GENEVA ACT OF THE HAGUE AGREEMENT
GENEVA ACT (1999) OF THE HAGUE AGREEMENT
CONCERNING THE INTERNATIONAL
REGISTRATION OF INDUSTRIAL DESIGNS
STATUS UNITED STATES HAGUE AGREEMENT MEMBERSHIP, AS OF NOVEMBER 18, 2012
UPDATE – DESIGN TREATY – HAGUE AGREEMENT – U. S. SENATE PASSES PATENT LAW REVISION TO ENABLE U. S. HAGUE AGREEMENT MEMBERSHIP, AND U. S. HOUSE OF REPRESENTATIVES HAS A CORRESPONDING PENDING BILL. HELP NEEDED
NOVEMBER 18, 2012
(See below SPECIAL NOTICE of August 14, 2012, on the Hague Agreement Design Treaty for more background)
U. S. membership in the Hague Agreement to provide simplified global design patent filing received a strong push forward from the U. S. Senate, when it quickly passed S. 3486 (112th Cong. 2d Sess.) on September 23, 2012, after it was filed on August 2, 2012. This bill makes a few patent law changes necessary for the U. S to become a Hague Agreement member. The leadership on both sides of the Senate floor spoke strongly for the bill at its introduction, recognizing treaty membership was needed to grow the U. S. economy (See Congressional Record – Senate, S5980, August 2, 2012). The Senate had already recommended ratification of the treaty after a hearing before its Committee Foreign Relations (Treaty No. 109-21 (see Thomas.loc.gov web site, treaty 109-21, 109th Cong., 2005-2006).
The U. S. House of Representatives now has H.R.6432 (112th Cong., 2d Sess.), with the same text as the Senate passed bill. The Judiciary Committee, Subcommittee on Intellectual Property, Competition and Internet is working on the bill. It is a good sign for passage that the House bill has several cosponsors.
NOW IS THE TIME FOR MORE ACTION.
Enactment of this bill in 2012 is needed to continue the momentum for U. S. Hague Agreement membership in 2013. Several additional steps must be completed for the U. S. to become a member, and approval of the patent law change is a key step for the regulations preparation and other work to start with full intensity..
Information has been received that the House Judiciary Committee requested the House leadership to expedited action on the bill, sending the bill directly to the House floor for a vote. Another good sign is that information has been received the U. S. PTO has formed a team in its Patent Operation organization to guide the implementation of the Hague Agreement. Team is headed by Charlie Pearson, Director of the Office of PCT Legal Administration.
HOW TO HELP
Interested persons can express their views on the need for prompt action on this legislation by contacting their local member of the House of Representatives. Resources on the treaty can be found on this web site's Hague Agreement Information Center. Click this link to reach the Center. Contact information for House members and Committees can be found on the House web site at URL. http://www.house.gov .
Of particular importance is to contact Representative Goodlattle, chairman of the House Judiciary Committe, Subcommittee on Intellectual Property, Competition and Internet, whose telephone number is 202-225-5741. Senate and House bills can be found on the Library of Congress Thomas web site at URL: http://Thomas.loc.gov .
STATUS OF UNITED STATES HAGUE AGREEMENT MEMBERSHIP, AS OF AUGUST 2, 2012
SPECIAL NOTICE – Design Treaty (Hague Agreement)l -- U. S. MEMBERSHIP IS MOVING CLOSER – AUGUST 14, 2012
On August 2, 2012, U. S. Senate Democratic and Republican leadership filed a bil in the U. S. Senatel, S. 3486 (112th Cong., 1st Sess.), moving the U. S. closer to becoming a member of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement). The legislation can be viewed by going to the Library of Congress web site at URL http://thomas.loc.gov, entering the bill ID, S. 3486, and changing the search to "Bill Number."
A lot of people have contributed to bringing U. S. membership in the Hague Agreement close to completion, including the U. S. Patent and Trademark Office (PTO) leadership and staff at the treaty preparatory meetings and diplomatic conference. Congressional leadership and staff worked on successful ratification of the treaty and preparing the current bill for consideration. It is not easy to organize the steps needed to implement U. S. treaty membership, a wise precaution, usually. Also, there were many administrative priorities that had to be determined. It is time to look forward to completing U. S. Hague membership, now that it is on track to be finished.
So far there are several indications that Congress and the administration recognize that Hague Agreement membership is a significant economic opportunity for U. S. business. The treaty will allow more coordinated filing for intellectual property product design protection, at lower cost, and it will be easier for small and medium size businesses to utilize design protection systems around the world. A global design protection filing approach is one of the best ways to stop product design knock offs and counterfeiting. It is still important for design owners to consult with an attorney experienced in U. S. and foreign design law to plan and implement international design protection.
Major professional organizations and companies have been urging U. S. Hague Agreement membership. No implementing legislation has been filed until now. S. 3486 approval is needed to onform U. S. patent law with Hague Agreement requirements. The changes would increase the design patent term from 14 to 15 year, and make a few other routine amendments. The design patent term change has not been controversial. Similar treaties to which the U. S. belongs and that have the advantages mentioned above have been very successful: Madrid Protocol for trademarks and Patent Cooperation Treaty for utility patents. It is the design patent turn to go global.
