Late last year, President Obama signed legislation for the United States to join the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva on July 2, 1999. Four major design patent changes go into effect December 18, 2013.
PCT-Like Filing: Hague creates an international design patent application (referred outside the U.S. as “industrial designs”). The provisions are codified in 35 USC 381-390. In most cases, one would file the initial application with the USPTO. The USPTO would then forward the international application to WIPO for publication. The process will be similar to PCT.
+1 Year to Patent Term: For U.S. filings, the new law extends the term of design patents by an extra year to 15-years as calculated from the design patent’s date of issuance. As is currently the case, there will be no maintenance fees on design patents.
Publication: Soon after filing, design patent applications will be published but this may be delayed up to 30 months. This could be especially important to companies like Apple that do not want the public or its competition to see designs years before they are commercialized.
Provisional Rights: Although seldom (if ever) used in the U.S. for utility applications, provisional patent rights (not the type of application) are asserted against an infringer while the patent is pending. If the patent ultimately issues with the same claims (in this case….drawings) then a reasonable royalty may be recovered from the time of actual notice.
After the Egyptian-Goddess case, design patents were already on the upswing. With the Apple-Samsung case hinging largely on design patents, their recovery value has been validated. This December, design patents will further be enhanced with cost-effective international filings, longer terms, publication and provisional rights.