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Entrepreneurs: Get to know pending design patent law changes

About the author: Ryan T. Grace is a co-founder of ADVENT, an intellectual property law firm in Omaha.

Read Grace’s earlier article:The race has begun: First-to-file under the America Invents Act is here

A design patent is a patent that typically protects the ornamental design of a functional object. For example, jewelry, food containers, and computer icons are all examples of functional objects that can have an ornamental design that can be protected by a design patent. International protection for designs is very expensive for U.S. filers.

Currently, foreign filing for design applications is governed by provisions of the Paris Convention. There are currently 174 members to the Paris Convention and most industrialized countries are represented. Yet, with regard to design patent applications, the Paris Convention is a treaty that is utilized to recognize foreign priority. In a typical scenario, an inventor would file a design patent application in the United States (“U.S. design application”). Within six months of the date of the filing of the U.S. design application, the inventor would need to decide if there are any other member countries where the inventor would like to file the design patent application. For example, the inventor may decide that he or she would like protection in ten other countries that are members of the Paris Convention (“Paris Convention design applications”). In such a situation, the inventor’s U.S. counsel would need to contact legal counsel in each of the ten countries. Each of international legal counsel would need to prepare the formalities for the design in their respective country and pay for the filing fee. Accordingly, costs and fees for international filing can escalate quickly.

In December of 2012, the President signed into law the Patent Law Treaty Integration Act. The PLTIA implements the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs and will become effective on December 18, 2013. The Geneva Act currently includes 60 members. The implementation of the Act makes several changes to design patent law strategy that should be considered by U.S. applicants when deciding whether to file a U.S. design application, when deciding whether to file a Paris Convention design application for foreign filing, and/or when deciding whether to file an application under the Geneva Act (“Geneva Act design application”).

  • The most notable change is that applicants can file a single Geneva Act design application with the United States Patent and Trademark Office. If the Geneva Act design application is granted, it is enforceable in any of the member countries designated by the applicant at the time of filing (and that are also part of the Geneva Act).
  • Unlike a U.S. design application, a Geneva Act design applications publish very soon after the filing date and become prior art as of the date of filing. Accordingly, Geneva Act design applications afford the applicant provisional rights for infringement (e.g., damages accrue from the date of publication).
  • Unlike a U.S. design application, a Geneva Act design application can include up to one-hundred different designs as long as they are in the same art classification.
  • Unlike a U.S. design application, the country designated for examination can affect aspects of the application (e.g., nature of the drawings, rules for shading and contours, and rules related to broken lines). In this manner, examination may be carried out in a country with less strenuous formal requirements and then the design may be registered in other, designated countries (including countries with more strenuous formal requirements).

Even though the implementation of the Geneva Act will create several efficiencies for international filings of design applications, each filing should be analyzed separately to determine what filing strategy (or combination of filing strategies) will be most effective for each filing. Depending on a company’s particular goals, any combination of a U.S. design application, a Paris Convention design application and/or a Geneva Act design application may be utilized. Accordingly, keeping your patent attorney abreast of your business objectives will be even more important after the effective date of the PLTIA.


Credits: Photos courtesy of Ryan T. Grace

About the Author: Ryan T. Grace is a co-founder of ADVENT – an intellectual property law firm in Omaha, Neb. Grace’s practice primarily relates to US and international patent strategy. He has prosecuted several hundred patents. Grace is a former adjunct professor of intellectual property law at Creighton Law School and he is an inventor on around twenty US and international patent applications.

Find more information on Ryan’s practice at linkedin.com/in/ryantgrace.

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