[Federal Register: April 19, 1999 (Volume 64, Number 74)]
[Notices]
[Page 19135-19139]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr19ap99-37]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. 990408092-0992-01]
RIN 0651-ZA01
Notice of Public Hearing and Request for Comments on the Proposed
New Act of the Hague Agreement Concerning the International
Registration of Industrial Designs
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of hearing and request for public comments.
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SUMMARY: The United States Patent and Trademark Office is seeking
comments to obtain views of the public on the international effort to
form a new Act of the Hague Agreement Concerning the International
Deposit of Industrial Designs. The proposed Act will make it easier for
United States applicants to obtain protection of their industrial
[[Page 19136]]
designs abroad by providing a mechanism in which a single international
application on industrial designs will have the effect of filing an
application in each of the Parties designated by the applicant.
Interested members of the public are invited to testify at the hearing
and to present written comments on any of the topics outlined in the
supplementary information section of this notice.
DATES: A public hearing will be held on May 13, 1999, starting at 9:00
a.m. and ending no later than 5:00 p.m. If sufficient interest
warrants, an additional public hearing will be held in an alternate
location or by televideo conference.
Those wishing to present oral testimony at the hearing must request
an opportunity to do so no later than May 11, 1999.
To ensure consideration, written comments must be received by May
20, 1999. Written comments and transcripts of the hearing will be
available for public inspection on or about May 24, 1999.
ADDRESSES: The May 13, 1999 hearing will be held in the Commissioner's
Conference Room located in Crystal Park Two, Room 912, 2121 Crystal
Drive, Arlington, Virginia. Those interested in testifying or in
submitting written comments on the topics presented in the
supplementary information, or any other related topics, should send
their request or written comments to the attention of Mary Critharis
addressed to Commissioner of Patents and Trademarks, Box 4, Patent and
Trademark Office, Washington, DC 20231. Written comments may be
submitted by facsimile transmission to Mary Critharis at (703) 305-
8885. Comments may also be submitted by electronic mail through the
Internet to mary.critharis@uspto.gov. Written comments will be
maintained for public inspection in Crystal Park Two, Room 902, 2121
Crystal Drive, Arlington, Virginia. Written comments in electronic form
may be made available via the PTO's World Wide Web site at http://
www.uspto.gov. No requests for presenting oral testimony will be
accepted through electronic mail.
FOR FURTHER INFORMATION CONTACT: Mary Critharis by telephone at (703)
305-9300, by facsimile at (703) 305-8885, by electronic mail at
mary.critharis@uspto.gov, or by mail addressed to Commissioner of
Patents and Trademarks, Box 4, Washington, DC 20231.
SUPPLEMENTARY INFORMATION:
I. Background
The Hague Agreement Concerning the International Deposit of
Industrial Designs (hereinafter ``Hague Agreement''), concluded in 1925
under the auspices of the World Intellectual Property Organization
(WIPO), establishes a mechanism for obtaining industrial design
protection on an international level. Since its inception, the Hague
Agreement was revised in London in 1934 (hereinafter ``1934 Act'') and
subsequently in The Hague in 1960 (hereinafter ``1960 Act''). The Hague
Agreement was supplemented in respect of certain provisions on fees by
an Additional Act signed in Monaco in 1961 and in respect of the
administrative clauses by a Complementary Act signed in Stockholm in
1967.
The Hague Agreement is currently governed by procedures established
in the 1934 Act and the 1960 Act. The 1960 Act, which entered into
force in 1984, enacted uniform fees and procedures for depositing a
design with the International Bureau of WIPO. The Hague Agreement gives
any applicant who is a national of one of the member States the
possibility of obtaining, by means of a single application filed with
WIPO, protection for industrial designs in all member States designated
by the applicant. Accordingly, this procedure eliminates the
difficulties of filing in each of the individual States. Presently,
twenty-nine States are party to the Hague Agreement. The Member States
are Belgium, Benin, Bulgaria, Cote d'Ivoire, Democratic People's
Republic of Korea, Egypt, France, Greece, Germany, Holy See, Hungary,
Indonesia, Italy, Liechtenstein, Luxembourg, Monaco, Mongolia, Morocco,
Netherlands, Republic of Moldova, Romania, Senegal, Spain, Slovenia,
Suriname, Switzerland, The Former Yugoslav Republic of Macedonia,
Tunisia, and Yugoslavia. In 1997, approximately 4,000 international
applications were deposited with WIPO, which contained over 20,000
industrial designs.
