Hague Agreement Concerning International Registration of Industrial Designs

On December 18, 2012, President Barack Obama signed into law the “Patent Law Treaties Implementation Act of 2012,” S. 3486, which implements the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. Implementation of the Hague Agreement creates an international design application that can be filed in the United States and serve as the basis for filing industrial design applications in many countries throughout the world, similar to the filing of an International Patent Cooperation Treaty (PCT) application for a utility patent application.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced on Friday, February 13, 2015 that the United States has deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) with the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. The Hague Agreement will go into effect for the United States on May 13, 2015.

A complete listing of countries which are members of the Geneva Act can be found at http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/hague.pdf.

The implementation of this Act has two primary advantages for a design applicant filing in the United States, assuming the USPTO’s Final Rules are as expected when published.

First, the term of a U.S. design patent has been extended by one year to 15 years from the date of grant for all design applications filed on or after May 13, 2015. Since the U.S. does not require maintenance fees for design patents, the granted design patent can remain in force for the entire 15 years.

Second, unlike U.S. design applications, an international design application filed under the Hague Agreement will be published shortly after filing. This is significant because provisional patent rights under 35 U.S.C. 154(d) will also now apply to published international design applications. Thus, a patentee may be able to collect a reasonable royalty from an infringer with actual notice of the pending application who makes, uses, offers for sale or sells the design as claimed in the published application prior to issuance of the patent. Provisional rights require the published design to be substantially identical to that claimed in the issued patent; however, this is less of a concern in design patents than in utility patents because many design patents are not amended during prosecution.

In addition to United States membership taking effect on May 13, 2015, South Korea became a member effective July 1, 2014, and Japan is also expected to become a member shortly.