[Congressional Bills 112th Congress]
[From the U.S. Government Publishing Office]
[S. 3486 Engrossed in Senate (ES)]

112th CONGRESS
  2d Session
                                S. 3486

_______________________________________________________________________

                                 AN ACT


 
 To implement the provisions of the Hague Agreement and the Patent Law 
                                Treaty.

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Patent Law Treaties Implementation 
Act of 2012''.

   TITLE I--HAGUE AGREEMENT CONCERNING INTERNATIONAL REGISTRATION OF 
                           INDUSTRIAL DESIGNS

SEC. 101. THE HAGUE AGREEMENT CONCERNING INTERNATIONAL REGISTRATION OF 
              INDUSTRIAL DESIGNS.

    (a) In General.--Title 35, United States Code, is amended by adding 
at the end the following:

``PART V--THE HAGUE AGREEMENT CONCERNING INTERNATIONAL REGISTRATION OF 
                           INDUSTRIAL DESIGNS

``CHAPTER                                                          Sec.
``38. International design applications.....................       381.

            ``CHAPTER 38--INTERNATIONAL DESIGN APPLICATIONS

``Sec.
``381. Definitions.
``382. Filing international design applications.
``383. International design application.
``384. Filing date.
``385. Effect of international design application.
``386. Right of priority.
``387. Relief from prescribed time limits.
``388. Withdrawn or abandoned international design application.
``389. Examination of international design application.
``390. Publication of international design application.
``Sec. 381. Definitions
    ``(a) In General.--When used in this part, unless the context 
otherwise indicates--
            ``(1) the term `treaty' means the Geneva Act of the Hague 
        Agreement Concerning the International Registration of 
        Industrial Designs adopted at Geneva on July 2, 1999;
            ``(2) the term `regulations'--
                    ``(A) when capitalized, means the Common 
                Regulations under the treaty; and
                    ``(B) when not capitalized, means the regulations 
                established by the Director under this title;
            ``(3) the terms `designation', `designating', and 
        `designate' refer to a request that an international 
        registration have effect in a Contracting Party to the treaty;
            ``(4) the term `International Bureau' means the 
        international intergovernmental organization that is recognized 
        as the coordinating body under the treaty and the Regulations;
            ``(5) the term `effective registration date' means the date 
        of international registration determined by the International 
        Bureau under the treaty;
            ``(6) the term `international design application' means an 
        application for international registration; and
            ``(7) the term `international registration' means the 
        international registration of an industrial design filed under 
        the treaty.
    ``(b) Rule of Construction.--Terms and expressions not defined in 
this part are to be taken in the sense indicated by the treaty and the 
Regulations.
``Sec. 382. Filing international design applications
    ``(a) In General.--Any person who is a national of the United 
States, or has a domicile, a habitual residence, or a real and 
effective industrial or commercial establishment in the United States, 
may file an international design application by submitting to the 
Patent and Trademark Office an application in such form, together with 
such fees, as may be prescribed by the Director.
    ``(b) Required Action.--The Patent and Trademark Office shall 
perform all acts connected with the discharge of its duties under the 
treaty, including the collection of international fees and transmittal 
thereof to the International Bureau. Subject to chapter 17, 
international design applications shall be forwarded by the Patent and 
Trademark Office to the International Bureau, upon payment of a 
transmittal fee.
    ``(c) Applicability of Chapter 16.--Except as otherwise provided in 
this chapter, the provisions of chapter 16 shall apply.
    ``(d) Application Filed in Another Country.--An international 
design application on an industrial design made in this country shall 
be considered to constitute the filing of an application in a foreign 
country within the meaning of chapter 17 if the international design 
application is filed--
            ``(1) in a country other than the United States;
            ``(2) at the International Bureau; or
            ``(3) with an intergovernmental organization.
``Sec. 383. International design application
    ``In addition to any requirements pursuant to chapter 16, the 
international design application shall contain--
            ``(1) a request for international registration under the 
        treaty;
            ``(2) an indication of the designated Contracting Parties;
            ``(3) data concerning the applicant as prescribed in the 
        treaty and the Regulations;
            ``(4) copies of a reproduction or, at the choice of the 
        applicant, of several different reproductions of the industrial 
        design that is the subject of the international design 
        application, presented in the number and manner prescribed in 
        the treaty and the Regulations;
            ``(5) an indication of the product or products that 
        constitute the industrial design or in relation to which the 
        industrial design is to be used, as prescribed in the treaty 
        and the Regulations;
            ``(6) the fees prescribed in the treaty and the 
        Regulations; and
            ``(7) any other particulars prescribed in the Regulations.
``Sec. 384. Filing date
    ``(a) In General.--Subject to subsection (b), the filing date of an 
international design application in the United States shall be the 
effective registration date. Notwithstanding the provisions of this 
part, any international design application designating the United 
States that otherwise meets the requirements of chapter 16 may be 
