, only to applications filed under the treaty.
Given that the limiting factor on provisional rights is claim amendments, and that amendments to the claim (drawings) in a design application after the application is filed are rare, provisional rights may be a more significant factor for design patents in the future than they have been for utility patents.
In summary, passage of the Leahy-Grassley bill would help simplify protection for design patents in the United States and would benefit U.S. competitiveness in world markets.