Stephen D. Milbrath and Matthew Horowitz Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A. January 10, 2013 The Hague Agreement and Patent Treaty Implementation Act and Their Likely Impact

Introduction The Patent Implementation Act implements two different treaties: The Hague Agreement Concerning International Registration of Industrial Designs and the Patent Law Treaty. The treaties were signed in 1999 but were not ratified by the senate until December of 2007 The implementation act was finally passed by the house in December Effective date: December 2013.

Purpose of the Implementation Act The Act and the Treaties are intended to make the process of prosecuting design patent applications simpler and less expensive. There are at least 30 participants, according to WIPO, including the European Union Thus, one should be able to file a single application for all 30 participants The Patent Law Treaty also seeks to harmonize procedures for filing applications.

U.S. Design Patent Pre-PLTIA Protects “design embodied in or applied to an article of manufacture (or a portion thereof) and not the article itself.” – Includes ornamental designs such as surface ornamentation and configuration of goods. National application only (PCT not applicable) Filing Requirements – Design application and fee transmittal forms – Application Data sheet – Specification Single claim only – Drawings/Photographs Examination – Formality rejections (i.e. fails to comply with drawings) – Substantive rejections (i.e. novelty, ornamentality, obviousness, originality, offensiveness) – Mandatory restriction requirement if not patently distinct (same overall characteristics with differences de minimis or obvious) Not Published 14 year life from date patent is granted (no fees).

Registered Community Design (RCD) Design is “outward appearance of a product or part of it, resulting from the features (in particular, the lines, contours, colours, shape, texture and/or materials) of the product itself and/or its ornamentation.” Filing Requirements – Name/Address – Language – Visual representation Can have up to 99 designs per application as long as they are in the same classification under Locarno. – Type of product (Locarno Classification) – Signature – Fees Examination – Much simpler process (Initial Office response usually within 10 days) – Novelty not considered. Published (usually within 8 weeks but can be delayed up to 30 months) 5 year initial life but can be extended to 25 years (fees)

Limitations of Existing Practices Design patents have national application only and are not included in the Patent Cooperation Treaty. This prevents the applicant from getting foreign protection without a separate filing in each country. The application cannot obtain the benefit of foreign priority unless the design application is filed within six months after the first filing in any country subscribing to the Paris Convention (35 U.S.C. § 172). Design patents are currently 14 years, measured from the date of the grant Applicants can seek European Union-wide design protection through a Registered Community Design. However protection outside the European Union may require local application in each state. The usual effect: you must hire a foreign patent agent.

International Design Application (IDA) Parallel to PCT for design patents. – No prior national application or registration is needed. Who Can file? – Anyone who is a national, has a domicile, or has industrial/commercial property in a State that is a Contracting Party to the Hague Agreement. Requirements for Filing – Applicant information, – Reproduction of the designs (up to 100 as long as the yare in the same Locarno classification) – Designation of countries where protection is sought. – Can be file din English and no translation is required. Application is published but can be deferred up to 30 months or even accelerated. The International Bureau (“IB”) of WIPO does the examination but will only reject on formal requirements. – Does not look at issues of novelty or other substantive grounds. – Instead, within 6-12 months of publication, the Office in the country designated conducts a substantive examination and can refuse to grant protection in its territory for substantive reasons only. Duration is 5 years but can be extended up to 25 years.

Key Benefits to Practitioners A single design application can be filed to seek protection in multiple countries. Applications can include up to 100 different design inventions within a single international design application, although this benefit is limited by the classification requirements. Foreign applicants can designate the USA in their respective applications filed overseas. Savings in patent prosecution costs on foreign agents

Key Benefits to Practitioners (Continued) An extension of the patent term for design patents from 14 to 15 years Harmonization of publication rules to that international registrations designating the USA will constitute publication here. Extending provisions rights under 35 U.S.C. § 154(d) to sue for reasonable royalty after publication of the application as to international design applications.

Key Provisions of the Act Implementing the Hague Agreement The specific provisions of the act, which seeks to implement the Hague agreement are found in Sections 381 through 390 plus specific amendments to the Patent Act.

Requirements for the Application Section 383 specifies the requirements of the new international design application. These requirements are in essence, in addition to Chapter 16: Request for international registration Designation of the relevant patent office Data concerning the applicant Reproduction of the design (See Hague Article 12 re: designated office’s limits on refusal on form of reproduction, etc, like surface shading) Indication of the product or products that constitute the design Fees

Who Can Apply in the U.S. PTO Under Section 383(a)? The applicant seeking an IDA through the U.S. PTO must be – a U.S. national, – a domicile of the U.S., – a habitual resident of the U.S., – or a “real and effective industrial or commercial establishment in the U.S.”

The Application of 35 U.S.C. § 184 for Applications Made in The U.S. Section 382(d) implements 35 U.S.C. § 184 by providing that an application filed in the U.S. shall be considered a filing of an application in a foreign country if the design application is filed outside the U.S. at WIPO or with an “intergovernmental organization” (listed in the Hague) This triggers Section 184’s six month review period by the PTO for determining whether the invention should be screened-out for purposes of national security.

