DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. 010731195-1195-01]
RIN 0651-AB25
Notice of Hearing and Request for
Comments on Draft Convention on
Jurisdiction and Foreign Judgments in
Civil and Commercial Matters
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of Hearing and Request for Comments.
SUMMARY: The Hague Conference on Private International
Law is negotiating a Convention designed to create common jurisdiction
rules for international civil and commercial cases and to provide for
international recognition and enforcement of judgments issued under
these rules. The United States Patent and Trademark Office (USPTO) is
seeking views of the public on recent developments on this effort.
Interested members of the public are invited to testify at a hearing to
be held September 11, 2001, and to present written comments on any of
the topics outlined in the supplementary information section of this
notice or otherwise related to the proposed Convention.
DATES: A public hearing will be held on September 11,
2001, starting at 9:30 a.m. and ending no later than 5:00 p.m. Those
wishing to testify must request an opportunity to do so no later than
August 31, 2001. Speakers may provide a written copy of their testimony
for inclusion in the record. Written comments should be submitted on or
before October 19, 2001.
ADDRESSES: The September 11 hearing will be held in
the Patent Theater located on the Second Floor of Crystal Park 2, 2121
Crystal Drive, Arlington, Virginia. Persons interested in testifying
should send their request to Director of the United States Patent and
Trademark Office, Box 4, United States Patent and Trademark Office,
Washington, DC 20231, marked to the attention of Anggie Reilly.
Requests may also be submitted by facsimile transmission to (703)
305-8885 or by electronic mail through the Internet to
anggie.reilly@uspto.gov.
Persons interested in submitting written comments should send their
comments to Director of the United States Patent and Trademark Office,
Box 4, United States Patent and Trademark Office, Washington, DC 20231,
marked to the attention of Velica Steadman. Comments may also be
submitted by facsimile transmission to (703) 305-8885 or by electronic
mail through the Internet to velica.steadman@uspto.gov. All comments
will be maintained for public inspection in Room 902 of Crystal Park 2,
2121 Crystal Drive, Arlington, Virginia. Written comments in electronic
form will be made available via the USPTO's World Wide Web site at
http://www.uspto.gov.
FOR FURTHER INFORMATION CONTACT: Jennifer Lucas by
telephone at (703) 305-9300, by facsimile at (703) 305-8885; by
electronic mail at jennifer.lucas@uspto.gov; or by mail marked to the
attention of Jennifer Lucas, Attorney-Advisor, addressed to Director of
the United States Patent and Trademark Office, Box 4, Washington, DC
20231.
SUPPLEMENTARY INFORMATION
Background
The Hague Conference on Private International Law is
negotiating a Convention on jurisdiction and the recognition and
enforcement of foreign judgments in civil and commercial matters. The
proposed Convention on Jurisdiction and Foreign Judgments in Civil and
Commercial Matters would create jurisdictional rules governing
international lawsuits and provide for recognition and enforcement of
judgments by the courts of Contracting States. Contracting States would
be required to recognize and enforce judgments covered by the
Convention if the jurisdiction in the court rendering the judgment was
founded on one of the bases of jurisdiction required by the Convention.
In addition, some existing domestic bases of jurisdiction would be
prohibited by the Convention for cases covered thereby.
The negotiations began in 1992, based on a proposal made by the United
States. The impetus behind the request was to gain recognition and
enforcement of U.S. judgments in other countries. While U.S. Federal
courts generally will recognize and enforce judgments from other
countries under state law (see Hilton v. Guyot, 159 U.S. 113
(1895)), U.S. judgments do not always receive the same treatment
abroad. In October 1999, the Hague Conference published a draft
Convention that was to be finalized at a Diplomatic Conference
scheduled for October 2000, but in May 2000 that Diplomatic Conference
was postponed to give member countries more time to discuss unsettled
issues.
Two particular topics that the Hague Conference has singled out for
further discussion are intellectual property and electronic commerce.
Recognizing the importance of concerns that had been raised about the
impact of the Convention on these matters, in 1999 the Conference
agreed to hold informal meetings of international experts to examine
the relevant issues in those categories. Two meetings of experts on
electronic commerce were held to discuss the effect that electronic
commerce might have on traditional jurisdictional rules. In addition, a
meeting of intellectual property experts was held in February 2001 in
Geneva, Switzerland.
On October 17, 2000, the USPTO published a Request for Comments seeking
views on the impact that the October 1999 draft of the proposed
Convention would have on intellectual property-related litigation (65
FR 61306 (2000)). The responses to the Request for Comments are
available at the USPTO's Web site at http://www.uspto.gov.