treated as a design application under chapter 16.
    ``(b) Review.--An applicant may request review by the Director of 
the filing date of the international design application in the United 
States. The Director may determine that the filing date of the 
international design application in the United States is a date other 
than the effective registration date. The Director may establish 
procedures, including the payment of a surcharge, to review the filing 
date under this section. Such review may result in a determination that 
the application has a filing date in the United States other than the 
effective registration date.
``Sec. 385. Effect of international design application
    ``An international design application designating the United States 
shall have the effect, for all purposes, from its filing date 
determined in accordance with section 384, of an application for patent 
filed in the Patent and Trademark Office pursuant to chapter 16.
``Sec. 386. Right of priority
    ``(a) National Application.--In accordance with the conditions and 
requirements of subsections (a) through (d) of section 119 and section 
172, a national application shall be entitled to the right of priority 
based on a prior international design application that designated at 
least 1 country other than the United States.
    ``(b) Prior Foreign Application.--In accordance with the conditions 
and requirements of subsections (a) through (d) of section 119 and 
section 172 and the treaty and the Regulations, an international design 
application designating the United States shall be entitled to the 
right of priority based on a prior foreign application, a prior 
international application as defined in section 351(c) designating at 
least 1 country other than the United States, or a prior international 
design application designating at least 1 country other than the United 
States.
    ``(c) Prior National Application.--In accordance with the 
conditions and requirements of section 120, an international design 
application designating the United States shall be entitled to the 
benefit of the filing date of a prior national application, a prior 
international application as defined in section 351(c) designating the 
United States, or a prior international design application designating 
the United States, and a national application shall be entitled to the 
benefit of the filing date of a prior international design application 
designating the United States. If any claim for the benefit of an 
earlier filing date is based on a prior international application as 
defined in section 351(c) which designated but did not originate in the 
United States or a prior international design application which 
designated but did not originate in the United States, the Director may 
require the filing in the Patent and Trademark Office of a certified 
copy of such application together with a translation thereof into the 
English language, if it was filed in another language.
``Sec. 387. Relief from prescribed time limits
    ``An applicant's failure to act within prescribed time limits in 
connection with requirements pertaining to an international design 
application may be excused as to the United States upon a showing 
satisfactory to the Director of unintentional delay and under such 
conditions, including a requirement for payment of the fee specified in 
section 41(a)(7), as may be prescribed by the Director.
``Sec. 388. Withdrawn or abandoned international design application
    ``Subject to sections 384 and 387, if an international design 
application designating the United States is withdrawn, renounced or 
canceled or considered withdrawn or abandoned, either generally or as 
to the United States, under the conditions of the treaty and the 
Regulations, the designation of the United States shall have no effect 
after the date of withdrawal, renunciation, cancellation, or 
abandonment and shall be considered as not having been made, unless a 
claim for benefit of a prior filing date under section 386(c) was made 
in a national application, or an international design application 
designating the United States, or a claim for benefit under section 
365(c) was made in an international application designating the United 
States, filed before the date of such withdrawal, renunciation, 
cancellation, or abandonment. However, such withdrawn, renounced, 
canceled, or abandoned international design application may serve as 
the basis for a claim of priority under subsections (a) and (b) of 
section 386, or under subsection (a) or (b) of section 365, if it 
designated a country other than the United States.
``Sec. 389. Examination of international design application
    ``(a) In General.--The Director shall cause an examination to be 
made pursuant to this title of an international design application 
designating the United States.
    ``(b) Applicability of Chapter 16.--All questions of substance and, 
unless otherwise required by the treaty and Regulations, procedures 
regarding an international design application designating the United 
States shall be determined as in the case of applications filed under 
chapter 16.
    ``(c) Fees.--The Director may prescribe fees for filing 
international design applications, for designating the United States, 
and for any other processing, services, or materials relating to 
international design applications, and may provide for later payment of 
such fees, including surcharges for later submission of fees.
    ``(d) Issuance of Patent.--The Director may issue a patent based on 
an international design application designating the United States, in 
accordance with the provisions of this title. Such patent shall have 
the force and effect of a patent issued on an application filed under 
chapter 16.
``Sec. 390. Publication of international design application
    ``The publication under the treaty of an international design 
application designating the United States shall be deemed a publication 
under section 122(b).''.
    (b) Conforming Amendment.--The table of parts at the beginning of 
title 35, United States Code, is amended by adding at the end the 
following:

