patent public advisory committee - · road to u.s. membership • july 6, 1999 – united states...
TRANSCRIPT
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Patent Public Advisory Committee
Quarterly Meeting
International Update
Mark Powell
Deputy Commissioner for Patent Operations
May 14, 2015
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Topics for Today
• Hague Agreement Implementation – Mr. Charles Pearson
• Search Collaboration Pilots – Ms. Amber Ostrup
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What are Designs?
• U.S. issues a “Design Patent”
• Ornamental design for an article of manufacture
• Protects only the appearance of an article, not
structural or functional features
• Subject matter of an application may relate to:
– Configuration or shape of article
– Surface ornamentation applied to an article
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Hague System: Basic Concept
• The centralized acquisition and maintenance of industrial design rights
– by filing a single international application
– for a single international registration
– with effect in one or more designated Contracting Parties.
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Hague System 1883
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Hague Union
47 Geneva Act (1999) (including EU and OAPI) 15 Hague Act (1960)
62 Contracting Parties (Soon to be 64) 7
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Road to U.S. Membership
• July 6, 1999 – United States signed Agreement
• December 7, 2007 – The Senate considered; Advice and consent to ratification agreed to in Senate
• December 18, 2012 – Pres. Obama signed into law the Patent Law Treaties Implementation Act of 2012
• February 13, 2015 – Instrument of Ratification deposited with WIPO
• April 2, 2015 – Final Rules Published
• May 13, 2015 – Hague Agreement effective in U.S.
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Illustrative Statistics and Figures
WIPO:
• 2924 International Applications in 2014
• 14,441 Designs covered in 2014
USPTO:
• 36,254 US design applns. filed in FY 2014
• 24,008 US design patents issued in FY 2014
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Illustrative Statistics and Figures
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Illustrative Statistics and Figures
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What is the Hague System?
• A single international application for a single international registration (IR) in which one or more Contracting Parties (CP) are designated
• If no refusal, the resulting international registration has the effect of a grant of protection in each designated Contracting Party
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…And What it is Not
• Since the Hague System is primarily a procedural arrangement, it does not determine: – the conditions for protection;
– the refusal procedure to be applied when deciding whether a design may be protected; or
– the rights which result from protection.
• Such issues are governed by the law of each Contracting Party designated in an international registration.
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Who can Use the System?
• An attachment to a Contracting Party – Nationality
– Domicile
– Real and effective industrial or commercial establishment
– Habitual residence
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You need
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Filing an International Application
• Language: English, French, or Spanish
• Directly with WIPO, electronically or on paper
• Indirectly through USPTO
• Up to 100 different designs (same Locarno class)
• Single set of formal requirements apply
• Single set of international fees can be paid to WIPO (CHF)
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Filing an International Application
Through the USPTO • The applicant must have a U.S. attachment
– U.S. must be “Applicant’s Contracting Party”
• Must pay a transmittal fee ($120) to the USPTO
• International fees required by WIPO may be paid through USPTO or directly to WIPO – Payment through USPTO must be on/before date of
payment of transmittal fee
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Contents of an IDA
• Official form (DM/1 or equivalent)
• Available at
http://www.wipo.int/hague/en/forms/
• Reproductions (drawings)
• Annex(es)
• Dependent upon designations. Available on
WIPO website
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Role of International Bureau (IB)
• World Intellectual Property Organization (WIPO)
• Examination of Formalities
• Translation into two other languages
• Recording of the IR in the International Register
• Crediting of designation fees to accounts of CPs
• Publication in the International Designs Bulletin
– every Friday on WIPO’s website http://www.wipo.int/hague/en/bulletin/haguebulletin/index.jsp
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Procedure at Designated Examining CP
• Normal Substantive Examination by Office: – To the extent it applies to national filings
– Formalities examination is skipped
– Statement of Grant of Protection may be issued
• Possible Refusal: – Made on same substantive grounds as for
regular national filings
– Communicated in time limit (U.S. 12 months) 19
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Effects of IR under Geneva Act
• Article 14(1):
– Effect as a regularly-filed application from the date of International Registration
• Final Rules published in Federal Register on April 2, 2015
• Hague Agreement will become effective in U.S. on May 13, 2015
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Final Rules
• New subpart I in 37 CFR part I specific to international design applications (IDA) – USPTO as an office of indirect filing
– Form and content requirements
– National processing provisions
• Changes to various existing rules to accommodate IDAs
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New Subpart I - § 1.1011
Applicant Applicants - U.S. examination phase: • If U.S. is designated, the IDA may be refused in the U.S.
examination phase if the applicant is not:
– Sole or joint inventors
– Legal representative of deceased or legally incapacitated inventor
– Assignee/obligated assignee/person having sufficient proprietary interest
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New Subpart I - § 1.1021
Contents § 1.1021 sets forth:
– Mandatory and optional contents for IDAs
– Certain requirements where the U.S. is
designated
• Claim
• Indications concerning the identity of the creator(s)
• Inventor’s oath or declaration
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New Subpart I - § 1.1023
Filing Date in the United States • The filing date of an IDA in the United States
is the international registration date
• Provides for review of the filing date upon petition. The petition must include: 1. A showing that the IDA is entitled to the requested filing
date, and
2. Petition fee (§ 1.17(f))
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New Subpart I - Examination
• 37 CFR 1.1062
• Examination pursuant to Title 35 U.S.C.
• Timing: Any notification of refusal to be sent to the IB
within 12 months from publication of the IR
– Exception where delay was unintentional
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Proposed Changes to Current Rules
§ 1.155 - “rocket docket”
• § 1.155 - the “rocket docket” procedure is
available in an IDA
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Additional Items
• 15 year patent term for designs – Applies to patents issuing from IDAs and domestic U.S.
design applications filed on or after May 13
• U.S. design patent rights begin upon issuance of patent
• Provisional rights may start upon publication of the international registration by IB
• Color Drawings
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International Work Sharing Collaborative Search Pilots (CSP)
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New Pilot Comparisons
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New Collaborative Search Pilots
Parallel Pilots testing prosecution efficiencies taking different
approaches to initial search and examination
• JPO – Serial search on substantially similar claims prior to Pre
Interview Communication
• KIPO – Parallel search on substantially similar claims
− Both office’s searches sent to applicant for consideration
in response to Pre Interview Communication
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Collaborative Search Pilots (CSP)
− Applications made special for first action
− Based on First Action Interview (FAI) Program • Claim Limits – 3 Independent/20 Total
• Claim Matching –claims must correspond (slight difference between JPO and KIPO)
− Applicant Requirements: • Petition in both offices
− Applicant consents to permit the USPTO and its partner offices to share information with partner offices under portions of 35 USC 122
• (a) for sending to KIPO search results from unpublished US Applications
• (c) & (e) for receiving KIPO/JPO search results and commentary in published US applications
− Pilot Duration is Two Years • JPO Pilot begins August 1, 2015
− 200 applications per year per office of first search
• KIPO Pilot begins September 1, 2015 − 200 applications for each office of earliest priority
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Collaborative Search Pilots (CSP)
Timeline − Memorandum of Understanding (MOU) signed with POPA on 5/11/15
− Memorandum of Cooperation (MOC) with JPO and KIPO will be signed at IP5 Heads/Deputy Heads Meeting 5/20 (KIPO) and 5/21 (JPO)
− Press Release on 5/22
− Federal Register Notice 6/1
− Testing/Implementation May-July • JPO Pilot begins August 1, 2015
• KIPO Pilot begins September 1, 2015
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Questions and Comments
Mark Powell Deputy Commissioner for International Patent Cooperation
(571) 272-8800
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