The United States Deposits Ratification of the 1999 Geneva Act of the Hague Agreement and Becomes a Member Country of the Hague System
On Friday, February 13, 2015, the United States deposited an instrument of ratification to the 1999 Geneva Act (Geneva Act) of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) with the World Intellectual Property Organization (WIPO). With this final step by the United States to become a signatory to the Geneva Act, qualifying U.S. applicants will be able to more easily protect their design patents in member countries and intergovernmental organizations (Contracting Parties) that have also signed on to the Geneva Act.
Specifically, the registration system (the Hague System) allows a qualifying applicant to file a single application, under a single fee structure with up to 100 industrial designs, in order to apply for protection under the laws of any one of the contracting parties designated by the applicant. Examination of the design application remains subject to each designated contracting parties’ rules. As such, notwithstanding the ability to include up to 100 designs on an international application, applicants filing in the United States for a design patent are permitted a single design invention per application, which may include multiple embodiments. Embodiments determined to be unique designs may require divisional applications and consequently, additional filing fees. The United States Patent and Trademark Office’s (USPTO) rules governing the processing and examination of design patents filed under an international application will go into effect on May 13, 2015, and publication in the Federal Register will follow the United States’ ratification to the Geneva Act.
Some significant implications of the United States’ ratification of the Geneva Act are:
- Cost reductions in the filing of applications for multi-jurisdictional protection. While applicants will need to retain local counsel to respond to substantive actions in designated contracting party jurisdictions, the mere filing of an application will no longer require separate action and payment of fees in each designated jurisdiction.
- An extension of the term of design patents. With the implementation of the Geneva Act, the term of design patents, now fourteen years under U.S. Federal law, will be extended an additional year for a term of fifteen years from issuance of the patent.
- Application of provisional patent rights for design applications. Under 35 U.S.C. 154(d), a patentee is granted provisional patent rights with the publication of an application. Publication serves as actual notice of a pending application, and may allow the patentee to collect reasonable royalties prior to the issuance of the patent. Prior the United States’ ratification, U.S. design applications were not published, and thus, provisional rights were unavailable. Under the Hague Agreement, a Hague System design patent publication designating the United States will qualify as an U.S. design patent publication, and provisional U.S. design patent rights will be available for the first time.
Along with the United States, Japan also became a signatory to the Geneva Act on Friday February 13, 2015. WIPO points out that the United States and Japan account for 7.1% of the world’s design patent applications. In addition, 12.9% of the world’s design applications were filed by patentees from the United States and Japan. With the ascension of South Korea in 2014, the Hague System will now include three of the four world jurisdictions having the highest number of design patent application filings.
Gibbons will continue to monitor and report on final rules to be issued by the USPTO and implications for U.S. design patent application filers.