[DOCID: f:td021.109] From the Treaty Documents Online via GPO Access [wais.access.gpo.gov] 109th Congress 2d Session SENATE Treaty Doc. 109-21 _______________________________________________________________________ GENEVA ACT OF THE HAGUE AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF INDUSTRIAL DESIGNS __________ MESSAGE from THE PRESIDENT OF THE UNITED STATES transmitting THE GENEVA ACT OF THE HAGUE AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF INDUSTRIAL DESIGNS (THE ``AGREEMENT''), ADOPTED IN GENEVA ON JULY 2, 1999, AND SIGNED BY THE UNITED STATES ON JULY 6, 1999 <GRAPHIC(S) NOT AVAILABLE IN TIFF FORMAT> November 13, 2006.--Treaty was read the first time, and together with the accompanying papers, referred to the Committee on Foreign Relations and order to be printed for the use of the Senate LETTER OF TRANSMITTAL ---------- The White House, November 13, 2006. To the Senate of the United States: With a view to receiving the advice and consent of the Senate to ratification, I transmit herewith the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the ``Agreement''), adopted in Geneva on July 2, 1999, and signed by the United States on July 6, 1999. I also transmit, for the information of the Senate, a report of the Department of State with respect to the Agreement. This Agreement promotes the ability of U.S. design owners to protect their industrial designs by allowing them to obtain multinational design protection through a single deposit procedure. Under the Agreement, U.S. design owners would be able to file for design registration in any number of the Contracting Parties with a single standardized application in English at either the U.S. Patent and Trademark Office or at the International Bureau of the World Intellectual Property Organization (WIPO). Similarly, renewal of a design registration in each Contracting Party may be made by filing a single request along with payment of the appropriate fees at the International Bureau of WIPO. This Agreement should make access to international protection of industrial designs more readily available to U.S. businesses. In the event that the Senate provides its consent to ratify the Agreement, the United States would not deposit its instrument of ratification until the necessary implementing legal structure has been established domestically. I recommend that the Senate give early and favorable consideration to this Agreement and give its advice and consent to its ratification, subject to the declarations described in the accompanying report of the Department of State. George W. Bush. LETTER OF SUBMITTAL ---------- Department of State, Washington, April 14, 2006. The President, The White House. The President: I have the honor hereby to submit to you, with a view to its transmittal to the Senate for advice and consent to ratification, the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (hereinafter the ``Agreement''), adopted at Geneva, July 2, 1999. This treaty was adopted under the auspices of the World Intellectual Property Organization (``WIPO'') with the objective of simplifying the process of seeking protection for designs in multiple countries. The Agreement traces its roots to the Hague Agreement Concerning the International Deposit of Industrial Designs done at The Hague, Netherlands, on November 6, 1925, which entered into force in 1928, and was revised numerous times. For the 42 current member states of the Hague Union, these existing agreements facilitate the obtainment of intellectual property protection for industrial designs by allowing multinational patent protection in a number of countries through a single ``international deposit'' procedure. However, these Acts did not meet the needs of nations, such as the United States, that review each application individually. This Agreement allows the United States to partake in the benefits of facilitating multinational design protection for applicants while continuing its system of individual review. The Department of Commerce and the Office of the United States Trade Representative join the Department of State in requesting that the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs be transmitted to the Senate for its advice and consent to ratification as soon as possible, subject to the declarations described in the enclosed document. Respectfully submitted. Condoleezza Rice. Enclosure: Key Provisions of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. Key Provisions of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs the operation of the treaty The Agreement will permit a U.S. design applicant to file for protection in any of the Contracting Parties, including the United States, by filing a single standardized application in English. Pursuant to Articles 3 and 4( 1) of the Agreement, any person who is a national of or is domiciled in the United States may file an international design application with the United States Patent and Trademark Office (USPTO) or directly with the International Bureau (IB) of the World Intellectual Property Organization (WIPO). The filing date of the international design application is the date that the application is received by either the IB or the USPTO (Article 9(1) and Rule 13(3)). The USPTO must transmit any application to the IB within one month from the date on which the USPTO receives it. If, however, a security clearance is required by law, then the USPTO can notify the Director General of WIPO (Director General) as to this fact, and the USPTO has six months to transmit the application to the lB. Article 5(1) sets forth the mandatory requirements as to the contents of an international design application. Article 5(2) provides additional mandatory contents as to Contracting Parties that