[Federal Register Volume 64, Number 74 (Monday, April 19, 1999)]
[Notices]
[Pages 19135-19139]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 99-9733]


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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 [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

[[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

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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]
BILLING CODE 3510-16-P