Can a US design application still be filed?

A member of one of the listservs asked these questions:

A design was disclosed in May 2014, with a registration granted December 2014 in The European Community based on an application filed towards the end of October 2014 (within the last six months).

 Is it still possible to file a design application in the US?  Does the statutory bar for design patents run one year or six months from initial disclosure?  Can a US design application still be filed within six months of priority, even though the priority application has already been registered?

The questions remind us that Article 4 of the Paris Convention sets a twelve-month period for filing a second patent application that was intended to claim priority from a first patent application, but that the twelve-month period applies only to utility patents, not (US) design patents.  For design filings, Article 4 sets a six-month period.  When we do the mental gear change from utility to design, there is the number “six” that pops up in our heads as well as the notion that the number “twelve” no longer applies.

The questions remind us that before the America Invents Act (AIA) happened, there was a twelve-month grace period.  You could disclose your invention 11 months ago, and file your US patent application, and it was no problem.  Indeed a third party could independently invent the same invention 11 months ago, and disclose it 11 months ago, and still even that disclosure did not have to be a problem.  You would merely “swear behind” the activity of the third party and the problem would go away.  By this we mean establishing that your date of invention predated the third-party disclosure that happened 11 months ago.

So the listserv member may have been wondering, does the “twelve becomes six” change from utility to design (in Article 4 of the Paris Convention) make a difference in this fact pattern?  But probably the main thing troubling the listserv member was the AIA itself, which sort of eliminated the twelve-month grace period and sort of did not eliminate it.

Still another thing that the listserv member may have been thinking about is (pre-AIA) 35 USC § 102(d) that says that if a foreign filing resulted in a foreign patent issuing before the US filing date, then under certain circumstances the US filing is statutorily barred.  Here we have a granted design registration in OHIM that would be chronologically prior to the proposed US design patent filing date.  Is it a statutory bar?

If you’d like to test yourself, work out what you think the answer is, and then read on.

Okay so first the low-hanging fruit.

As a first bit of low-hanging fruit, we can put aside the trick question.  The trick question is “Is it still possible to file a design application in the US?”  Of course it is still possible.  It would still be possible for the list member to file a design application in the US in 2016, or 2017, or 2027.  The USPTO will very cheerfully take the list member’s money and grant a filing date to the list member in 2016, or 2017, or 2027.  It will have been a waste of time and money to file in 2016 or 2017 or 2027 but yes it would still be possible to file a design application in the US in 2016 or 2017 or 2027.

Of course what the list member was really trying to ask is something like “given the things that have already happened, would it be a waste of time and money to file a design application in the US at the present time”?  Or something like “is there a US statutory bar given the things that have already happened?”

As a second bit of low-hanging fruit, we can stop worrying about the (pre-AIA) 35 USC § 102(d).  The only filing dates that could possibly connect in some way to this situation are all subsequent to March 16, 2013, so the “new law” (the post-AIA law) will apply.  There is no way that this US application could turn out to be a “transition case” with some priority date or filing date before March 16, 2013 and some other filing date after March 16, 2013.  So the (pre-AIA) 35 USC § 102(d) does not apply.

Note that even if the (pre-AIA) 35 USC § 102(d) had somehow been applicable, it would still not have given rise to a statutory bar, because the only way to run afoul of (pre-AIA) 35 USC § 102(d) is to fail to file in the US within twelve months of the foreign filing.  And on this fact pattern the proposed US filing would not lag behind the foreign filing by more than twelve months.  (Indeed the proposed US filing will be within six months of the foreign filing.)

Now to the twelve-month grace period that AIA sort of took away and sort of did not take away.

Under the post-AIA version of 35 USC § 102 (which I call the “new law”), the applicant’s own disclosures within the 12 months prior to the US filing date are not necessarily fatal to the US case.  But the thing to worry about under the new law is that third parties may have disclosed things during the 12 months prior to the US filing date that are fatal to the US case.  A third party who independently developed some subject matter and disclosed it prior to the (proposed) US filing date may well have given rise to a bar to patentability in the US.

What about the third party who learned of the applicant’s disclosure of 11 months ago, and who has developed and disclosed some improvement upon that disclosure?  The post-AIA law is not well developed in the courts but one can imagine a court might rule that the portions of the third-party disclosure that are non-identical to the applicant’s disclosure can be cited against the US patent or US patent application.

So the situation that the list member faces is that the applicant will need to “get lucky”.  Yes the US design patent application can be filed and on the presently known prior events, there is not a known statutory bar.  But the applicant will need to “get lucky” that there have (hopefully) not been third-party activities during the intervening eleven months that put into question the patentability of the US application or US patent.

Of course the applicant should disclose in an IDS the applicant’s disclosure of the design that happened 11 months ago.  And the applicant should disclose in the IDS the grant of the Registered Community Design in December 2014.

The remaining point is that the foreign filing was less than six months ago.  As such, it would probably make sense to file the US application so that it claims priority from the foreign filing.  Depending on the content of the foreign filing, it might serve as a good priority claim, thus eliminating some intervening third-party activity from concern.

Another question that comes to mind is the validity of the Registered Community Design.  It was filed for in October of 2014, but we are told that the design was disclosed to the public in May of 2014.  Maybe a reader who is a European practitioner can post a comment as to whether the disclosure in May of 2014 puts into question the validity of the RCD.

If one were able to do these things all over again, one would have filed the US design application prior to the May 2014 disclosure.  This would eliminate the need to “get lucky” about third-party activities between May 2014 and the present.

As usual, comments are welcomed.