1. LEGISLATIVE UPDATE 2012 – Developments in Design Legislation

2. Pending Design Legislation Repair Parts – “PARTS Act” H.R. 3889 (2012) Fashion Design Sui Generis Protection H.R. 2511 (2011) S. 3523 (2012) Patent Law Treaties Implementation Act of 2012 S. 3486 (2012) H.R. 6432 (2012)

3. PARTS Act Full title - "Promoting Automotive Repair, Trade, and Sales Act"

4. PARTS Act Full title - "Promoting Automotive Repair, Trade, and Sales Act" Generally seeks to limit design patent protection for parts used to repair motor vehicles, by eliminating infringement for

5. PARTS Act Full title - "Promoting Automotive Repair, Trade, and Sales Act" Generally seeks to limit design patent protection for parts used to repair motor vehicles, by eliminating infringement for 1) non-OEM manufacturer’s development of parts

6. PARTS Act Full title - "Promoting Automotive Repair, Trade, and Sales Act" Generally seeks to limit design patent protection for parts used to repair motor vehicles, by eliminating infringement for 1) non-OEM manufacturer’s development of parts 2) selling/using parts after 30 mos. from 1st sale offer

7. PARTS Act Full title - "Promoting Automotive Repair, Trade, and Sales Act" Generally seeks to limit design patent protection for parts used to repair motor vehicles, by eliminating infringement for 1) non-OEM manufacturer’s development of parts 2) selling/using parts after 30 mos. from 1st sale offer Hearing before Judiciary Committee in August; bill is still in Committee

8. Sui Generis Protection for Fashion Designs H.R. 2511 – Innovative Design Protection & Piracy Prevention Act

9. Sui Generis Protection for Fashion Designs H.R. 2511 – Innovative Design Protection & Piracy Prevention Act Protects the overall appearance of a fashion design

10. Sui Generis Protection for Fashion Designs H.R. 2511 – Innovative Design Protection & Piracy Prevention Act Protects the overall appearance of a fashion design 3 year term of protection

11. Sui Generis Protection for Fashion Designs H.R. 2511 – Innovative Design Protection & Piracy Prevention Act Protects the overall appearance of a fashion design 3 year term of protection Heightened pleading standard

12. Sui Generis Protection for Fashion Designs H.R. 2511 – Innovative Design Protection & Piracy Prevention Act Protects the overall appearance of a fashion design 3 year term of protection Heightened pleading standard Recovery requires notice and knowledge

13. Sui Generis Protection for Fashion Designs H.R. 2511 – Innovative Design Protection & Piracy Prevention Act Protects the overall appearance of a fashion design 3 year term of protection Heightened pleading standard Recovery requires notice and knowledge Remedies

14. S. 3523 – Innovative Design Protection Act How does it differ from H.R. 2511?

15. S. 3523 – Innovative Design Protection Act How does it differ from H.R. 2511? - Differences are minimal

16. S. 3523 – Innovative Design Protection Act How does it differ from H.R. 2511? - Differences are minimal - Introduces a 21-day notice requirement

17. S. 3523 – Innovative Design Protection Act How does it differ from H.R. 2511? - Differences are minimal - Introduces a 21-day notice requirement - Written Notice

18. S. 3523 – Innovative Design Protection Act How does it differ from H.R. 2511? - Differences are minimal - Introduces a 21-day notice requirement - Written Notice that “specifies how the allegedly infringing design infringed upon the protected design”

19. S. 3523 – Innovative Design Protection Act How does it differ from H.R. 2511? - Differences are minimal - Introduces a 21-day notice requirement - Written Notice that “specifies how the allegedly infringing design infringed upon the protected design” Bill was passed by the Senate Judiciary Committee, but not yet by the full Senate

20. S. 3486 – Patent Law Treaties Implementation Act of 2012

21. 1st Bill Introduced to Implement the Geneva Act

22. S. 3486 – Patent Law Treaties Implementation Act of 2012 1st Bill Introduced to Implement the Geneva Act Based on previous legislative recommendations from the USPTO and Dept of Commerce

23. S. 3486 – Patent Law Treaties Implementation Act of 2012 1st Bill Introduced to Implement the Geneva Act Based on previous legislative recommendations from the USPTO and Dept of Commerce Implements the Geneva Act within the post-America Invents Act Scheme

24. S. 3486 – Patent Law Treaties Implementation Act of 2012 1st Bill Introduced to Implement the Geneva Act Based on previous legislative recommendations from the USPTO and Dept of Commerce Implements the Geneva Act within the post-America Invents Act Scheme Full Senate has passed the bill; sent to House House bill is identical to Senate Bill