have an intellectual property office that is an Examining Office, such as the USPTO. The Agreement also provides a basis for rights of priority with regard to international design applications filed under the Agreement. Article 6(1) states that the application may contain a declaration under Article 4 of the Paris Convention for the Protection of Industrial Property (1967) claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention or any member of the World Trade Organization. Article 6(2) provides that an international design application is deemed, as from its filing date and regardless of its subsequent fate, equivalent to a regular filing within the meaning of Article 4 of the Paris Convention. Thereby, international design applications under the Agreement may serve as a basis for claiming priority in a national or regional application. Article 7 states that the fees shall include a designation fee for each designated Contracting Party. However, any Contracting Party, such as the United States, whose Office is an Examining Office, may declare that the prescribed designation fees be replaced by an individual designation fee, which may be payable in two parts. According to Article 10(1) and Rule 15 of the Agreement, the IB will register each design that is the subject of an international design application immediately upon receipt by the IB of the application. The general rule under Article 10(2) is that the date of the international registration will be the filing date of the application, provided it is complete and complies with the mandatory requirements of the Agreement. Pursuant to Article 9(3) and Rule 14, if the application contains any of the following missing parts or irregularities, the date of the international registration is the date on which the correction is received by the IB: (1) the application is not in a prescribed language (English or French); (2) the application lacks any indication that registration under the Agreement is sought; (3) the application is missing indications allowing the identity of the applicant to be established; (4) the application lacks a reproduction, or a specimen, as required; or (5) the application does not contain the designation of at least one Contracting Party. If an irregularity is discovered other than the five listed above, the international registration date is the filing date, provided that the irregularity is corrected within the prescribed time limit of three months. If not corrected within the time limit, the application is considered abandoned. However, pursuant to Article 8(2)(b), if the irregularity relates to additional elements that may be required by an Examining Office, or to a special requirement notified to the Director General by a Contracting Party, and the applicant has not complied within the prescribed time limit of three months, the application is merely deemed not to contain the designation of the concerned Contracting Party. In accordance with Article 10(3) and Rule 17, the IB will normally publish the international registration within six months of the registration date, unless the applicant requests that the publication be made immediately after the registration. Article 11 (1) and Rule 16( 1) provide that applicants may also request deferment of publication, which shall be granted for a period of less than 30 months from the filing date if such deferment is allowed by the laws of all the Contracting Parties designated in an application. Article 11 (1)(b) provides that where a Contracting Party does not provide for the deferment of the publication of an industrial design, as is the case in the United States, the Contracting Party shall notify the Director General of that fact in a declaration. Pursuant to Article 12( 1), the USPTO may refuse registration, in whole or in part, of the international registration, when the conditions for the grant of protection under the laws of the United States are not met. UnderArticle 12(2), the refusal shall be communicated by the USPTO to the IB within the prescribed period of six months from the date on which the IB sends to the USPTO a copy of the publication of the international registration, as set forth in Rule 18(1)(a). However, the USPTO, as an Examining Office, may notify the Director General that the period for refusal for the United States shall be 12 months. According to Article 14(2) and Rule 18(1), if the USPTO does not communicate a notification of refusal, the international registration will have the same effect as a grant of protection for the industrial design under the laws of the United States at the latest on the last day of the period in which USPTO could have transmitted a notice of refusal to the IB. However, if the USPTO unintentionally does not communicate a notice of refusal within that time period, the USPTO may notify the IB and communicate the decision to the holder of the international registration promptly thereafter (Rule 18(1)(c)(ii)). Article 14(1) provides that the international registration has the same effect in the USPTO as a regularly-filed application for the grant of protection of the design under U.S. law. The applicant has the same remedies as if the design had been the subject of a U.S. national application. Under Article 12(4), the USPTO may withdraw a notification of refusal, in whole or in part, at any time. However, in that case, a grant of protection will ensue from the latest date on which the refusal was withdrawn (see Article 14(2)(b)). Article 15 provides that invalidation by the competent authorities in a designated Contracting Party may not be pronounced without the right holder having, in good time, the opportunity to defend his rights. Additionally, in the United States, the USPTO must, where