Filing Date Provisions Under Section 384 an international design application designating the United States but otherwise meeting the requirements of Chapter 16 of the Patent Act for design patents “may be treated as a design application under Chapter 16.” This gives the application the filing date that would be accorded any other U.S. application.

PTO’s Director’s Right to Adjust the Filing Date Under Section 384(b) The director of the PTO has the discretion to determine that the filing date of an international design application in the United States is a date other than the effective registration date determined by WIPO. If the PTO exercises its discretion, it may assign a filing date in the United States other than the effective registration date. 384 (b) is not clear: The PTO may “determine that the filing date of an international design application in the United States is a date other than the effective registration date.” This would be an international application. The “effective registration date” means the date of international registration. (Section 381 (6)). What is this then intended to accomplish?

Hypothetical Examples An applicant files in Europe an application for a handicraft in the International Bureau. The applicant would not qualify as an article of manufacture in the U.S. It would thus not be in compliance with Chapter 16. Can the U.S. refuse registration? If so, what circumstances can an application qualify as an IDA and yet not be in compliance with Chapter 16?

The PTO’s Right to Examine International Applications Section 385: “An international design application designating the U.S shall have the effect, for all purposes, from its filing date determined in accordance with section 384, of an application for patent filed in the Patent and Trademark Office pursuant to Chapter 16.” Under Section 389 (b): If the application is international, “questions of substance... shall be determined as in the case of applications under chapter 16.” This raises the question: Will the U.S.P.T.O. be the preferable forum now for international design applications?

Complicated Priority Rules Section 386 sets forth a series of complicated priority rules for the new international design applications. For national applications based on prior international design applications designating at least one country other than the U.S., the application is entitled to the benefit of the earlier filing date, but only if it would be otherwise eligible under 35 U.S.C. § 119(a) through (d) as limited by the six month maximum of 35 U.S.C. § 172

Priority of Foreign Applications Designating the U.S. If the application is a foreign application designating the United States, it is entitled to the priority “based on a prior foreign application, a prior international application … designating at least one country other than the United States or a prior national design application designating at least one country other than the United States.” (§ 386(b) of the Act). The right of priority is limited, however, by 35 U.S.C. §§ 119(a) through (d) and 172. Another priority rule: Priority is also available for prior national applications to the extent available under 35 U.S.C. § 120 for an application filed in the United States. The PTO may require the filing of a certified copy of such application with a translation of the foreign application as necessary (§ 386(c))

New PTO Director Authority to Grant Relief Section 387 of the Act gives the director the discretion to excuse the failure to act within a prescribed time limit for international design applications upon a showing of “unintentional delay”

Provisional Right to Sue for Royalties One of the conforming amendments to the Patent Act implemented by the Act provides that the right to sue for the imposition of reasonable royalty for acts of post-publication infringement is extended to international design applications. (Section 102 (6)(b) amending 35 U.S.C Section 154 (d)(1)). Since U.S. design applications are not published, this gives the patent owner a potential new right to take advantage of the provisional right to sue for royalties from the date of publication of the international design application.

Some Hypotheticals Concerning the Right to Sue for Royalty When would you not file an IDA? If you file under the IDA, when would you abandon to prevent application? When would you delay publication by payment of the necessary fees? (Section 390) Must you provide the infringer with notice of the publication since it will be published by WIPO? (See 35 USC Section 154(d) (B))

Patent Law Treaty Implementation Provisions The Act amends 35 U.S.C. § 111 as to filing fees, oath, declaration requirements, etc. and provides that the filing date of an application shall be the date on which a specification, with or without claims, is received by the PTO The director is now permitted to revive an unintentionally abandoned application, accept an unintentionally delayed fee for issuance of an patent and accept an unintentionally delayed response from the patent owner to a reexamination request. This results from amendments to Patent Law Treaty Section 27

New Provision on Extension of Application Periods The Act also amends the Patent Act to provide that the director can extend the 12 month period for filing utility applications in the U.S. that seek to benefit from the earlier filing date of an application for the same invention in the a foreign country pursuant to 35 U.S.C. § 119. The extension may be for an additional two months. The applicant must show that the delay was unintentional. Similarly 35 U.S.C. § 365(b) is now amended to provide that the director may grant a two month extension for an unintentionally delayed claim for priority under the Patent Cooperation Treaty. The director can also allow a priority claim for an application that was not filed within the specified priority period, but was filed within the extended application period (amending 35 U.S.C. § 261)

Recording Ownership Interest Requirement The Act also amends 35 U.S.C. § 261 to require that the PTO keep a register of interests in patents and applications for patents. For the first time, the Patent Act now defines the term “assignment” to include an interest that constitutes an assignment (35 U.S.C. § 261). Illustration: A and B are investors, B gives interest A in patent that is less than full ownership: – Does this constitute an assignment? – Does this statute require recording of all licenses?

Criticisms of the Act Possible violation of provisions of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). – Requires that designs receive protection based only on novelty not non-obviousness as required by U.S. Is it feasible to have a Patent Examiner examine 100 designs for novelty and non-obviousness? Restriction requirement still exists, resulting in an up to 99 way restriction. Since design patent term is from date of grant could result in lengthy term with overlapping protection.