CLASS 99
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THURSDAY, 2 JUNE 2011
Tread warily - don't trip on timing traps
We are as always grateful to Rob Katz for notice of his helpful article "Timing Traps in European Design Laws", which points out the dangers of missing the various EU grace and priority periods - well worth a read.
On the subject of traps, in the interests of transatlantic balance we ought to point out an almost unknown, but quite dangerous, pitfall for those who miss out on the six month priority term.
You may have it in your head that the US has a twelve month grace period. And so it does, in effect, for prior publications. For utility patents (or, as we call them in Europe, patents), the same twelve month term applies both to the grace periods under 35 USC 102 (b) and (d) and the priority term - nice and simple. But for design patents, a period of six months is substituted for the priority term by 35 USC 172. You knew that, of course. What is often missed is that 35 USC 172 also substitutes the six month term into 35 USC 102 (d).
An example will illustrate the effect of that. You file a Community Design (with no priority claim) on 1st January. OHIM, as is their wont, register and publish it within a couple of days, say on 10th January. You miss the six month priority term to file foreign applications, which expires on 1st July. However, on 5th July, you recall that the US has a grace period. You are inside a year from publication - indeed, you are within six months - so you think you are safe, and you file in the US on 5th July.
But you were too late. 35 USC 102 (d) bites because "the invention was first patented..., by the applicant ... in a foreign country prior to the date of the application for patent in this country on an application ... filed more than [twelve] six months before the filing of the application in the United States". And in this context, "patented" includes being registered as a design: MPEP 1504.02.
Moral: Designs are nowadays registered so quickly that if you are first-filing outside the US, NEVER miss out on the six month grace period, or you may lose the US. Posted by: David Musker @ 15.02
Tags: grace period, us,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA257
Tread warily - don't trip on timing traps
On the subject of traps, in the interests of transatlantic balance we ought to point out an almost unknown, but quite dangerous, pitfall for those who miss out on the six month priority term.
You may have it in your head that the US has a twelve month grace period. And so it does, in effect, for prior publications. For utility patents (or, as we call them in Europe, patents), the same twelve month term applies both to the grace periods under 35 USC 102 (b) and (d) and the priority term - nice and simple. But for design patents, a period of six months is substituted for the priority term by 35 USC 172. You knew that, of course. What is often missed is that 35 USC 172 also substitutes the six month term into 35 USC 102 (d).
An example will illustrate the effect of that. You file a Community Design (with no priority claim) on 1st January. OHIM, as is their wont, register and publish it within a couple of days, say on 10th January. You miss the six month priority term to file foreign applications, which expires on 1st July. However, on 5th July, you recall that the US has a grace period. You are inside a year from publication - indeed, you are within six months - so you think you are safe, and you file in the US on 5th July.
But you were too late. 35 USC 102 (d) bites because "the invention was first patented..., by the applicant ... in a foreign country prior to the date of the application for patent in this country on an application ... filed more than [twelve] six months before the filing of the application in the United States". And in this context, "patented" includes being registered as a design: MPEP 1504.02.
Moral: Designs are nowadays registered so quickly that if you are first-filing outside the US, NEVER miss out on the six month grace period, or you may lose the US. Posted by: David Musker @ 15.02
Tags: grace period, us,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA257
MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.
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