Traps for the unwary in a Hague application that designates the US

If an applicant pursues US design protection using the Hague Agreement system, there are several mistakes to avoid, as I will discuss.

Perfecting the priority claim.  Although it is possible to file a Hague Agreement application that does not claim priority from any previous design application, the vast majority of Hague Agreement applications invoke priority from a previous design application.  What is important to keep in mind is that US rules require that the Hague applicant provide to the USPTO a certified copy of the priority application.

37 CFR § 1.55 provides that the certified copy must be provided “within the pendency of the application”, that is, by no later than issuance of the design patent.  To be safe, this means the certified copy must be provided by the day before the issue day.  It is better if the certified copy is provided by no later than the date that the Issue Fee is paid.

How exactly may the filer provide the certified copy to the USPTO?  The alert reader will be aware that in the world of PCT, the certified copy almost always reaches the USPTO in an automatic way from the IB as part of the PCT national-phase process.  But in the world of Hague, there is no automatic provision of a certified copy from the IB to the USPTO.

How, then, does the certified copy reach the USPTO?

One way that a certified copy might reach the USPTO is by means of the DAS system.  This would work only if the Office of first filing happens to be a member of DAS as a Depositing Office, and in addition is a Depositing Office for purposes of design priority applications.  As of the present time only a small number of Offices have notified WIPO that they will serve as a Depositing Office for purposes of design priority applications, namely China (from April 15, 2013), Spain (from September 1, 2013), and India (from January 31, 2018).  USPTO’s relationship with China for purposes of priority document exchange is, however, not through DAS but through PDX.  And PDX does not work for design applications. For this reason, China’s being a Depositing Office for purposes of design priority applications is of no help with respect to a US design patent application.

It is, however, hoped that USPTO will soon migrate its priority document relationship with China from PDX to DAS (see blog article) at which point it will be possible for applicants to make use of DAS for purposes of electronic certified copies of design priority documents from China.

For the majority of Offices of first filing with respect to design applications, the DAS system is not available with respect to a US design patent application.  Instead, it is necessary for the applicant to obtain a physical certified copy of the priority application, and to somehow get the physical certified copy into the hands of the USPTO.  Preferably this is accomplished well in advance of the mailing of an Office Action or the mailing of a Notice of Allowance.

TYFNIL the owner of the design patent would not want to find that there was a failure timely to provide the certified copy.  Such a failure might well lead to a finding by the Court that the priority claim was not perfected and that the design patent is not able to claim priority.  The consequence could then be the availability of additional prior art and, perhaps, a finding of invalidity of the US design patent.

The Best Practice is to ensure that the application file (the “file wrapper”) contains an express acknowledgment by the Examiner that the certified copy was provided.  This reduces to a minimum the risk that an adversary in litigation could put into question the propriety of the priority claim.  There are two times during prosecution that this express acknowledgment might happen — in an Office Action, or in a Notice of Allowance.  Quoted above right is a Notice of Allowance in which the Examiner communicates this welcome news at Box 5.  Quoted below right is an Office Action in which the Examiner communicates this welcome news at Box 12.

The applicant should look closely to make sure that the Examiner has made this express acknowledgment.

Summarizing this issue, the applicant should make sure that the certified copy of the priority document did in fact timely reach the USPTO, should make sure that the Examiner checked Box 5 or Box 12, and should make sure that the priority claim appears on the front page of the issued US design patent.  Each of these represents a potential trap for the unwary applicant.

Presenting the priority claim.  37 CFR § 1.55 actually imposes two distinct burdens upon the applicant — the provision of the certified copy, and the presentation of the priority claim.  These are not the same thing.  Normally the second burden — the need timely to have presented the priority claim — is not a problem in a Hague case, because (a) the filer will have duly presented the priority claim at the time of filing of the Hague application, and (b) the priority claim will have been communicated in an automatic way from the IB to the USPTO.  The successful communication of the priority claim from the IB to the USPTO will normally not require any manual step by any IB person or by any USPTO person or by the applicant.

It is, nonetheless, important for the applicant to check the Filing Receipt carefully to make sure that the priority claim is listed — and is listed correctly.  At right you can see such a listing in a typical Filing Receipt.

Failure to detect a missing or inaccurate priority claim in the Filing Receipt thus represents a potential trap for the unwary applicant.

Duty of Disclosure.  US law imposes a Duty of Disclosure upon the applicant.  This requires that the applicant disclose any known relevant prior art to the USPTO.

Relevant prior art could include, among other things:

• closely related products in applicant’s own product line
• closely related products in the product line of a competitor
• prior design filings of the applicant for closely related products
• prior design filings of the inventor (designer)
• references cited in search reports in counterpart design applications

The Duty of Disclosure requires disclosure to the USPTO of relevant prior art that is:

• known to the applicant,
• known to the inventor,
• known to in-house counsel at the applicant’s company,
• known to non-US counsel representing the applicant, or
• known to US counsel retained by the applicant.

Whenever the US is designated in a Hague application, it will thus be appreciated that an investigation as to the existence of any known relevant prior art will need to be carried out by the applicant directly.  But likewise an investigation as to the existence of any known relevant prior art will need to be carried out by the non-US intellectual property firm representing the applicant.  In addition, an investigation as to the existence of any known relevant prior art will need to be carried out by the US firm representing the applicant.

TYFNIL if it were to develop that the applicant had failed to satisfy the Duty of Disclosure, this could jeopardize the validity of the US design patent.

Failure to disclose known relevant prior art thus represents a potential trap for the unwary applicant.

Assignment.  The great majority of US design patents granted upon US designations of Hague applications are design patents for which no Assignment has been recorded.  This raises the question, TYFNIL, whether the named applicant is even the actual owner of the granted US design patent.

A Hague applicant may thus wish to consider obtaining the signature of the inventor or inventors on an Assignment, and recording the signed Assignment at the USPTO.

Failure to attend carefully to the question of ownership of the US designation of a Hague application thus represents a potential trap for the unwary applicant.

Retention of US patent counsel.  One way for a Hague applicant to address the above-mentioned potential traps for the unwary with respect to the US designation from the Hague application is to retain US patent counsel.  Having been thus retained, US counsel will typically carry out some or all of the following tasks:

• file a Power of Attorney at the USPTO
• docket to check for acceptance of the POA
• obtain a First Office Action Prediction and report it to the applicant
• review the Filing Receipt for correctness
• download the entirety of the IFW (image file wrapper) and provide it to the applicant
• make use of a shared Customer Number so that the non-US applicant may be kept informed of Outgoing Correspondence Notifications
• Duty of Disclosure:
  • remind the applicant of the Duty of Disclosure
  • receive known relevant prior art from applicant
  • file one or more IDSs (information disclosure statements) disclosing the known relevant prior art to the USPTO
  • log the IDSs to make sure the Examiner considers the IDSs
  • check each considered IDS to make sure that the Examiner has not drawn a line through any cited reference
• Certified Copy of priority document:
  • docket to check for receipt of the physical Certified Copy from the applicant
  • send the physical Certified Copy to the USPTO in a trackable way with a return post card
  • docket to check that the tracking shows delivery to the USPTO
  • docket to check for receipt of the return post card
  • docket to check for visibility of the Certified Copy in IFW (image file wrapper)
  • check for box 5 (Notice of Allowance) or box 12 (Office Action) being checked
• docket due date for response to Office Action
• docket due date for payment of Issue Fee
• file review prior to payment of the Issue Fee:
  • have all IDSs been considered?
  • on any IDS has any cited reference had a line drawn through it?
  • has an Assignment been recorded?
  • has the Examiner acknowledged the provision of the Certified Copy?