25. 2006-06-0125 S. 3486 – Patent Law Treaties Implementation Act of 2012 1st Bill Introduced to Implement the Geneva Act Based on previous legislative recommendations from the USPTO and Dept of Commerce Implements the Geneva Act within the post-America Invents Act Scheme House bill is identical to Senate Bill

26. Geneva Act of the Hague System Meetings of Experts 1992-1999

27. Geneva Act of the Hague System Meetings of Experts 1992-1999 Finalized – July 1999

28. Geneva Act of the Hague System Meetings of Experts 1992-1999 Finalized – July 1999 Senate Ratification – December 2007

29. Geneva Act of the Hague System Meetings of Experts 1992-1999 Finalized – July 1999 Senate Ratification – December 2007 First Implementation Bill introduced – August 2012

30. Sources of Law for Hague System in US Treaty Treaty Regulations Declarations from Senate Ratification Implementation Legislation USPTO Regulations (forthcoming)

31. What Is In S. 3486?

32. Bill seeks to enact two Treaties:

33. What Is In S. 3486? Bill seeks to enact two Treaties: - Geneva Act

34. What Is In S. 3486? Bill seeks to enact two Treaties: - Geneva Act - Patent Law Treaty

35. What Is In S. 3486? Bill seeks to enact two Treaties: - Geneva Act - Patent Law Treaty Three Sections in Title I:

36. What Is In S. 3486? Bill seeks to enact two Treaties: - Geneva Act - Patent Law Treaty Three Sections in Title I: - International Design Applications (Sec. 101) - Conforming Amendments (Sec. 102) - Effective Date (Sec. 103)

37. Sec. 101 – International Design Applications Security Review applies to Int’l Design Applications

38. Sec. 101 – International Design Applications Security Review applies to Int’l Design Applications Director has the ability to review the filing date of International Design Applications

39. Sec. 101 – International Design Applications Security Review applies to Int’l Design Applications Director has the ability to review the filing date of International Design Applications Withdrawn applications often will not serve as prior art in the U.S.

40. Sec. 101 – International Design Applications Security Review applies to Int’l Design Applications Director has the ability to review the filing date of International Design Applications Withdrawn applications often will not serve as prior art in the U.S. Substantive for examination of international design applications

41. Sec. 101 – International Design Applications Security Review applies to Int’l Design Applications Director has the ability to review the filing date of International Design Applications Withdrawn applications often will not serve as prior art in the U.S. Substantive for examination of international design applications International design applications may ultimately issue as a US Design Patent

42. Sec. 101 – International Design Applications Security Review applies to Int’l Design Applications Director has the ability to review the filing date of International Design Applications Withdrawn applications often will not serve as prior art in the U.S. Substantive for examination of international design applications International design applications may ultimately issue as a US Design Patent

43. Sec. 102 – Conforming Amendments Allows international applications to serve as the basis for, or receive priority from other applications

44. Sec. 102 – Conforming Amendments Allows international applications to serve as the basis for, or receive priority from other applications Prevents provisional applications from receiving priority from International Design applications

45. Sec. 102 – Conforming Amendments Allows international applications to serve as the basis for, or receive priority from other applications Prevents provisional applications from receiving priority from International Design applications Changes the term of all US Design Patents from 14 years to 15 years

46. Sec. 102 – Conforming Amendments Allows international applications to serve as the basis for, or receive priority from other applications Prevents provisional applications from receiving priority from International Design applications Changes the term of all US Design Patents from 14 years to 15 years Grants provisional rights for published International Design Applications

47. Sec. 103 – Effective Date The Act will go into effect the later of

48. Sec. 103 – Effective Date The Act will go into effect the later of - 1 year from enactment, or

49. Sec. 103 – Effective Date The Act will go into effect the later of - 1 year from enactment, or - The date of into force of the treaty.

50. Sec. 103 – Effective Date The Act will go into effect the later of - 1 year from enactment, or - The date of into force of the treaty. The provisions of Ch. 38 only pertain to applications filed on or after effective date

51. Departing Thoughts

52. After so long, it’s finally here.

53. Departing Thoughts After so long, it’s finally here. Both House and Senate bills have bi-partisan support.

54. Departing Thoughts After so long, it’s finally here. Both House and Senate bills have bi-partisan support. Statute and Treaty leave important aspects of the application process up to the USPTO, so rule- making process will be key.

55. FAQ's re Geneva Act Implementation How much will filing cost?

56. FAQ's re Geneva Act Implementation How much will filing cost? 12 month automatic issuance

57. FAQ's re Geneva Act Implementation How much will filing cost? 12 month automatic issuance How will US applicants be able to access the System?

58. FAQ's re Geneva Act Implementation How much will filing cost? 12 month automatic issuance How will US applicants be able to access the System? Where will they be able to gain protection?

59. THANK YOU