LEGISLATIVE UPDATELEGISLATIVE UPDATE

2012 – Developments in Design Legislation2012 – Developments in Design Legislation

Pending Design Legislation

Repair Parts – “PARTS Act”H.R. 3889 (2012)

Fashion Design Sui Generis ProtectionH.R. 2511 (2011)S. 3523 (2012)

Patent Law Treaties Implementation Act of 2012S. 3486 (2012)H.R. 6432 (2012)

PARTS Act

Full title - "Promoting Automotive Repair, Trade, and Sales Act"

PARTS Act

Full title - "Promoting Automotive Repair, Trade, and Sales Act"

Generally seeks to limit design patent protection for parts used to repair motor vehicles, by eliminating infringement for

PARTS Act

Full title - "Promoting Automotive Repair, Trade, and Sales Act"

Generally seeks to limit design patent protection for parts used to repair motor vehicles, by eliminating infringement for

1) non-OEM manufacturer’s development of parts

PARTS Act

Full title - "Promoting Automotive Repair, Trade, and Sales Act"

Generally seeks to limit design patent protection for parts used to repair motor vehicles, by eliminating infringement for

1) non-OEM manufacturer’s development of parts 2) selling/using parts after 30 mos. from 1st sale offer

PARTS Act

Full title - "Promoting Automotive Repair, Trade, and Sales Act"

Generally seeks to limit design patent protection for parts used to repair motor vehicles, by eliminating infringement for

1) non-OEM manufacturer’s development of parts 2) selling/using parts after 30 mos. from 1st sale offer

Hearing before Judiciary Committee in August; bill is still in Committee

Sui Generis Protection for Fashion Designs

H.R. 2511 – Innovative Design Protection & Piracy Prevention Act

Sui Generis Protection for Fashion Designs

H.R. 2511 – Innovative Design Protection & Piracy Prevention Act

Protects the overall appearance of a fashion design

Sui Generis Protection for Fashion Designs

H.R. 2511 – Innovative Design Protection & Piracy Prevention Act

Protects the overall appearance of a fashion design

3 year term of protection

Sui Generis Protection for Fashion Designs

H.R. 2511 – Innovative Design Protection & Piracy Prevention Act

Protects the overall appearance of a fashion design

3 year term of protection

Heightened pleading standard

Sui Generis Protection for Fashion Designs

H.R. 2511 – Innovative Design Protection & Piracy Prevention Act

Protects the overall appearance of a fashion design

3 year term of protection

Heightened pleading standard

Recovery requires notice and knowledge

Sui Generis Protection for Fashion Designs

H.R. 2511 – Innovative Design Protection & Piracy Prevention Act

Protects the overall appearance of a fashion design

3 year term of protection

Heightened pleading standard

Recovery requires notice and knowledge

Remedies

S. 3523 – Innovative Design Protection Act

How does it differ from H.R. 2511?

S. 3523 – Innovative Design Protection Act

How does it differ from H.R. 2511?

- Differences are minimal

S. 3523 – Innovative Design Protection Act

How does it differ from H.R. 2511?

- Differences are minimal

- Introduces a 21-day notice requirement

S. 3523 – Innovative Design Protection Act

How does it differ from H.R. 2511?

- Differences are minimal

- Introduces a 21-day notice requirement

- Written Notice

S. 3523 – Innovative Design Protection Act

How does it differ from H.R. 2511?

- Differences are minimal

- Introduces a 21-day notice requirement

- Written Notice that “specifies how the allegedly infringing design infringed upon the protected design”

S. 3523 – Innovative Design Protection Act

How does it differ from H.R. 2511?

- Differences are minimal

- Introduces a 21-day notice requirement

- Written Notice that “specifies how the allegedly infringing design infringed upon the protected design”

Bill was passed by the Senate Judiciary Committee, but not yet by the full Senate

S. 3486 – Patent Law Treaties Implementation Act of 2012

S. 3486 – Patent Law Treaties Implementation Act of 2012

1st Bill Introduced to Implement the Geneva Act

S. 3486 – Patent Law Treaties Implementation Act of 2012

1st Bill Introduced to Implement the Geneva Act

Based on previous legislative recommendations from the USPTO and Dept of Commerce

S. 3486 – Patent Law Treaties Implementation Act of 2012

1st Bill Introduced to Implement the Geneva Act

Based on previous legislative recommendations from the USPTO and Dept of Commerce

Implements the Geneva Act within the post-America Invents Act Scheme

S. 3486 – Patent Law Treaties Implementation Act of 2012

1st Bill Introduced to Implement the Geneva Act

Based on previous legislative recommendations from the USPTO and Dept of Commerce

Implements the Geneva Act within the post-America Invents Act Scheme

Full Senate has passed the bill; sent to House

House bill is identical to Senate Bill

2006-06-01 25

S. 3486 – Patent Law Treaties Implementation Act of 2012

1st Bill Introduced to Implement the Geneva Act

Based on previous legislative recommendations from the USPTO and Dept of Commerce