it is aware of the invalidation, notify the IB. Article 16 provides that the IB must record changes of ownership and other matters regarding international registrations and that such changes are to have the same effect as if the recording had been made in the Office of the concerned Contracting Party. Pursuant to Article 17, an international registration shall be effected for a term of five years from the date of international registration. Registrations may be renewed for additional terms of five years. As long as they are renewed according to Article 17(2), Article 17(3) provides that protection shall not terminate before 15 years from the date of international registration. Renewal requires the payment of fees as specified in Rule 24. Article 19 sets forth provisions regarding a common patent office being substituted for national offices when a group of member states agrees to unify domestic legislation on designs. Article 20 of the Agreement provides that the Contracting Parties shall be members of the ``same Union as the States party to the 1934 Act or the 1960 Act,'' and Article 21(1) of the Act provides that the Contracting Parties shall be members ``of the same Assembly as the States bound by Article 2 of the Complementary Act of 1967.'' Article 21(2) sets forth the tasks to be performed by the Assembly. These tasks include: dealing with all matters concerning maintenance and development of the Union and the implementation of the Agreement; exercising rights and performing such tasks as are specifically conferred upon it or assigned to it under this Agreement or the Complementary Act of 1967; giving directions to the Director General concerning preparations for conferences of revision and deciding on the convocation of any such conference; amending the Regulations; giving the Director General all necessary instructions concerning matters within the competence of the Union; adopting the biennial budget and financial regulations of the Union; establishing committees and working groups as appropriate; and determining which States and organizations shall be admitted to its meetings as observers. Article 21(4) sets forth the general voting procedures in the Assembly. Each Contracting Party that is a state shall have one vote and shall vote only in its own name. Any Contracting Party that is an intergovernmental organization may vote in place of its member states, with a number of votes equal to the number of its member states that are party to the Agreement, but no such organization may participate in the vote if anyone of its member states exercises its right to vote, and vice versa. Article 21(5) provides that subject to Articles 24(2) and 26(2), the decisions of the Assembly require two-thirds of the votes cast (abstentions do not count as votes). However, as is common practice in multilateral intellectual property treaties that include provisions for an assembly to facilitate treaty implementation, certain provisions of the Agreement may be amended by a super-majority of the Assembly, without the need for a revision conference. In particular, proposals for the adoption of any amendment to Articles 21, 22, 23, and 26 may be submitted by any Contracting Party or the Director General. Adoption of amendments to those Articles requires a three- fourths majority, except that amendments to Articles 21 and 26(2) shall require a four-fifths majority. Pursuant to Article 26(3), any such amendment enters into force one month after the Director General receives written notifications of acceptance from three-fourths of those Contracting Parties, which, at the time the amendment was adopted, were members of the Assembly and had the right to vote on the amendment.Pursuant to Article 26(3)(c), any such amendment that enters into force will bind all the States and intergovernmental organizations that are Contracting Parties to the Agreement. Article 22 details the duties of the International Bureau of WIPO as they relate to the Agreement. Pursuant to Article 22(5)(c), the Director General and persons designated by the Director General shall take part, without the right to vote, in discussions at any revision conference. Pursuant to Article 23 of the Agreement, the budget of the Union will include income and expenses proper to the Union and its contribution to the budget of expenses to the Unions administered by WIPO. Its budget will be established with due regard to the requirements of coordination with the budgets of the other WIPO Unions. The finances of the Union include a working capital fund, established pursuant to Article 23(5), which will be constituted by the excess receipts and, if such excess does not suffice, by a single payment made by each member of the Union. The USPTO is expected to incur some initial costs for items such as new forms and other updates of procedures in order to allow for appropriate processing of international design applications under the Agreement. However, the Agreement authorizes the United States to set an individual designation fee payable in two parts that will be equivalent to the filing and issue fees currently charged with respect to a regular United States design application. The substantive requirements of chapter 16 of title 35 of the United States Code, which currently defines the substantive requirements for the patenting of designs, will also apply to international design applications. Therefore, these fees should cover the cost of processing applications filed under the Agreement. Much of the examination of an international design application will be the same as that of a regular national application for design patent. implementing legislation In the event that the Senate provides its advice and consent to ratify this Agreement, the