Companies selling global products frequently take advantage of design protection in multiple countries. Recent US legislation clears the way for streamlined design patent filings in several countries with a single application. The United States took steps last week to join an international agreement that affects the rights of those applying for design patents. On Friday, February 13, 2015, the United States submitted the formal papers necessary for the US to join the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement). The terms of the Hague Agreement go into effect in the United States on May 13, 2015. Under the new law, applicants no longer have to pursue design protection in individual countries and can instead file a single international design application with the United States Patent and Trademark Office (USPTO) and obtain protection in all countries that are members to the Hague Agreement. The international application can contain up to 100 designs in a single application. The term of designs patents filed on or after May 13, 2015 will change from 14 years to 15 years.  The USPTO will soon publish final rules describing how the USPTO will process and examine international applications. Because US Design Patents may only contain a single claim, the rules should clarify how the USPTO will address applications that contain up to 100 designs. By entering the Hague Agreement, the United States sparked several other countries to join, including South Korea and Japan. Canada, China, and Russia are also exploring joining the Hague Agreement.

Design patents concern the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Design patents may cover the shape of an article, surface ornamentation applied to an article, or a combination of both. Design patents are becoming increasingly more valuable in today’s consumer products-driving economy. Please contact Jake Wharton or Jack Hicks, or any of Womble Carlyle’s patent attorneys for more information or to learn how your business can potentially benefit from design patents and from the upcoming changes in the law.

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To discuss this alert please contact Jake Wharton, Jack Hicks or the Womble Carlyle Intellectual Property attorney with whom you normally work.