When the new fifteen-year design patent term takes effect?

In a recent blog post I said that May 13, 2015 will be a big day, and one of the reasons it will be a big day is that design patents granted from applications filed on or after that day will enjoy a fifteen-year term.  This is a longer term than the fourteen years with which we are familiar.

In response, alert reader and patent practitioner Karen Oster asked about the many web articles that say that the effective date for the fifteen-year patent term was fourteen months ago on December 18, 2013.  Among them are:

Price Heneveld LLP:

According to the new rules, U.S. design patent applications filed on or after December 18, 2013 will receive an extended term of 15 years upon issuance, adding one year to the previous term of 14 years.

Porter Wright Morris & Arthur LLP:

The PLTIA changes the term for U.S. design patents from 14 years after issuance to 15 years after issuance for all design patents granted from applications filed on or after Dec. 18, 2013.

Dechert LLP:

Under the Act, design patents resulting from applications filed before December 18, 2013, will have 14 year terms, and those resulting from applications filed on or after December 18, 2013, will have 15 year terms.

Stroock & Stroock & Levan LLP:

Extends the term of all design patents to 15 years … These provisions all take effect on December 18, 2013, and generally apply to applications filed on or after December 18, 2013, as well as any design patents issuing therefrom.

Sughrue Mion PLLC:

A design patent filed on or after December 18, 2013, has a term of protection of fifteen years.

Andrus Intellectual Property Law:

The PLTIA also extends the term for U.S. design patents from 14 years to 15 years after the date granted. This applies prospectively to any design patent filed on or after 1 year after enactment, or December 18, 2013, excluding those patents involved in litigation prior to enactment.

 Russell Ng PLLC:

 In the US, a design patent has a term of 14 years, or, if filed [on or] after December 18, 2013, 15 years.

Dziezak Law Firm PC:

Design patents are granted on new ornamental designs. They are valid for 14 years from the date of issue if filed before December 18, 2013, or 15 years from the date of issue if filed on or after December 18, 2013.

Notaro, Michalos & Zaccaria PC:

U.S. design patents for applications filed on or after December 18, 2013 will have a 15 year term from the issue date of the patent.

Oliff & Berridge PLC:

The Act changes the term of all U.S. design patents issued on design patent applications (international and national) filed on or after December 18, 2013 from 14 years from the issue date to 15 years from the issue date.

To understand how these law firm web articles got it wrong, one must return to the Act of Congress that is the subject of discussion.  The Patent Law Treaties Implementation Act was “enacted” (signed by President Obama) on December 18, 2012.  Here’s what the Act says about when it takes effect:

The amendments made by this title [by which is meant the Hague Agreement portion of the Act] shall take effect on the later of — (1) the date that is 1 year after the date of the enactment of this Act; or (2) the date of entry into force of the treaty with respect to the United States.

One of “the amendments made by this title” is:

(7) in section 173, by striking “fourteen years” and inserting “15 years”.

(As an aside it is fascinating to wonder whether it is significant that the term at 35 USC § 173 used to be spelled out “fourteen” and is now communicated in Arabic numerals “15”.  I’d guess the answer is no, it is not significant.)

So now we get to work through the time line.  The “date of the enactment of this Act” is easy, it is December 18, 2012, the day that President Obama signed the Act.  “The date that is 1 year after the date of the enactment of this Act” is also easy, it is December 18, 2013.

What remains is to work out “the date of entry into force of the treaty with respect to the United States” and to see whether that date falls before or after December 18, 2013.

I explained how this works in a recent blog post and a follow-up blog post.  Basically the way the Hague Agreement treaty enters into force with respect to a country is by that country depositing its “Instrument of Accession” with WIPO.  The US deposited its Instrument of Accession on February 13, 2015, as did Japan.

According to the terms of the Hague Agreement treaty, a country can state in the Instrument itself a time delay longer than three months.  If on the other hand the Instrument is silent as to the effective date, then the effective date is three months after the date of deposit of the Instrument.  In the case of the Instrument of Accession deposited by the US, it did not state a longer period.  (The same is true of the Instrument of Accession that was deposited by Japan.)  Thus the treaty will enter into force with respect to the US (and with respect to Japan) on May 13, 2015.

The analysis is at this point nearly complete.  What remains is to compare December 18, 2013 and May 13, 2015 to see which date is later.  The later of the two dates is May 13, 2015.  And so that is the date on which the fifteen-year term (and all of the other provisions of the title of the PLTIA relating to Hague Agreement) takes effect.

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