Patent Law Treaties Implementation Act of 2012 [S. 3486]

Here is some information we've gathered from various sources about the Hague System, the U. The Hague System provides a simplified application process for obtaining design protection in jurisdictions that have become contracting parties to the Hague Agreement Concerning the International Registration of Industrial Designs Hague Agreement.

In contrast to filing design applications on a jurisdiction-by-jurisdiction basis, a Hague applicant currently files a single international design application at the World Intellectual Property Organization's WIPO International Bureau in Geneva, Switzerland. The Hague application includes a designation of contracting parties in whose territory the applicant seeks design protection. The International Bureau examines the Hague application for formalities only, and then — if the application is allowable — issues an international registration within four to six weeks from filing that is subsequently published within six months.

A single Hague application with multiple designs from a single Locarno class can be registered. For example, an application having four dissimilar hammer, nail, screwdriver and screw designs could be registered together because the same Locarno class No.

International Design Patent Application

This is much broader than the U. Patent and Trademark Office's "not patentably distinct" requirement for maintaining multiple designs in a single application, and akin to EU practice. As a general rule, the Hague System reduces design prosecution costs in the multi-jurisdictional territory to which it applies, particularly when protection in a larger number of contracting parties is sought due to economies of scale. The cost savings is similar and perhaps better than the cost savings realized through Patent Cooperation Treaty filings for utility patents.

Registration is not the end of the Hague System process, however. Contracting parties to the Hague Agreement have six to twelve months from publication to refuse protection for the international registration, depending in part on whether the contracting party's design office examines applications for novelty or allows oppositions.

If a contracting party does not timely refuse protection, then the Hague Agreement requires the international registration to have the same effect as a design patent or registration issuing from a nationally- or regionally-filed application in the contracting party's territory.

A refusal may be partial or total, and can lead to proceedings before the contracting party's design office until the refusal is withdrawn or the applicant takes no further action.

Legislation | United States Senate Committee on the Judiciary

The primary problem with the Hague System has been the inability to obtain protection in "major" jurisdictions. EU ascension to the Hague Agreement on January 1, was a big step although many EU member states were already contracting parties , but still the Hague System has only a small footprint in Asia and virtually no footprint in populous areas of the Western Hemisphere. But perhaps more important is that U.

Our understanding is that Japan and South Korea are very close to moving forward, and China is very interested in the Hague System. Canada is also interested and has preliminarily assessed that no significant legal changes are needed to implement the Hague System. In the not too distant future, it is even possible for the Hague System to become as significant to protecting designs worldwide as the Patent Cooperation Treaty PCT has become to protecting utility inventions worldwide.

China, South Korea, Japan and the U. While the geographic expanse of design protection obtainable through the Hague System is limited to the territory of contracting parties, entitlement to file through the Hague System is not as limited. An entity is entitled to file through the Hague System not only if it is a national of a contracting party or a national of a member state or intergovernmental organization that is a contracting party namely, the EU or OAPI but also if it:. Both claim an Establishment in Switzerland, a contracting party.

Establishment, however, is a tricky basis for entitlement because it is much less black and white than, e. The Establishment phrase derives from Article Three of the Paris Convention for the Protection of Intellectual Property , which originally used the term "establishment" alone in an analogous context.

According to WIPO, the treaty was amended to narrow the scope of establishment, with "real" being added to exclude "fraudulent or fictitious" establishments and "effective" being added to exclude minor establishments such as a "mere warehouse. From a physical standpoint, entitlement by Establishment thus seems to arise when an applicant has more than a "mere warehouse" but less than a principal place of business in the territory of a contracting party, but exactly where the line is drawn is unclear.

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Additional uncertainty may arise from whether, e. We are unaware of any judicial opinions or other materials that provide clear guidance on these issues. To make matters worse, the ultimate determination of whether entitlement is proper, and thus whether protection is valid, is left to the law of each contracting party. Consequently, Establishment might mean different things in different jurisdictions, especially if international comity is disregarded. Even if the U.

Numerous contracting party design application requirements relating to, e. Accordingly, national-and regional-level prosecution should still be anticipated, especially in novelty-examining jurisdictions and jurisdictions with relatively stringent figure and other application requirements. Efforts are in progress to harmonize national- and regional-level design application requirements.

For example, WIPO's Standing Committee on the Law of Trademarks, Industrial Designs and Geographic Indications SCT is formulating draft articles and regulations that would harmonize shading and other design application requirements across all conforming jurisdictions.

Impact of the Patent Law Treaties Implementation Act of 2012

Adoption would reduce drafting fees and the cost and hassle of responding to technical contracting party refusals. SCT's draft articles and regulations also seek to set minimum grace and non-publication periods, and to calibrate technical requirements to Hague System and other international norms, again to standardize overall prosecution and make Hague System adoption easier and more attractive.

Meaningful international consensus on these requirements is likely a long way off, however, and there has been little to no discussion regarding topics such as multi-jurisdictional search and examination for novelty. Thus, a certain amount of national- and regional-level prosecution, with concomitant fees and delays, seems inevitable in at least the near future for Hague applications. Hague applications may also not be preferred if design protection is needed immediately or for other strategic reasons.

Early versions of the Hague Agreement, which originated in , were oriented toward design registration regimes that did not examine applications beyond formalities. This orientation made the Hague System an imperfect fit for the U. The latest version of the Hague Agreement, known as the Geneva Act, addressed this deficiency, and the U. Senate, which must approve treaties, didn't "advise and consent" until December 7, by operation of its own terms, the Geneva Act didn't become effective internationally until December 23, Around the same time, the U.

Patent and Trademark Office USPTO prepared draft implementing language — which needed to become law before formal ascension to the Hague Agreement could occur — and sent it to Congress on July 20, The draft language included everything needed to implement the Hague System, including extending U. At the start of the second session of the th Congress on January 21, , Hague implementation was identified as one of five non-controversial USPTO legislative objectives along with, e.

On the other side of the aisle, Sen. It passed the Senate by unanimous consent on September The Senate Judiciary Committee and its staffs on both sides of the aisle were reportedly very helpful with moving S. On September 19, the House of Representatives introduced a bill with substantively identical language, H. Under commonly understood House legislative practice, typically a House bill next must be reported favorably out of the committee with legislative jurisdiction here, the House Judiciary Committee , further referred to the House Rules Committee to set rules for debate and finally considered by the entire House in order to be passed.

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