``V. The Hague Agreement concerning international                401''.
                            registration of industrial 
                            designs.

SEC. 102. CONFORMING AMENDMENTS.

    Title 35, United States Code, is amended--
            (1) in section 100(i)(1)(B) (as amended by the Leahy-Smith 
        America Invents Act (Public Law 112-29; 125 Stat. 284)), by 
        striking ``right of priority under section 119, 365(a), or 
        365(b) or to the benefit of an earlier filing date under 
        section 120, 121, or 365(c)'' and inserting ``right of priority 
        under section 119, 365(a), 365(b), 386(a), or 386(b) or to the 
        benefit of an earlier filing date under section 120, 121, 
        365(c), or 386(c)'';
            (2) in section 102(d)(2) (as amended by the Leahy-Smith 
        America Invents Act (Public Law 112-29; 125 Stat. 284)), by 
        striking ``to claim a right of priority under section 119, 
        365(a), or 365(b), or to claim the benefit of an earlier filing 
        date under section 120, 121, or 365(c)'' and inserting ``to 
        claim a right of priority under section 119, 365(a), 365(b), 
        386(a), or 386(b), or to claim the benefit of an earlier filing 
        date under section 120, 121, 365(c), or 386(c)'';
            (3) in section 111(b)(7)--
                    (A) by striking ``section 119 or 365(a)'' and 
                inserting ``section 119, 365(a), or 386(a)''; and
                    (B) by striking ``section 120, 121, or 365(c)'' and 
                inserting ``section 120, 121, 365(c), or 386(c)'';
            (4) in section 115(g)(1) (as amended by the Leahy-Smith 
        America Invents Act (Public Law 112-29; 125 Stat. 284)), by 
        striking ``section 120, 121, or 365(c)'' and inserting 
        ``section 120, 121, 365(c), or 386(c)'';
            (5) in section 120, in the first sentence, by striking 
        ``section 363'' and inserting ``section 363 or 385'';
            (6) in section 154--
                    (A) in subsection (a)--
                            (i) in paragraph (2), by striking ``section 
                        120, 121, or 365(c)'' and inserting ``section 
                        120, 121, 365(c), or 386(c)''; and
                            (ii) in paragraph (3), by striking 
                        ``section 119, 365(a), or 365(b)'' and 
                        inserting ``section 119, 365(a), 365(b), 
                        386(a), or 386(b)''; and
                    (B) in subsection (d)(1), by inserting ``or an 
                international design application filed under the treaty 
                defined in section 381(a)(1) designating the United 
                States under Article 5 of such treaty'' after ``Article 
                21(2)(a) of such treaty'';
            (7) in section 173, by striking ``fourteen years'' and 
        inserting ``15 years'';
            (8) in section 365(c)--
                    (A) in the first sentence, by striking ``or a prior 
                international application designating the United 
                States'' and inserting ``, a prior international 
                application designating the United States, or a prior 
                international design application as defined in section 
                381(a)(6) designating the United States''; and
                    (B) in the second sentence, by inserting ``or a 
                prior international design application as defined in 
                section 381(a)(6) which designated but did not 
                originate in the United States'' after ``did not 
                originate in the United States''; and
            (9) in section 366--
                    (A) in the first sentence, by striking ``unless a 
                claim'' and all that follows through ``withdrawal.'' 
                and inserting ``unless a claim for benefit of a prior 
                filing date under section 365(c) of this section was 
                made in a national application, or an international 
                application designating the United States, or a claim 
                for benefit under section 386(c) was made in an 
                international design application designating the United 
                States, filed before the date of such withdrawal.''; 
                and
                    (B) by striking the second sentence and inserting 
                the following: ``However, such withdrawn international 
                application may serve as the basis for a claim of 
                priority under section 365 (a) and (b), or under 
                section 386 (a) or (b), if it designated a country 
                other than the United States.''.