The responses indicated that, while uniform rules on jurisdiction and
enforcement of judgments might be welcome in the abstract, the problems
with the jurisdictional provisions in the October 1999 draft outweighed
any benefits that the enforcement provisions would offer. One of the
primary flaws asserted about the October 1999 draft was that
international developments such as the advent of the Internet and
e-commerce have called into question some of the jurisdictional rules
that serve as the basis for the proposed Convention.
After postponing the October 2000 Diplomatic Conference, the Hague
Conference scheduled a two-part Diplomatic Conference, with meetings to
be held in June 2001 and early 2002.
The first session was held June 6-22, 2001, in The Hague, Netherlands.
The goal of the Diplomatic Conference was to draft a new,
consensus-based text to replace the October 1999 draft. The result was
a long compilation text that captures consensus where it exists, and
presents proposals, variants, and options on issues where there was no
consensus. The text also is heavily footnoted to illuminate additional
points. This text is lengthy and makes it clear that there are a
considerable number of large and small issues, including those
involving intellectual property, on which Members are not in agreement
and on which much work is still necessary. The text of the proposed
Convention and other documents relating to the proposal are available
via the Hague Conference's Web site at
http://www.hcch.net/e/workprog/ jdgm.html.
At the end of the Diplomatic Conference, the delegates were unable to
decide how to move the negotiations forward. They agreed to reconvene,
probably in late January 2002, to decide the scope of future
negotiations - whether to continue the full project, refocus or scale it
back in some way, or suspend it - and the schedule for any future
negotiations based on the decision made.
Brief Summary of Draft Convention
As it stands, the draft Convention would create three
categories of jurisdiction for cases covered by the Convention: (1)
Required bases for jurisdiction, or, as they are referred to by the
Hague Conference, the "white list"; (2) prohibited bases for
jurisdiction, or the "black list"; and (3) everything else not
covered by the white or black lists, or the "gray list." The draft
Convention would, with some exceptions, apply whenever any one party to
litigation is not habitually resident in the country where the
litigation is brought (see Article 2 of the draft).
The "white list" sets out jurisdictional rules for specific types
of actions, such as contract and tort actions or disputes filed in the
court of the defendant's "habitual residence." If a court exercises
jurisdiction in accordance with the rules set out in the white list,
courts in other Contracting States must recognize and enforce the
resulting judgment, with limited exceptions.
Another example of a white list ground of jurisdiction is found in
proposed Article 12, which would create exclusive jurisdiction over
specified patent and trademark disputes. The draft presents two options
for how to treat patents, trademarks, and potentially other types of
industrial property. The main difference between the two is the fact
that the first option provides for exclusive jurisdiction over patent
and trademark infringement actions while the second option does not.
The first option creates exclusive jurisdiction for disputes over the
grant, registration, validity, abandonment, revocation, or infringement
of a patent or trademark in the country of registration or, for
unregistered marks, the country in which the rights arose. The second
option would create exclusive jurisdiction for disputes over the grant,
registration, validity, abandonment, or revocation of a patent or
trademark; however, it would allow courts referred to in any of the
other white list provisions also to exercise jurisdiction over patent
or trademark infringement actions.
Three additional provisions in Article 12 related to patent or
trademark disputes are in brackets with footnotes for further
consideration. First, the draft provides for an exception to exclusive
jurisdiction for incidental questions, which are defined as when "the
court is not requested to give a judgment on that matter, even if a
ruling on it is a necessary step in the reasoning that leads to the
judgment." For example, in some court proceedings, such as a breach
of contract or a legal malpractice proceeding, the grant, registration,
validity, abandonment, revocation or infringement of a patent or mark
might arise as an incidental question to the main complaint. Proposed
Article 12(6) would allow a court that otherwise would have no
jurisdiction over an industrial property question to decide that
question as a factual determination in the underlying case. Such a
ruling would have no binding effect in subsequent proceedings regarding
the subject patent or trademark, even between the same parties.
Second, it has been suggested in proposed Article 12(7) that other
intellectual property rights, such as plant breeders rights and
industrial designs but excluding copyrights or neighboring rights, be
covered. Finally, as seen in proposed Article 12(8), the draft
questions whether the term "court" should include a Patent Office
or similar agency for the purpose of recognizing their judgments.
Proceedings related to copyrights could fall under any of the white
list grounds of jurisdiction. For instance, copyright infringement
proceedings could be covered by the jurisdiction rules for tort actions
found in Article 10. Article 10 provides for jurisdiction either in the
State in which the act or omission occurred, or the State in which the
injury arose so long as the injury in that State was reasonably
foreseeable. A proposal, however, was made at the Diplomatic Conference
that would have included copyright infringement in the exclusive
jurisdiction provision. That issue is still open for discussion.
Proposed Article 13 consists of two alternatives that would create a
white list ground of jurisdiction for provisional and protective
measure orders under enumerated circumstances. It has been proposed,
however, that provisional and protective measures either be excluded
from the scope of the proposal (Article 1) or be included in the gray
area (Article 17).