Organizations and individuals should contact immediately their Senators and Representatives in Congress, and the leadership of the Senate Judiciary Committee and House Judiciary Committee to express their views on whether the legislation should be passed promptly or allowed to drift this congressional term with no significant action. Once the U. S. joins the treaty it is expected that other major users of design protection systems will join the Hague Agreement, including China and Japan. South Korea is scheduled to join this year.
The record of Congressional and executive administrations performance on the U. S. joining the Hague Agreement is as follows:
1. 1999 Diplomatic Conference – successful completion of the Hague Agreement, where the U. S. government signed the treaty indicating a willingness to make the effort to become a member. The PTO was a very active participant in development of the Geneva Act (For further details on the treaty development and operation, see William T. Fryer III, The Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs, Drafting History and Analysis (2005), Kluwer Law International.
2. In 2003 the treaty became operational, and now there are member 45 countries and regional organizations members that are members of the new treaty, the Geneva Act of the Hague Agreement, including the European Union.
3. On December 7, 2007 the U. S. Senate ratified the Geneva Act, and the PTO sent proposed legislation to Congress. No significant action occurred on the legislation until the following bill was filed in 2012.
4. On August 12, 2012, S. 3486 (112th Cong., 1st Sess.) was filed, to start a major legislative step for U. S. Hague Agreement membership. Also, this legislation implements a second treaty, the Patent Law Treaty (PLT), developed mainly for utility patents. PLT has not been a controversial proposal. These treaties have a historical connection in time, appearing about the same time for implementation, and neither one was considered controversial or high priority by Congress or the administrations. The Hague agreement did distinguish itself by its important potential economic impact, while PLT improved procedures mainly for utility patents.. The joinder of the two treaties in one bill should not slow down the enactment at this time.
After Congress approves the legislation and the President signs it there are other major steps needed for Hague Agreement membership The PTO must prepare new regulations to interface with current design patent regulations. It does not appear that any major work on preparing them has been started by the PTO. There is a process to complete new regulations requiring public comments. There has been no notice of proposed rules on the Hague Agreement.
The S. 3486 legislation has a provision that states the law becomes effective one year after the president signs the bill. This provision is consistent with a commitment orally stated by the PTO leadership, to have the Hague Agreement up and running for U. S. design owner within one year after the aforementioned bill is enacted.. The challenge is to get the bill approved in fall 2012, and complete the regulations soon thereafter. The last step, coordinated with the Department of State, is to deposit the membership documents and indicated when the U. S. wants to become a member of the Hague Agreement. Now the process for U. S. Hague Agreement membership is in the hands of Congress, the PTO and the public, with a strong PTO influence. The goal of Hague Agreement membership is within reach.
It is encouraging that the Executive Branch has chosen Hague Agreement membership and improved international design protection to be presented to Congress and the public at this important time. It makes good sense, now that the work on patent law reform (AIA new law) is well underway. The U. S. Hague Agreement membership is an important step in improving the U. S. economy. It is politically significant for both U. S. major political parties for the U. S. to obtain this membership promptly.
This web site's Hague Agreement Information Center has helpful documents
on the Hague Agreement for use by researchers and attorneys. Very
soon additional background information will be posted on the Information
Center page and the Information Center will be analyzed in an upcoming
Newsletter. Every effor will be made to post on the Information
Centter the status of the U. S. preparation to become a Geneva Act member.
HOW TO FIND UPDATES ON U. S. CONGRESSIONAL WORK ON S. 3486 112th Cong., 1st Sess.) RELATED LEGISLATION.AND ON TREATIES THAT ARE REVIEWED FOR RATIFICATION BY THE U. S. SENATE
There is a U. S. government web site that keeps relatively up to date on the status of pending legislation and earlier legislation. It can be found on the Internet at URL: http://thomas.loc.gov, as mentioned above in the Special Notice.
For treaties, the same web site can be used to obtain background information on what happened when the Senate reviewed a treaty for ratification. Ratification does not end the Congressional review, for the U. S. may have to enact or revise its laws to comply witha treaty, and this step helps to define the U. S. treaty interpretation through implementing the treaty in legislation form.
The Hague Agreement Geneva Act Congressional history can be found by going to the aforementioned URL and selecting Treaty, entering the terms :Hague Agreement Geneva Act, or you can enter the treaty number which is 109-21. The Congressional term must be entered to narrow the search. For the Geneva Act it was 109th Congress. Finding the Congressional Term can be a challenge, but I have saved you that trouble this time. The Documents transmitted by President Bush recommending ratification are available on the site, as well as a copy of the Geneva Act. There are links to several used resources from a treaty home page.
At the end of the Senate ratification document are declarations that were manadated by the Senate on how the treaty must operate for the U. S. membership. The treaty sometimes provides members choices, allow flexibility in adapting to national systems. This part of the treaty structure is important and built on a foundation developed in the treaty negotiation. It is an interesting story that needs to be learned to work in the treaty based global system provided by the Hague Agreement Geneva Act.
This page was last updated on November 19, 2012
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