United States would not deposit its instrument of ratification until the necessary implementing legal structure had been established domestically, so as to ensure that the United States was capable of complying with the provisions of this Agreement. Such implementation requirements include the enactment of legislation, and the promulgation of new regulations by the USPTO. declarations to accompany united states ratification The Agreement contemplates that Contracting Parties may make declarations with respect to certain articles. The Department of State recommends that the United States ratification to the Agreement be accompanied by nine declarations, pursuant to Agreement Articles 5(2)(a), 7(2), 11(1)(b), 13(1), 16(2), and 17(3)(c), and Agreement Rules 8(1), 13(4) and 18(1)(b). The first listed declaration, authorized under Article 5(2)(a), permits the USPTO, as an Examining Office under the Agreement, to declare those additional elements listed in Article 5(2)(b), which it requires be included in an application for grant of protection of the design. Current United States statutes and regulations governing the protection of design patents require: indications concerning the identity of the creator of the industrial design that is the subject of the application (35 U.S.C. 114, 37 CFR 1.63(a)(3)); a brief description of the reproduction or of the characteristic features of the industrial design (35 U.S.C. 112, 1st paragraph; 37 CFR 1.154(b)(5)); and a claim (35 USC 111). In addition, Rule 11(3) of the Agreement requires that a Party making a declaration under Article 5(2)(a) to the effect that a claim is required must specify in its declaration the exact wording of the required claim (as found in 37 CFR 1.153(a)). The USPTO has ascertained that a declaration is necessary to ensure that its substantive examination of industrial designs is maintained. Accordingly, the Department of State recommends that the following declaration be included in the U.S. instrument of ratification: Pursuant to Article 5(2)(a) and Rule 11(3) of the Agreement, the United States declares that it is an Examining Office under the Agreement whose law requires that an application for the grant of protection to an industrial design contain: (i) indications concerning the identity of the creator of the industrial design that is the subject of the application; (ii) a brief description of the reproduction or of the characteristic features of the industrial design that is the subject of the application; and (iii) a claim. The specific wording of the claim shall be in formal terms to the ornamental design for the article (specifying name of article) as shown, or as shown and described. The second declaration, authorized under Article 7(2), authorizes a Party whose office is an Examining Office (such as USPTO) to declare that its individual designation fee, whose amount is to be indicated in the declaration and can be changed in future declarations, shall replace the designation fee prescribed in the Regulations of the Agreement. In addition, Rule 12(3) provides that a declaration made pursuant to Article 7(2) may also specify that the individual designation fee be payable in two parts. The first part would be paid at the time of filing and the second part would be paid at a later date determined by the law of the Contracting Party. The USPTO has determined that such a declaration is necessary in order to keep its fees for processing international design applications filed under the Agreement the same as those for regularly filed national design applications. Further, it is necessary to have the fee payable in two parts in order to maintain USPTO's current fee practice that comprises a filing fee, due at the time of filing of the application, and an issue fee, due before the patent is to be granted. Accordingly, the Department of State recommends that the following declaration be included in the U.S. instrument of ratification: Pursuant to Article 7(2) and Rule 12(3) of the Agreement, the United States declares that, as an Examining Office under the Agreement, the prescribed designation fee referred to in Article 7(1) of the Agreement shall be replaced by an individual designation fee, that is payable in a first part at filing and a second part payable upon allowance of the application. The current amount of the designation fee is US$790, payable in a first part of US$330 at filing and a second part of US$460 upon allowance of the application. However, for those entities that qualify for ``small entity'' status within the meaning of section 41(h) of title 35 of the United States Code and section 3 of the Small Business Act, the amount of the individual designation fee is US$395, payable in a first part of US$165 and a second part of US$230. In addition, these amounts are subject to future changes upon which notification to the Director General will be made in future declarations as authorized in Article 7(2) of the Agreement. The third declaration, authorized by Article 11(1)(b) of the Agreement, allows the USPTO to notify the Director General that its law does not provide for deferment of publications under the Agreement. The USPTO has ascertained that such a declaration is necessary in order to prohibit deferments of publication of international design registrations designating the United States under the Agreement. Accordingly, the Department of State recommends that the U.S. instrument of ratification be accompanied by the following declaration: Pursuant to Article 11(1)(b) of the Agreement, the United States declares that the law of the United States does not provide for the deferment of the publication of an industrial design. The fourth declaration, authorized under Article 13(1) of the