US Congress Passes Act Implementing Patent Law Treaties

The United States Congress passed a bill on 5 December that implements several international treaty obligations, including a treaty on industrial design, according to sources. The bill now heads to President Obama for signature.

The Act, HR 6432, implements the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs and the Patent Law Treaty, both of which are managed by the World Intellectual Property Organization.

Both treaties were signed by the US in 1999 and ratified by the US Senate in 2007, according to an analysis by Foley & Lardner law firm. The provisions of the Act are expected to go into effect approximately one year after enactment, it said.

Foley & Lardner’s analysis is available here.

Marshall Brown of Foley & Larder told Intellectual Property Watch, “The use of international design applications under the Hague Treaty should help many US companies streamline their design application filings and could reduce their overall design prosecution costs. These benefits will only increase as additional countries enact their own implementing legislation.”

“Additionally,” Brown said, “the new 15 year design patent term and pre-issuance publication of some applications could also be valuable to design patent holders.”

The US joining the Hague agreement could have the effect of encouraging other countries to follow suit, sources said.

Foley & Lardner attorney Hal Wegner said on his email list that the bill will extend the term of a design patent from 14 to 15 years after filing, and will mandate “that up to 100 designs may be included in a single application, provided all designs are within the same classification under the Locarno Agreement,” he said. On industrial designs, he said, “No change is made on the proscription against the patenting of industrial designs except insofar as they meet the current statutory standards for an ornamental design.” Of the Patent Law Treaty, Wegner said it will not have a significant impact on patent practice. Wegner also circulated a personal report on the bill entitled, The New Industrial Design Law, a TRIPS Trap? [pdf].

PatentlyO blog also had a short analysis of this bill.

Meanwhile, WIPO members have been negotiating toward a new design treaty (IPW, WIPO, 15 March 2012).