Changes to Design Patent Law in the U.S.

In 2012, the U.S. enacted the Patent Law Treaties Implementation Act to allow the US to become a member of the Hague Agreement for the registration of design patents.

The treaty was previously ratified but not put into law. On February 13, 2015, the U.S. took its final step to become a formal member and gave its “instruments of ratification” to the World Intellectual Property Organization (WIPO). Under the rules of membership there will be a three-month delay, so the U.S. will become a member on May 13, 2015.

Currently, U.S. applicants wishing to pursue protection for industrial designs in multiple jurisdictions must file individual applications in each of the respective jurisdictions. When the U.S. joins the Hague Union, there will be at least two benefits for design patent applicants: (1) the Hague Union offers an easy-to-use international design application that can contain up to 100 designs in a single application; and (2) U.S. design patent term will move from 14 years to 15 years.

The Hague Union provides a practical solution for registering up to 100 designs in over 62 territories with the filing of one single international application. Although the USPTO has not released its final rules, it appears that these changes will only be effective for applications filed on or after the May 13 date.

While the US will continue to examine design applications under their current substantive law, many countries do not conduct any substantive examination. Additionally, the U.S. move to join the Hague Union has motivated other countries to join the Hague Union. South Korea, Japan, Canada, and China, are all expected to join in the near future. Most European countries (and the EU) are already members.