U.S. Implements New Treaty, Streamlines Foreign Industrial Design Protection

When inventors ask about patent protection, typically they are thinking of utility patents that protect a new and useful process, machine, manufacture or composition of matter.  Design patents, as opposed to utility patents, are another important and potentially potent tool available to inventors. A design patent protects ornamental features of functional items, which can range from the shape and design of a manufactured product to a graphical user interface used in a software application.

In fact, design patents are one of the few ways clothing and apparel can be protected. U.S. courts have time and again rejected copyright law as a viable mechanism for protecting clothing designs. Design patents, on the other hand, have consistently been utilized in protecting designs including, clothing, sunglasses, shoes, watches and other fashion apparel. Infringement of a U.S. design patent, just like a utility patent, potentially renders injunctive relief and an award of monetary damages, such as lost profits or reasonable royalty rates, to the litigating patent owner. In certain situations, damages can be trebled and attorney fees may be awarded to a prevailing litigant. Patents can be powerful, and design patents are no exception.

For both utility and design patents, extending protection outside the United States requires separate filings in each foreign jurisdiction. The Patent Cooperation Treaty (PCT) streamlines the foreign filing process for utility patents. Inventors pursuing international coverage can file a PCT application and designate which countries will examine the application.  The PCT system helps to efficiently obtain foreign patent protection in multiple jurisdictions.

PCT applications, however, are only available for utility patents and do not include industrial design registrations  — the foreign equivalent of a U.S. design patent. Until recently, patent rights owners had to file applications for industrial design registrations directly and separately in each country or jurisdiction they wished to pursue protection.  In 2012, however, President Obama signed the Patent Law Treaties Implementation Act that ratified the Hague Agreement Concerning the International Registration of Industrial Designs (the "Hague Agreement"). The Hague Agreement is for all practical purposes the design protection equivalent of the PCT.

In May 2015, the Hague Agreement was implemented in the United States. Two important consequences flowed from the Hague Agreement's implementation. First, all U.S. design patents filed for on or after May 13, 2015 will enjoy a 15-year lifespan beginning from the date of issuance. This is a one-year extension over the previous 14-year lifespan. Second, and more significantly, is that U.S. inventors now have the option of filing an International Design Application (IDA) through the Hague Agreement. An IDA, like a PCT application, streamlines the process to obtain foreign protection for industrial designs.

An IDA can be filed in addition to, or as an alternative to, a traditional U.S. design patent application. The old system of separate, direct filings in foreign countries is still available, and indeed necessary for countries that are not a party to the Hague Agreement. Notable parties to the Hague Agreement include the European Union, South Korea, Japan, and the African Intellectual Property Organization. Countries absent from the Hague Agreement that would still require a direct filing include China, Canada, Australia, Brazil and Argentina.

There are many advantages, and some drawbacks, to filing an IDA as opposed to a traditional U.S. design patent application. A few points to consider include:

Multiple embodiments. An IDA can include up to 100 different versions or embodiments of a design in a single application, so long as they all fall in the same Locarno classification. U.S. design applications only permit one embodiment per application. However, an IDA being examined in the United States will still be restricted to one embodiment per issued design patent, meaning the U.S. Patent and Trademark Office will require you to elect one embodiment and pursue the remaining embodiments in one or more divisional applications. Still, the multiple embodiment option is useful for foreign jurisdictions that permit multiple embodiments per registration, such as the European Union.

Reduced costs. Prior to the Hague Agreement, U.S. patent right holders had to incur translation fees in advance of filing for foreign design registration. Each country needed the application to be in its native language.  As U.S. practitioners should appreciate, this could be quite costly, particularly for Eastern languages such as Chinese and Japanese. It was also necessary to hire licensed local counsel to file the design application. An IDA, however, can be filed in English and through the U.S. Patent and Trademark Office without retaining local counsel. While true that local counsel may still be necessary to assist with any problems that may arise during the course of registration, inventors can at least be relieved from the local counsel's filing fees.

Provisional rights. Utility patent applications automatically publish 18 months after their earliest priority date. With publication comes "provisional rights." If a third party infringes one or more claims found in a published patent application, then the owner of the patent application could send a cease and desist letter to the infringer notifying them of the published application. If at least one infringed claim is included in a patent issuing from that application, the patent owner may sue the infringing party for patent infringement and claim damages dating back to the cease and desist letter. No such "provisional rights," however, were previously available for design patent applications because design patent applications never publish. An IDA, however, will publish six months after filing, and "provisional rights" will now be available to patent rights owners who filed an IDA.

These are but a few of the advantages and points to consider before filing an IDA to protect novel industrial designs. Patent rights owners and inventors should consult with a registered patent attorney to determine what domestic and international filing strategy is best suited for their needs and goals.

Rob Weaver is a registered patent attorney with Feldman Gale, P.A. in a practice exclusively dedicated to the acquisition and enforcement of intellectual property rights, including patents, trademarks, copyrights, and trade secrets. Contact Weaver at [email protected].

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