Legal Alert: A New System For International Design Protection

April 29, 2015

Design patents continue to grow in importance for many industries. If your company designs tangible products or packages, there is a new, efficient way to seek international protection for design features.

On May 13, 2015, the U.S. will become a member of the Hague Agreement for Designs, which will provide a streamlined solution for registering up to 100 designs in over 64 territories through a single application. Substantive examination of all design patent applications will remain unchanged.

Major changes include:

  • Standardized Applications: The Hague Agreement provides for a single, standardized application to be submitted in all member countries. To date that includes 62 contracting parties including the EU, most of the European countries individually and South Korea. Japan will join around the same time the U.S. joins and we expect Canada, and China to soon join. Starting on May 13th, applicants will be able to file a single application at the U.S. Patent Office requesting registration in all member countries.
  • Changes to the U.S. Patent Term: In implementing the Hague Agreement, the design patent term in the U.S. will change from 14 years to 15 years from the date of issuance.
  • Granting of Provisional Rights: The Agreement provides for provisional patent rights for published international applications that designate the U.S. Similarly to U.S. utility patents, if an issued U.S. design patent is substantially similar to the published international application, the patent owner of an infringed design patent may be entitled to a reasonable royalty between publication and the U.S. issue date.
  • Multiple Designs in a Single Application: The Hague system allows applicants to include up to 100 designs in a single registration (if all of the designs are in the same Locarno class). This can be very useful for registrations in foreign jurisdictions but must be used with caution in the U.S. The U.S. will still allow for only one inventive concept in each patent application and therefore, will issue restriction requirements to applications that contain more than one invention. Prosecution history estopple may attach to cancelled figures.

International design protection might provide substantial competitive benefits. While there are many advantages to this new system, it must be done with consideration to the intricacies of U.S. patent law. Now is the time to start thinking about your products' new surface decorations, ornamental configurations, decorative coatings and packaging. Adding design features to existing products can help distinguish your products in a competitive market.

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Name Title Direct Dial Vcard
Braginsky, Philip Partner Partner 212.216.8065 VCard
Dennehy, Matthew T. Associate Associate 212.216.1128 VCard
Goldsmith, Amy B. Partner Partner 212.216.1135 VCard
Lin, Rachel J. Counsel Counsel 212.216.1152 VCard
Lippert, Nels T. Counsel Counsel 212.216.1157 VCard
Rosenberg, Mark J. Partner Partner 212.216.1127 VCard
Shravah, Aasheesh Counsel Counsel 212.216.1132 VCard
Tenenbaum, Alan Partner Partner 212.216.1166 VCard
Xia, Jing Partner Partner 212.216.1158 VCard

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