Kappos pushes for grace period, Hague implementation
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Kappos pushes for grace period, Hague implementation

At an AIA oversight hearing before the Senate Judiciary Committee Wednesday, USPTO director David Kappos focused on the path to international harmonisation

In particular, he emphasised the importance of other countries adopting a grace period and the US implementing several outstanding treaties.

Noting that he has met with several heads of patent offices around the world recently, Kappos said: “During these conversations, I stressed that a key requirement in realising international harmonisation is overseas adoption of a modern grace period,” Kappos told the committee. “Grace periods have been adopted in many patent systems throughout the world and are recognised as a global best practice.”

Under the AIA, innovators have a full year to apply for a patent after they have disclosed the invention without losing the ability to obtain the patent. This is to shield them from being gamed by a first-to-file system.

Kappos also discussed two treaties – the Patent Law Treaty (PLT) and the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) – that were ratified by the US Senate in 2007 but have yet to be implemented by Congress.

The PLT merges national and international requirements in patent applications, reducing costs of obtaining patent rights around the world. The Hague Agreement streamlines design rights for member countries. It is administered by WIPO.

“Design rights, once considered an unsophisticated way to protect intellectual property, have become valuable tools for US companies,” Kappos said. “And – as the considerable attention to the innovations of Steve Jobs has shown us – the relationship between design and function has grown closer in recent years.”

more from across site and ros bottom lb

More from across our site

Partners and other senior leaders must step up if they want diverse talent at their firms to thrive
European and US counsel reveal why they are (or aren't) concerned about patent quality and explain how external counsel can help
Firms such as Bird & Bird and Taylor Wessing have reported rising profits and highlighted the role of high-profile IP disputes and hires
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Lawyers in the corporate and IP practices discuss where the firm can steal a march on competitors, its growth plans in London, and why deal lawyers are ‘concertmasters’
Kathleen Gaynor, DEI specialist at Phillips Ormonde Fitzpatrick, says deliberate actions can help law firms reach diversity goals
Scott McKeown, who moved to Wolf Greenfield one year ago, says the change has helped him tap into life sciences work and advise more patent owners
The winners of our Asia-Pacific Awards 2024 will be revealed during a ceremony in Malaysia on September 26
Zach Piccolomini of Wolf Greenfield explains how to maximise your IP portfolio’s value while keeping an eye on competitors
Witnesses at a Congressional hearing debated whether reforming the ITC is necessary and considered what any changes should look like
Gift this article