To date, the United States has not acceded to the Hague Agreement
because of numerous provisions that are inconsistent with United States
law and practice. A process of revising the Hague Agreement to improve
the existing text was initiated in 1991. The aim of the revision is
twofold: to permit more States to adhere to the Hague Agreement by
removing obstacles that have excluded States whose legislation provides
for examination of industrial designs; and to make the system simpler,
less expensive, and more responsive to the creators of industrial
designs. A Committee of Experts has developed a new Act of the Hague
Agreement Concerning the International Registration of Industrial
Designs (hereinafter ``new Act of the Hague Agreement''). It attempts
to simplify the formal obligations and reduce the associated costs for
industrial design applicants and owners in obtaining and preserving
their rights for industrial designs in many countries of the world. A
Diplomatic Conference to conclude these negotiations is scheduled to
convene from June 16 to July 6, 1999, in Geneva, Switzerland.
The proposed new Act of the Hague Agreement contains several
advantages for United States industrial design applicants. As global
trading increases and multinational businesses grow, worldwide
protection for industrial designs is becoming extremely important and
desirable. Despite this increased importance, obtaining protection for
industrial designs on an international scale is both expensive and
complex. Overall, the proposed new Act of the Hague Agreement will
provide a more convenient method of seeking industrial design
protection worldwide. In particular, using a single application, in the
English language, filed with the United States Patent and Trademark
Office (USPTO), United States applicants will be able to obtain
protection for industrial designs in all member States of the Hague
Agreement. Most important, however, is that the single application may
be filed with the knowledge that all Contracting Parties to the
Agreement have agreed upon a uniform list of elements to be included in
the application. (Article 1 of the proposed new Act of the Hague
Agreement defines Contracting Party as any State or intergovernmental
organization party to the new Act.)
Given the benefits to the users of the Hague system, the United
States has been actively involved in the negotiations with the goal of
obtaining a suitable agreement that could engender interest and support
by United States industry and designers. Although protection for
industrial designs is available in the United States under various
laws, including patent, trademark, copyright, and unfair competition
laws, the United States has taken the position that, if adopted,
implementation of the new Act of the Hague Agreement would be through
United States design patent law.
The USPTO, leading the negotiations for the United States, is
interested in obtaining comprehensive comments to assess continued
support for the effort. In light of the impending conclusion of
[[Page 19137]]
this effort, the USPTO desires to ensure that the text of the treaty
and accompanying regulations is disseminated as widely as possible and
the opportunity to provide comments is correspondingly comprehensive.
Written comments may be offered on any aspect of the treaty
articles, rules, notes, or expected implementation in the United
States. Comments are also welcome on any of the topics outlined below.
II. Brief Summary of the Proposed Treaty
The current text of the proposed new Act of the Hague Agreement
includes thirty-four articles, thirty-two rules, and associated notes.
A brief summary of most of the articles, followed by an overall summary
of the treaty, appears below. This discussion is intended only to
highlight various portions of the articles of the treaty; it is not
intended as a comprehensive treatment of the draft texts. The draft
texts, identified in Part III below, should be consulted for a complete
understanding of the effort that is underway.
Article 1--Abbreviated Expressions: This Article provides
definitions for terms used throughout the text of the proposed articles
and rules. For the most part, this article is self-explanatory.
Article 2--Applicability of Other Protection Accorded by Laws of
Contracting Parties and of Certain International Treaties: This Article
provides that the new Act of the Hague Agreement will not affect other
protection of industrial designs afforded by Contracting Parties unless
such protection diminishes or interferes with the rights under this
Act. In addition, the provisions of this Act will not affect certain
existing international treaties including the Agreement on Trade-
Related Aspects of Intellectual Property, the Paris Convention for the
Protection of Industrial Property (hereinafter ``Paris Convention''),
and copyright treaties.
Article 3--Entitlement to File an International Application: This
Article provides that any person who is a national of a Contracting
Party or who has a domicile in the territory of a Contracting Party is
entitled to file an international application.
