U.S. Implementation Of The Hague Agreement For Industrial Designs: Not A 'One-Size-Fits-All' System

U.S. design patents have recently taken center stage as essential intellectual property assets showcased in the clash between Apple and Samsung1 and the fashion litigation between Lululemon Athletica and Calvin Klein.2 In December 2012, U.S. President Barack Obama enacted the Patent Law Treaties (PLT) Implementation Act of 2012. The Hague Agreement Implementation section of the act adds new design provisions to the patent provisions of Title 35 of the U.S. Code. The U.S. Hague Implementation provisions will go into effect as early as December 2013.

Introduction to the Hague System

The Geneva Act of the Hague Agreement, administered by the World Intellectual Property Office (WIPO), provides a global interface for coordination of both examination and non-examination industrial design protection regimes in member countries. National industrial design regimes are based generally on two types — a substantive examination system or a non-examination system. The publication of a Hague international design registration by WIPO starts an examination refusal process. In substantive examination systems, the proposed design is reviewed against prior designs for novelty and non-obviousness. If the proposed design passes successfully through examination, the design is enforceable against third parties. In a non-examination system, the design is not substantively examined against any prior art. The publication and registration of the design enables the design rights to be enforced under the country's national laws. Generally, the theory behind non-examination systems is that novelty is best addressed by interested parties through invalidity proceedings in litigation or other judicial proceedings.

U.S. Enacts Legislation to Join Hague System

The PLT Implementation Act creates a new international design application that entitles U.S. applicants to request design protection in the territory of the European Union and 44 Contracting Parties of the Geneva Act of the Hague Agreement. Likewise, applicants of countries or regional systems that are Contracting Parties can file a Hague design application, designate the U.S. for examination and receive an examination on the merits from the U.S. Patent and Trademark Office (USPTO). During substantive examination of the application, the applicant will need to engage U.S. counsel to respond to Office Actions issued by the USPTO.

Particular noteworthy changes in the law include the term of design patents increasing from 14 years from issuance to 15 years,3 and enabling...