(New) SPECIAL REPORT - DESIGN TREATY (May 30, 1999)

U. S. PATENT AND TRADEMARK OFFICE HEARING AND STATEMENTS FILED ON DRAFT ACT (NEW ACT OF THE HAGUE AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF INDUSTRIAL DESIGNS)

Prepared by William T. Fryer, III

Summary. A U. S. Patent and Trademark Office (PTO) public hearing was held on May 13, 1999, and written statements were filed on the Draft Act, initiated by the PTO notice in 64 Federal Register 19135 (April 19, 1999). A review of the hearing testimony and the statements indicated overwhelming support for U. S. adherence to a treaty based on the Draft Act, if it is compatible with existing U. S. Law. The Draft Act should allow novelty examination countries, like Japan and the U. S., to participate in the treaty. It will allow centralized filing of design patent applications and increased procedural uniformity, similar in some respects to the Patent Cooperation Treaty for utility patents and the Madrid Protocol for marks.

The next final stage for completing the new design treaty will be the Diplomatic Conference on the Draft Act, June 16 to July 6, 1999, at WIPO Headquarters in Geneva, Switzerland. A report on the results of that conference will be on this web site.

The Draft Act text and related rules are on the WIPO web site under the listing HAGUE SYSTEM. Menu, Past Events listing. Background on the Draft Act development is summarized on a page introduced below and in articles cited there.

If there are any questions about this report, please contact Bill Fryer, at: fryer@fryer.com --.

Detailed Review of Hearing Testimony. A public hearing was held on May 13, 1999, on the Draft Act. A very complete review of the hearing testimony was published in 58 BNA-Patent, Trademark and Copyright Journal, No. 1426 at page 80 (May 20, 1999). Written statements were filed in response the PTO request for comments and they were read as part of the preparation of this report.

A total of four person spoke at the hearing, all in general support of the U. S. adherence to the Draft Act. William T. Fryer, III, testified for the American Bar Association, Section of Intellectual Property Law. He presented the Section's resolution that supported U. S. adherence to a treaty based on the Draft Act, if it was compatible with existing U. S. Law. He emphasized the importance of having provisions in the treaty that could be accepted now. A lesson from the past he pointed out was that in the 1960 Act on the design treaty a provision for six months was included, to complete the International Registration novelty examination, that was not realistic for the U. S. and most other novelty examination countries to meet. Almost forty years later the current treaty is needed to adopt realistic provisions.

Dan Nichols spoke for Motorola Company and voiced strong support for the Draft Act and U. S. adherence to a treaty based on it. His company files extensively for foreign design protection. He stressed the need for more filing procedure uniformity, particularly on drawings.

Cooper Woodring, an industrial designer and former president of the Industrial Designers Society of American, spoke for the more than 3,000 members of his organization. He urged U. S. adherence to a treaty based on the Draft Act. He demonstrated with sample toothbrushes the dynamic role played by industrial designers in developing products that need protection. He pointed out industrial designers develop products now for a global market.

The last speaker was Stephen Peterson, from the firm of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D. C. He supported the need for U. S. adherence to a treaty based on the Draft Act. His perspective was that small and medium size companies needed this type of treaty, to make extensive foreign design protection affordable and manageable.

Review of Written Statements. This review is organized by listing separately the companies, other organizations, and attorneys who submitted statements. If there were special points emphasized or exceptions stated, they are summarized. Each of these statements generally supported U. S. adherence to a treaty based on the Draft Act, and that fact will not be repeated.

COMPANIES

Caterpillar, Inc., by Vice President and General Counsel and Secretary, R. Rennie Atterbury III,

Gillette Company, by Patent and Trademark Counsel, Donal B. Tobin. He stressed the need for more uniform roles on drawings and use of photos.

The Goodyear Tire and Rubber Co., by Thomas P. Lewandawski, patent attorney. He emphasized the importance of the PTO examination of all International Registrations, within the deadline set by the Draft Act, so that no International Registrations issue without novelty examination.

S. C. Johnson & Son, Inc., by General Patent Counsel, J. William Frank, III.

Motorola Company, by Dan Nichols, patent attorney (see summary above of public hearing testimony).

OTHER ORGANIZATIONS

Industrial Designers Society of America, by Cooper Woodring (see summary above of public hearing testimony).

American Bar Association, Section of Intellectual Property Law (see summary above of public hearing testimony).

ATTORNEYS

Richard P. Beem (personal comments), patent attorney from the firm of Jenner & Block, Chicago, Illinois.

John Dorfman, patent attorney, for the firm of Dann, Dorfman, Herrell and Skillman, Philadelphia, Pennsylvania.

Jim Hamilton, for the firm of Oblon, Spivak, McClelland, Maier and Neustadt, Arlington, Virginia. He pointed out the administrative efficiency of the Draft Act.

Gabriel Kotona, patent attorney, New York City. He urged that the WIPO fees be kept as low as possible, to make the Draft Act cost to applicants as reasonable as the current Hague Agreement.

Paul Morgan, (personal views) patent attorney, Xerox Corp. He expressed several reservations about the U. S. design patent law, particularly on the allowance of design patents on purely functional products.

Grant Peters (personal comments), from the firm of Treyler, Bushnell, Giangiorgi, Blackstone, Ltd., Chicago, Illinois.

Jim Slattery (personal comments), patent attorney from the firm of Birch, Steward, Kolasch & Birch, LP.

Randolph Smith, patent attoney, Washington, D. C. He expressed concern that the PTO failure to send an International Registration application to WIPO would penalize the applicant.

END OF REPORT

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