Other areas of particular interest to intellectual property holders and
users are proposed provisions that would create white list jurisdiction
for choice of court clauses in contracts (Article 4), contracts
(Article 6), consumer contracts (Article 7) and employment contracts
(Article 8).
The "black list," currently Article 18, defines grounds of
jurisdiction that are prohibited in Contracting States for cases
covered by the Convention. Article 18(1) would place a general
limitation on the exercise of jurisdiction based on the absence of a
"substantial connection between that State and the dispute."
Article 18(2)(e) is of particular interest to U.S. litigants. It states
that jurisdiction cannot be based solely on the fact that a defendant
carries on commercial or other activities in that State, except where
the dispute is directly related to those activities. This provision
would prohibit the exercise of general "doing business"
jurisdiction as currently recognized under U.S. law. Article 18(2) also
would prohibit the exercise of "tag" jurisdiction in a court based
on service upon the defendant in the State.
Everything that does not fall under either of these categories is
included in the "gray area" as defined in Article 17. Countries can
continue to act as they normally do under their respective national
laws; however, judgments resulting from actions covered by this
provision would not get the benefits of recognition and enforcement
under the Convention.
The second half of the Convention provides rules governing the
recognition and enforcement of judgments based on a ground of
jurisdiction provided for in the white list (Articles 3-16). This
includes provisions on topics such as dismissal in favor of a
previously filed action in another court (known as "lis pendens")
(Article 21), forum non conveniens (Article 22), types of judgments to
be recognized or enforced (Article 25), grounds for refusal of
recognition (Article 28), and damages (Article 33).
Issues for Public Comment
The USPTO wants to assess support for or opposition to the
effort to negotiate a convention on jurisdiction and enforcement of
judgments and to obtain comments and suggestions on the proposed
Convention as it relates to intellectual property. Interested members
of the public are invited to present oral or written comments on any
issues they believe to be relevant to protection of intellectual
property or any aspect of the proposed Convention as it relates to
intellectual property. The USPTO reserves the right to limit the number
of oral comments presented if necessary due to time constraints at the
hearing, but will accept and consider all written comments submitted.
Comments also are welcome on the following specific issues:
1. What are your experiences in having judgments involving intellectual
property from one jurisdiction recognized in a foreign court? Have you
had different experiences in having those judgments recognized in U.S.
courts? In your response, please identify whether you generally
represent intellectual property owners, licensees, users, or others.
2. Are uniform rules for international enforcement of judgments
desirable?
3. Would the elimination of "tag" or general "doing business"
jurisdiction have any impact on intellectual property owners' ability
to protect their rights either domestically or internationally?
4. What effect, if any, could this Convention have on an owner's
ability to enforce its intellectual property rights for uses over the
Internet?
5. Is exclusive white list jurisdiction needed for infringement actions
involving patents, trademarks, and/or copyrights?
6. Should non-exclusive white list jurisdiction apply, per proposed
Article 12(6), to matters that otherwise would be covered by Article 12
when they arise as incidental questions in proceedings that do not have
as their object the grant, registration, abandonment, revocation or
infringement of a patent or trademark?
7. If you responded yes to Question 6, should the court's decision
regarding the incidental question have preclusive effect in a court of
other Contracting States? What about courts in the same Contracting
State?
8. What other registered intellectual property, if any, should be
subject to the exclusive jurisdiction provisions?
9. What other unregistered intellectual property, if any, should be
subject to the exclusive jurisdiction provisions?
10. How should other intellectual property or related actions, such as
passing off, unfair competition, cybersquatting and dilution
complaints, be treated under the Convention?
11. Should provisional and protective measures be covered by the
Convention, specifically excluded from the Convention, or left to
current national law?
12. Does the draft Convention affect in any way the substantive law
that applies to an activity of any party with respect to intellectual
property?
13. How will the draft Convention provisions affect traditional
contractual freedom for parties to enter into agreements that typically
designate choice of forum and law?
14. Should jurisdiction over actions involving intellectual property be
included within the scope of the Convention? If no, please explain
which types of intellectual property should be excluded and why.
15. Please identify any other potential concerns or advantages raised
by the draft Convention and ways it might be modified to achieve an
identified objective.
In your response, please include the following: (1) Clearly identify
the matter being addressed; (2) Provide examples, where appropriate, of
the matter being addressed; (3) Identify any relevant legal authorities
applicable to the matter being addressed; and (4) Provide suggestions
regarding how the matter should be addressed by the United States.
August 14, 2001 NICHOLAS P. GODICI
Acting Under Secretary of Commerce for
Intellectual Property and Acting Director of the
United States Patent and Trademark Office