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President Obama Signs Patent Law Treaties Implementation Act Into Law
Practical Law Legal Update 5-523-0102 (Approx. 3 pages)
President Obama Signs Patent Law Treaties Implementation Act Into Law
by PLC Intellectual Property & Technology
| Published on 19 Dec 2012 • USA (National/Federal) |
On December 18, 2012, President Obama signed the Patent Law Treaties Implementation Act of 2012, which amends portions of the Patent Act and implements both the Hague Agreement Concerning International Registration of Industrial Designs and the Patent Law Treaty.
President Obama signed the Patent Law Treaties Implementation Act of 2012 (Act) on December 18, 2012. The Senate unanimously passed the Act on September 22, 2012 and the House passed it on December 5, 2012.
The Act, which amends portions of the Patent Act, implements two treaties that the Senate ratified in 2007:
- The Geneva Act of Hague Agreement Concerning the International Registration of Industrial Designs, which streamlines procedures for registering an industrial design internationally.
- The Patent Law Treaty, which limits the formalities that a signatory country can impose on foreign patent applications and unifies various procedural aspects of patent prosecution among signatories.
Implementation of the Hague Agreement
The Act provides that any person who is a national of the US, or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the US, may file an international design application (an application for international registration) by submitting an application to the USPTO designating the Hague Agreement countries in which the applicant seeks protection. The International Bureau of WIPO reviews the application for compliance with formalities and then forwards the application to the designated countries for examination. Foreign applications are also able to designate the US in their applications filed in member countries outside the US.
The Act also details, among other things:
- The requirements for international design applications.
- How to determine the right of priority for:
- national applications;
- prior foreign applications; and
- prior national applications.
- The consequences of a withdrawn or abandoned international design application.
Implementation of the Patent Law Treaty
The Act amends certain portions of the Patent Act to implement the Patent Law Treaty, including:
- Authorizing the USPTO to establish procedures for:
- reviving an unintentionally abandoned patent application;
- accepting an unintentionally delayed payment of the patent issuing fee; or
- accepting an unintentionally delayed response by the patent owner in a reexamination proceeding.
- Restoring priority rights.
Additional Key Provisions of the Act
The Act also:
- Extends the term of granted design patents from 14 years to 15 years for all new design patent applications filed after the effective date of the Implementation Act.
- Permits applicants to include up to 100 design inventions in one international design application, subject to certain requirements.
The Act takes effect on December 18, 2013 and applies to any:
- Patent issued before, on or after that date.
- Patent application pending on or filed after that date