Agreement, authorizes the USPTO to maintain its restriction of allowing only one independent and distinct design to be claimed in a single application. The USPTO has ascertained that such a declaration is necessary so that the USPTO may maintain its practice of issuing one patent for one design, which is defined by a single claim. Accordingly, the Department of State recommends that the following declaration be included in the U.S. instrument of ratification: Pursuant to Article 13(1) of the Agreement, the United States declares that its laws require that only one independent and distinct design may be claimed in a single application. The fifth declaration, authorized by Article 16(2) of the Agreement, allows the USPTO to refuse the effect of recordings regarding change of ownership in the international registration until the USPTO receives assignment statements or documents. This would allow the USPTO to maintain its current practice of requiring that a statement to the effect that a conveyance has been made be submitted to the USPTO and be made available to the public. Under U.S. patent law, if such an assignment is not recorded within three months, the transfer is void against subsequent bona fide purchasers or mortgagees. This protects subsequent purchasers by allowing them to view the contents of any agreement that purports to transfer ownership. The USPTO has ascertained that such a declaration is necessary in order to maintain its current practice of requiring that assignment documents be provided to the USPTO before they are given effect. Accordingly, the Department of State recommends that the United States instrument of ratification be accompanied by the following declaration: Pursuant to Article 16(2) of the Agreement, the United States declares that a recording by the International Bureau under Article 16(1)(i) of the Agreement shall not have effect in the United States until the USPTO has received the statements or documents recorded thereby. The sixth declaration is mandated by Article 17(3)(c) of the Agreement. That Article requires that each Contracting Party notify the Director General as to the maximum duration of protection provided for by its law. Accordingly, the Department of State recommends that the U.S. instrument of ratification be accompanied by the following declaration: Pursuant to Article 17(3)(c) of the Agreement, the United States declares that the maximum duration of protection for designs provided for by its law is 15 years from grant. The seventh declaration, authorized by Rule 8(1)(a) of the Agreement, allows the USPTO to continue its practice of requiring that an application for the protection of an industrial design be filed in the name of the creator of the design. In addition, Rule 8(1)(b) states that any declaration pursuant to Rule 8(1)(a) specify the form and mandatory contents of any statement or document required for the purposes of that rule. The USPTO has determined that such a declaration is necessary in order to maintain its current examination practice of requiring that the applicant for protection of an industrial design be the creator of that design. Accordingly, the Department of State recommends that the United States instrument of ratification be accompanied by the following declaration: Pursuant to Rule 8(1) of the Agreement, the United States declares that the law of the United States requires that an application for protection of an industrial design be filed in the name of the creator of the industrial design. The specific form and mandatory contents of a statement required for the purposes of Rule 8(2) of the Agreement are contained in section 1.63 of title 37 of the Code of Federal Regulations of the United States. The eighth declaration, authorized by Rule 13(4) of the Agreement, allows the USPTO to notify the Director General that the law of the United States requires a security clearance and that the period of one month identified in Rule 13(3) for the Office of a Contracting Party to forward an application to the IB, shall be replaced by a period of six months. This will allow for time to complete the security review of the applications currently required by 35 U.S.C. 181, et seq. The USPTO has ascertained that a declaration is necessary in order to ensure that international design applications can be reviewed for secrecy and security purposes. Accordingly, the Department of State recommends that the following declaration be included in the U.S. instrument of ratification: Pursuant to Rule 13(4) of the Agreement, the United States declares that the period of one month referred to in Rule 13(3) of the Agreement shall be replaced by a period of six months as to the United States in light of the security clearance required by United States law. The ninth declaration, authorized by Rule 18(1)(b), allows the USPTO, as an Examining Office, to notify the Director General that the period of six months for notification of refusal referred to in Rule 18(1)(a) shall be replaced by a period of 12 months as to the United States. The USPTO has ascertained that such a declaration is necessary in order to maintain the integrity of its substantive examination procedures for applications filed under the Agreement. Accordingly, the Department of State recommends that the following declaration be included in the U.S. instrument of ratification: Pursuant to Rule 18(1)(b), the United States declares that the period of six months referred to in Rule 18(1)(a) of the Agreement shall be replaced by a period of twelve months with respect to the United States, as the Office of the United States is an Examining Office under the Agreement.'' <GRAPHIC(S) NOT AVAILABLE IN TIFF FORMAT>
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