The U.S. design patent system is one in which the application must be substantively examined to ensure compliance with both the administrative requirements and the substantive legal requirements of design patent protection in the United States. However, many foreign countries do not provide substantive examination of design applications, operating a simple filing system instead. One challenge of the Hague Agreement is to develop rules to accommodate the more restrictive U.S. examination system and the dramatically different simple filing systems.
Some of the highlights of the major changes to the U.S. system implemented in the rules issued today include:
(See the Summary of Major Changes in the rules.)
In order to be entitled to a U.S. filing date under the Hague Agreement, many foreign applicants will need to alter the content of their foreign filing. Specifically, the U.S. laws require each design patent application to include a claim to the invention, e.g., “We claim the ornamental design for a BOTTLE as shown and described.” Foreign applications do not require the inclusion of a claim; but in order to secure a U.S. filing date under the Hague Agreement, all applications must include a claim. Therefore, foreign applicants may need to change the form of their original design filing.
Similarly, U.S. applicants may need to change the content of their filings in order to take full advantage of the Hague system. Specifically, some countries require the inclusion of a brief description of the characteristic features of the industrial design, but such a written description would typically not be included in a U.S. design patent application. However, in order for a U.S. applicant to be entitled to a filing date in some foreign countries, the application must include this brief description. (See Article 5(2) of the Hague Agreement.) At first blush, adding this language to a U.S. filing would appear to be a simple process; but the USPTO suggests that whatever language is included as part of this description of characteristic features can be used to define the scope of any resulting U.S. design patent.
These new rules will clearly require more thought and strategic drafting by both U.S. applicants seeking the benefit of the Hague Agreement outside the United States, and similarly require analogous thought and strategic drafting by foreign applicants seeking access to the U.S. system through the Hague. Foley’s Design Rights team of professionals will supplement this alert with more detailed analysis on the Hague rules in the coming weeks.
Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and our colleagues. If you have any questions about this update or would like to discuss this topic further, please contact your Foley attorney or the following:
Kristin M. Anderson
Richard J. McKenna
Alexander J. Neuworth