Article 4--Procedure for Filing the International Application: This
Article allows an international application to be filed, at the
applicant's option, at either WIPO or through the national Office of a
Contracting Party, such as the USPTO. The filing date is the date on
which either WIPO or the national Office receives the application.
However, if filed with the national Office of a Contracting Party, the
filing date is conditioned upon timely transmittal to WIPO.
Article 5--Contents of the International Application: This Article
recites the mandatory content of an international application.
Article 6--Priority: This Article allows an applicant to claim
priority under Article 4 of the Paris Convention in an international
application by filing a declaration. The priority can be established by
one or more earlier applications filed in a country that is party to
the Paris Convention or a Member of the World Trade Organization.
Article 7--Designation Fees: This Article provides that the
prescribed application fees will include a designation fee for each
designated Contracting Party. A Contracting Party may replace the
prescribed designation fee with an individual designation fee covering
its application processing and examining costs.
Article 8--Correction of Irregularities: This Article requires WIPO
to allow applicants to make corrections if WIPO determines that an
international application does not meet the requirements of the Hague
Agreement at the time of filing. However, if the applicant fails to
make the corrections in a timely manner, the international application
may be abandoned.
Article 9--International Registration, Date of the International
Registration, and Publication: This Article mandates WIPO to register
each international application immediately upon receipt of a complete
international application. In addition, WIPO will publish the
international registration and send a copy of the publication to each
designated Contracting Party. The date of international registration
will be the filing date of the international application.
Article 10--Deferment of Publication: This Article allows
Contracting Parties to defer publication for up to thirty months from
the filing date or priority date, if claimed.
Article 11--Refusal of Effects and Remedies Against Refusals: This
Article permits the national Office of any designated Contracting Party
to refuse registration when the conditions for the grant of protection
under the Contracting Party's laws are not met. In doing so, the
national office must communicate the refusal, stating all the grounds,
to WIPO within the prescribed time period. WIPO will, in turn, forward
the notification to the applicant. In addition, the applicant who filed
an international application must have the same remedies as an
applicant who filed an application under the domestic laws of the
Contracting Party.
Article 12--Effects of the International Registration: This Article
states that the effect of the international registration will be the
same as that for a regularly filed national application for the grant
of protection of the industrial design under the law of the Contracting
Party.
Article 13--Invalidation: This Article requires a Contracting Party
to notify WIPO of any invalid registration or grant of protection.
Invalidation may not be pronounced until the holder has been given the
opportunity to defend the registration or grant of protection.
Article 14--Recording of Changes and Other Matters Concerning
International Registrations: This Article requires WIPO to record the
following changes in the International Register: any change of
ownership of the international registration; any change in name or
address of the holder; any appointment of a representative; and any
limitation or invalidation of the international registration. Any
recording will have the same effect as if it had been made in the
Office of the Contracting Party concerned.
Article 15--Term and Renewal of the International Registration:
This Article provides that the minimum period of protection is fifteen
years from the date of the international registration. Contracting
Parties may provide for an initial term of protection of five years
from the date of international registration, subject to renewals for
additional five-year periods.
Article 16--Information Concerning Published International
Registrations: This Article permits WIPO to supply a person paying the
prescribed fees information or copies of an international registration.
Article 17--Additional Mandatory Contents of the International
Application: This Article contains additional requirements for
international applications that designate a Contracting Party with an
Examining Office. For example, the international application may have
to include an indication of the creator of the industrial design, a
brief description of the reproduction or of the characteristic features
of the industrial design, and/or claim(s).
Article 18--Special Requirements Concerning Unity of Designs: This
Article allows a Contracting Party to maintain its unity of design
requirements.
Article 19--Confidential Copies of International Registrations
Whose Publication is Deferred: This Article protects confidential
copies of an
[[Page 19138]]
international registration by requiring Examining Offices to keep the
application in confidence. Examining Offices may only use a copy of the
international registration sent by WIPO for examination purposes.
Article 20--Republication of the Industrial Design: This Article
provides that if an industrial design has been amended to satisfy the
condition of novelty before an Examining Office, that Office can charge
a fee for the publication of the amended reproduction.
