Extra Royalties for US Design Patents Possible under Hague Agreement

The US Patent and Trademark office announced in February that the US was in the process of becoming a signatory to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement).
That agreement went into effect for the US on May 13 and now allows applicants in the US who wish to protect their industrial designs in multiple jurisdictions to file only a single international application.
Applicants may register up to 100 designs in more than 64 territories – including the US, EU, Korea, and Japan — at one time.
The process for publishing a Hague Agreement application is fast – within several weeks, versus over a year for the publication of design patent applications in the US.
This is beneficial to US applicants because of 35 U.S.C. § 154, section (d).
Section 154 provides that under specified conditions a US patent holder can collect reasonable royalties for infringement that occurs after a patent application is published but before the patent issues.
Section (d) states an important limitation on this right:
The right … to obtain a reasonable royalty shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.
That “substantially identical” language is problematic when it comes to utility patents, because during the examination process patent claims are often amended or cancelled. Thus, the final patent is rarely “identical” to the invention as depicted in the application.
Design patents, however, have only a single claim, and this usually does not change during the examination process. Thus, it is more likely that a design patent would meet the “substantially identical” requirement.
Making use of the Hague Agreement process provides numerous advantages to US patent applicants and should be strongly considered as part of a company’s IP protection strategy.

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