Securing Domestic and International Design Rights in One Step: The Patent Law Treaties Implementation Act of 2012

Friday, January 18, 2013, by Holly Bannerman

On December 18, 2012, President Obama signed the Patent Law Treaties Implementation Act of 2012, which implements the provisions of the Hague Agreement and the Patent Law Treaty.  The Act is intended to unify America’s design patent laws with the rest of the world.  In order to effectuate this goal, the law allows inventors to use a single application to secure design rights in the US and other member countries.  To further streamline the design patent process for domestic and international inventors, the portions of the Act dealing with the Patent Law Treaty aim to synchronize the US’ patent prosecution procedures with those of other countries.  Reaction to the legislation has been mixed.

Concerns have been raised that the new law places too great a burden on the US Patent and Trademark Office (“UPTO”) who, pursuant to the Act, must reject design applications from other countries within a certain amount of time.  Many predict that once the Act takes effect, the already backlogged UPTO will be flooded with new applications. Furthermore, while the Act will make it easier for design patent holders to ward off knockoffs, many speculate that it may also lead to an increase in litigation.  At a time when patent lawsuits have already become commonplace for America’s technology and retail sectors, this may only increase the strain on those companies and further complicate the US patent system.  Considering that under current trademark laws the US already provides inventors with legal tools to stop rip-offs, many experts are wondering why Congress passed this legislation in the first place—especially given these potential indirect consequences.

The Act is intended to unify America’s design patent laws with the rest of the world.  In order to effectuate this goal, the law allows inventors to use a single application to secure design rights in the US and other member countries.

Proponents of the Act assert that it will bring about positive change.  For one, by implementing the Hague Agreement, the terms of design patents will increase from fourteen to fifteen years.  There are also the cost savings.  The streamlining of prosecution procedures has the potential to reduce design prosecution costs around the world.  Similarly, by allowing US inventors to apply for international and domestic design rights with one application, the costs of filing will significantly decrease.  Additionally, the Act can provide provisional rights, which may include the ability to obtain damages for the period between publication (shortly after an international design patent is filed, it is published) and issuance of a US design patent.  While such provisional protections are not guaranteed, early publication, along with the potential to claim damages may deter potential knockoffs.  Finally, it is also believed that as a result of the US implementing the Hague Agreement, other countries may decide to adopt the Agreement.  This would allow applicants to secure design rights in even more countries.

Since the provisions of this Act are not to take effect until approximately a year after enactment, experts will have to continue speculating as to what the impacts of the new law may be until the end of the year.