Articles 21 through 34 of the proposed new Act of the Hague
Agreement comprise the Administrative Provisions. Accordingly, these
articles, and accompanying regulations, relate to the administration
and implementation of the Hague Agreement, and include matters such as
membership, voting rights, effective dates of accession, and
applicability of previous Acts.
Overall Summary: After filing an international application, WIPO
determines whether the minimum requirements are met, assigns a filing
date, registers the application, and forwards the application to the
designated Contracting Parties. The international registration is then
published by WIPO and Contracting Parties are given a limited time to
decide whether to register or grant protection to the industrial
design(s) contained in the international application. The term for the
protection of each industrial design runs at least fifteen years from
the date of international registration for each industrial design.
I. Text of the Proposed Treaty, Rules, and Notes
The text of the proposed new Act of the Hague Agreement, with
associated rules and notes, is available at WIPO's World Wide Web site
at http://www.wipo.int/eng/main.htm. The documents are H/DC/3, H/DC/4,
H/DC/5, and H/DC/6.
Requests for paper copies of the text may be made in writing to
Mary Critharis at the above address or by telephone at (703) 305-9300.
II. Issues of Potential Concern
Insofar as this effort to revise the Hague Agreement is focused
upon, and limited to, formal matters associated with industrial design
applications and protection, the USPTO expects that, if adopted,
changes to our design patent law would be minimal. Although many
provisions in the proposed new Act of the Hague Agreement were
incorporated to accommodate United States law and interests, several
issues have yet to be fully resolved. Below is a brief summary of the
more important issues of potential concern to the USPTO and United
States applicants. This summary, however, is by no means an exhaustive
recitation of the impact of the proposed new Act of the Hague Agreement
on United States practice and interests.
1. Filing Procedures
Article 4 and Rule 13 of the proposed treaty provide that if an
Office of a Contracting Party does not transmit an international
application to WIPO within the prescribed time period, the filing date
is the date on which WIPO receives the application. Accordingly, an
applicant may lose the benefit of the earlier filing date with the
national Office if for some reason it did not transmit the application
to WIPO in a timely fashion.
2. Fee Structure
Although Article 7 and Rule 12 of the proposed treaty permit
Contracting Parties to set an individual designation fee in connection
with any international application, it appears that the individual
designation fee must include all fees that would be charged under the
national procedure for the grant of protection. Therefore, while
Contracting Parties may require the payment of national fees not
covered by the individual designation fee (such as fees charged for
appeals, fees for extensions of time, and inspection fees), it appears
that certain fees, namely the filing fee and issue fee, would have to
be included in the individual designation fee.
3. Effect of International Application
Article 12 of the proposed treaty requires Contracting Parties to
give the same effect to international applications as regularly filed
applications. This conflicts with the so-called Hilmer practice in the
United States where a disclosure contained in a patent of foreign
origin is effective as prior art only as of its United States filing
date, rather than the foreign or international filing date.
4. Failure to Communicate Notification of Refusal
Article 12 of the proposed treaty provides that if a Contracting
Party did not send a notification of refusal within the prescribed time
period, the grant of protection will ensue automatically. As a result,
examining countries like the United States would be obliged to give
effect to a design that may have not been examined, either because the
application was misplaced or due to administrative delay on the part of
the Office of the Contracting Party. This conflicts with United States
law which obliges the Commissioner of the USPTO to undertake an
examination of an application and make a positive act of issuing a
patent, if it is determined to be patentable.
5. Changes in Ownership
Article 14 of the proposed treaty establishes a central ownership
registry whereby Contracting Parties must give effect to changes in
ownership of industrial designs recorded with WIPO, but not necessarily
recorded in the USPTO. According to United States practice, unless
recorded in the USPTO, a transfer of ownership of a patent or patent
application is void against subsequent bona fide purchasers or
mortgagees. Moreover, to record an assignment or any other type of
conveyance of ownership in the United States, a statement indicating
that an interest has been conveyed must be submitted to the USPTO.
Therefore, in the United States, subsequent purchasers are able to view
the contents of any agreement that purports to transfer ownership. In
contrast, the proposed treaty does not require the submission of any
type of documentation indicating a transfer of ownership to effectuate
changes of ownership in the International Register. Nevertheless,
according to the proposed treaty, any changes in ownership recorded
with WIPO must be sufficient notice to subsequent purchasers in the
United States. This may represent a significant departure from current
law and practice regarding changes of ownership in patents in the
United States.
