U.S. Implementation Of The Hague Agreement – What You Need To Know

Article by Darrell G. Mottley1 On Dec. 18, 2012, U.S. President Barack Obama signed the Patent Law Treaties (PLT) Implementation Act of 2012 into law. The Hague Agreement Implementation section of the act adds a new Chapter 38 to the patent provisions of Title 35 of the U.S. Code. The Hague Agreement, administered by the World Intellectual Property Office (WIPO), provides only a simplified procedural avenue to obtain industrial design protection in selected member countries. The provisions directly pertaining to the U.S. Hague Implementation will become effective one year from enactment or when the U.S. deposits its implementing legislation to the WIPO.

Hague System Generally

To understand the context of the Hague Industrial Design system, a short review of the operation of the system is in order. National intellectual property industrial design regimes are based generally on two types - a substantive design examination structure or a non-examination scheme. The substantive examination structure reviews the proposed design against prior art designs (prior art) for novelty and non-obviousness. If the proposed design passes successfully through examination, upon publication, 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. In general, the non-examination systems allow substantive validity of the design rights to be challenged during litigation or other judicial proceedings.

Early versions of the Hague Agreement in the 20th century only dealt with non-examination systems, e.g., only national intellectual property design regimes having a simple registration process. In contrast, the 1999 Geneva Act of the Hague Agreement was created to accommodate national intellectual property regimes which have substantive examination. As a result, the Hague Agreement using the Geneva Act provides for an administrative global interface for coordination of both examination and non-examination systems for industrial designs.

United States Enactment

Following the enactment of U.S. patent reform with the Leahy-Smith America Invents Act of 2011, the PLT Implementation Act creates a new international design application that entitles U.S. applicants to file a design application in the 45 member countries that are Contracting Parties of the Geneva Act of the Hague Agreement. Likewise, applicants whose countries or regional systems are members of the Geneva Act can file applications in their home country, 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 design application, the applicant will need to engage local U.S. counsel to respond to Office Actions issued by the USPTO.

Some noteworthy changes in the law include the term of design patents increasing from 14 years from issuance to 15 years2, and enabling domestic3 and foreign4 priority claims arising from the international design application.

Expected Changes

Provisional Rights

Notably, the new PLT Implementation Act provides for the first time provisional rights5 resulting from publication of the international design application designating the U.S. Assuming a U.S. design patent eventually issues substantially similar to a published design in the international application, this provision sets forth that a patent owner may be entitled to a reasonable royalty for any person who makes, uses, offers for sale or sells in the U.S. the claimed invention, or imports the invention into the U.S., during the period between publication of the patent application and the date the patent issued. The accused infringer must have had actual notice of the published patent application6 and a court enforcement action must be brought no...