Notice of Public Hearing and Request for Comments on the Proposed New Act of the Hague Agreement Concerning the International Registration of Industrial Designs

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

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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 [email protected]. 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

[email protected], 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

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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

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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

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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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