V. Issues for Public Comment
Interested members of the public are invited to testify and present
written comments on any issues they believe to be relevant to the
foregoing discussion or any aspect of the proposed new Act of the Hague
Agreement. The questions posed below identify specific issues that
would benefit from public comment:
1. Do you have any overall interest in United States accession to
the new Act of the Hague Agreement? Please discuss any potential
advantages and drawbacks in your response.
2. Do you feel that you would use an international system for the
protection of industrial designs as proposed by the new Act of the
Hague Agreement? Please identify your reasons in your reply.
3. Do you currently file applications under the existing Hague
Agreement through entities located in current member States? If yes,
please describe
[[Page 19139]]
your experiences and explain any problems encountered.
4. Please discuss issues of potential concern identified in Part IV
of this notice. In your response, please include the following:
(a) Clearly identify the matter being addressed;
(b) Indicate whether the particular matter would create significant
problems for United States applicants and, in particular, whether it
would discourage use of an international system for the protection of
industrial designs as proposed by the new Act of the Hague Agreement;
(c) Identify potential drawbacks and/or advantages of the
particular matter addressed;
(d) Provide examples, where appropriate, that illustrate the matter
addressed;
(e) Identify any relevant legal authorities applicable to the
matter being addressed; and
(f) Provide suggestions regarding how the matter should be
addressed by the United States.
5. Please discuss any related matters not specifically identified
in the above questions. If this is done, parties are requested to:
(a) Label that portion of their response as ``Other Issues'';
(b) Clearly identify the matter being addressed;
(c) Provide examples, where appropriate, that illustrate the matter
addressed;
(d) Identify any relevant legal authorities applicable to the
matter being addressed; and
(e) Provide suggestions regarding how the matter should be
addressed by the United States.
VI. Guidelines for Oral Testimony
Individuals wishing to testify must adhere to the following
guidelines:
1. Anyone wishing to testify at the hearing(s) must request an
opportunity to do so no later than May 11, 1999. Requests to testify
may be accepted on the date of the hearing if sufficient time is
available on the schedule. No one will be permitted to testify without
prior approval.
2. Requests to testify must include the speaker's name, affiliation
and title, mailing address, and telephone number. Facsimile number and
Internet mail address, if available, should also be provided. Parties
may include in their request an indication as to whether they wish to
testify during the morning or afternoon session of the hearing.
3. Speakers will be given between five and fifteen minutes to
present their remarks. The exact amount of time allocated per speaker
will be determined after the final number of parties testifying has
been determined. All efforts will be made to accommodate requests for
additional time for testimony presented before the day of the hearing.
4. Speakers may provide a written copy of their testimony for
inclusion in the record of the proceedings. These remarks should be
provided no later than May 20, 1999.
5. A schedule providing the approximate starting time for each
speaker will be distributed the morning of the day of the hearing.
Speakers are advised that the schedule for testimony will be subject to
change during the course of the hearings.
VII. Guidelines for Written Comments
Written comments should include the following information:
1. Name and affiliation of the individual responding; and
2. If applicable, an indication of whether comments offered
represent views of the respondent's organization or are the
respondent's personal views.
If possible, parties offering testimony or written comments should
provide their comments in machine-readable format. Such submissions may
be provided by electronic mail messages sent over the Internet, or on a
3.5'' floppy disk formatted for use in either a Macintosh or MS-DOS
based computer.
Machine-readable submissions should be provided as unformatted text
(e.g., ASCII or plain text), or as formatted text in one of the
following file formats: Microsoft Word (Macintosh, DOS, or Windows
versions) or WordPerfect (Macintosh, DOS, or Windows versions).
Information that is provided pursuant to this notice will be made
part of a public record and may be available via the Internet. In view
of this, parties should not submit information that they do not wish to
be publicly disclosed or made electronically accessible. Parties who
would like to rely on confidential information to illustrate a point
are requested to summarize or otherwise submit the information in a way
that will permit its public disclosure.
Dated: April 12, 1999.
Q. Todd Dickinson,
Acting Assistant Secretary of Commerce and Acting Commissioner of
Patents and Trademarks.
[FR Doc. 99-9733 Filed 4-16-99; 8:45 am]
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