Implements the Geneva Act within the post-America Invents Act Scheme

House bill is identical to Senate Bill

Geneva Act of the Hague System

Meetings of Experts 1992-1999

Geneva Act of the Hague System

Meetings of Experts 1992-1999

Finalized – July 1999

Geneva Act of the Hague System

Meetings of Experts 1992-1999

Finalized – July 1999

Senate Ratification – December 2007

Geneva Act of the Hague System

Meetings of Experts 1992-1999

Finalized – July 1999

Senate Ratification – December 2007

First Implementation Bill introduced – August 2012

Sources of Law for Hague System in US

Treaty

Treaty Regulations

Declarations from Senate Ratification

Implementation Legislation

USPTO Regulations (forthcoming)

What Is In S. 3486?

What Is In S. 3486?

Bill seeks to enact two Treaties:

What Is In S. 3486?

Bill seeks to enact two Treaties:- Geneva Act

What Is In S. 3486?

Bill seeks to enact two Treaties:- Geneva Act- Patent Law Treaty

What Is In S. 3486?

Bill seeks to enact two Treaties:- Geneva Act- Patent Law Treaty

Three Sections in Title I:

What Is In S. 3486?

Bill seeks to enact two Treaties:- Geneva Act- Patent Law Treaty

Three Sections in Title I:- International Design Applications (Sec. 101)- Conforming Amendments (Sec. 102)- Effective Date (Sec. 103)

Sec. 101 – International Design Applications

Security Review applies to Int’l Design Applications

Sec. 101 – International Design Applications

Security Review applies to Int’l Design ApplicationsDirector has the ability to review the filing date of

International Design Applications

Sec. 101 – International Design Applications

Security Review applies to Int’l Design ApplicationsDirector has the ability to review the filing date of

International Design ApplicationsWithdrawn applications often will not serve as prior art

in the U.S.

Sec. 101 – International Design Applications

Security Review applies to Int’l Design ApplicationsDirector has the ability to review the filing date of

International Design ApplicationsWithdrawn applications often will not serve as prior art

in the U.S.Substantive for examination of international design

applications

Sec. 101 – International Design Applications

Security Review applies to Int’l Design ApplicationsDirector has the ability to review the filing date of

International Design ApplicationsWithdrawn applications often will not serve as prior art

in the U.S.Substantive for examination of international design

applicationsInternational design applications may ultimately issue

as a US Design Patent

Sec. 101 – International Design Applications

Security Review applies to Int’l Design ApplicationsDirector has the ability to review the filing date of

International Design ApplicationsWithdrawn applications often will not serve as prior art

in the U.S.Substantive for examination of international design

applicationsInternational design applications may ultimately issue

as a US Design Patent

Sec. 102 – Conforming Amendments

Allows international applications to serve as the basis for, or receive priority from other applications

Sec. 102 – Conforming Amendments

Allows international applications to serve as the basis for, or receive priority from other applications

Prevents provisional applications from receiving priority from International Design applications

Sec. 102 – Conforming Amendments

Allows international applications to serve as the basis for, or receive priority from other applications

Prevents provisional applications from receiving priority from International Design applications

Changes the term of all US Design Patents from 14 years to 15 years

Sec. 102 – Conforming Amendments

Allows international applications to serve as the basis for, or receive priority from other applications

Prevents provisional applications from receiving priority from International Design applications

Changes the term of all US Design Patents from 14 years to 15 years

Grants provisional rights for published International Design Applications

Sec. 103 – Effective Date

The Act will go into effect the later of

Sec. 103 – Effective Date

The Act will go into effect the later of - 1 year from enactment, or

Sec. 103 – Effective Date

The Act will go into effect the later of - 1 year from enactment, or - The date of into force of the treaty.

Sec. 103 – Effective Date

The Act will go into effect the later of - 1 year from enactment, or - The date of into force of the treaty.

The provisions of Ch. 38 only pertain to applications filed on or after effective date

Departing Thoughts

Departing Thoughts

After so long, it’s finally here.

Departing Thoughts

After so long, it’s finally here.

Both House and Senate bills have bi-partisan support.

Departing Thoughts

After so long, it’s finally here.

Both House and Senate bills have bi-partisan support.

Statute and Treaty leave important aspects of the application process up to the USPTO, so rule-making process will be key.

FAQ's re Geneva Act Implementation

How much will filing cost?

FAQ's re Geneva Act Implementation

How much will filing cost?

12 month automatic issuance

FAQ's re Geneva Act Implementation

How much will filing cost?

12 month automatic issuance

How will US applicants be able to access the System?

FAQ's re Geneva Act Implementation

How much will filing cost?

12 month automatic issuance

How will US applicants be able to access the System?

Where will they be able to gain protection?

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