SEC. 103. EFFECTIVE DATE.

    (a) In General.--The amendments made by this title shall take 
effect on the later of--
            (1) the date that is 1 year after the date of the enactment 
        of this Act; or
            (2) the date of entry into force of the treaty with respect 
        to the United States.
    (b) Applicability of Amendments.--
            (1) In general.--Subject to paragraph (2), the amendments 
        made by this title shall apply only to international design 
        applications, international applications, and national 
        applications filed on and after the effective date set forth in 
        subsection (a), and patents issuing thereon.
            (2) Exception.--Sections 100(i) and 102(d) of title 35, 
        United States Code, as amended by this title, shall not apply 
        to an application, or any patent issuing thereon, unless it is 
        described in section 3(n)(1) of the Leahy-Smith America Invents 
        Act (35 U.S.C. 100 note).
    (c) Definitions.--For purposes of this section--
            (1) the terms ``treaty'' and ``international design 
        application'' have the meanings given those terms in section 
        381 of title 35, United States Code, as added by this title;
            (2) the term ``international application'' has the meaning 
        given that term in section 351(c) of title 35, United States 
        Code; and
            (3) the term ``national application'' means ``national 
        application'' within the meaning of chapter 38 of title 35, 
        United States Code, as added by this title.

               TITLE II--PATENT LAW TREATY IMPLEMENTATION

SEC. 201. PROVISIONS TO IMPLEMENT THE PATENT LAW TREATY.

    (a) Application Filing Date.--Section 111 of title 35, United 
States Code, is amended--
            (1) in subsection (a), by striking paragraphs (3) and (4) 
        and inserting the following:
            ``(3) Fee, oath or declaration, and claims.--The 
        application shall be accompanied by the fee required by law. 
        The fee, oath or declaration, and 1 or more claims may be 
        submitted after the filing date of the application, within such 
        period and under such conditions, including the payment of a 
        surcharge, as may be prescribed by the Director. Upon failure 
        to submit the fee, oath or declaration, and 1 or more claims 
        within such prescribed period, the application shall be 
        regarded as abandoned.
            ``(4) Filing date.--The filing date of an application shall 
        be the date on which a specification, with or without claims, 
        is received in the United States Patent and Trademark 
        Office.'';
            (2) in subsection (b), by striking paragraphs (3) and (4) 
        and inserting the following:
            ``(3) Fee.--The application shall be accompanied by the fee 
        required by law. The fee may be submitted after the filing date 
        of the application, within such period and under such 
        conditions, including the payment of a surcharge, as may be 
        prescribed by the Director. Upon failure to submit the fee 
        within such prescribed period, the application shall be 
        regarded as abandoned.
            ``(4) Filing date.--The filing date of a provisional 
        application shall be the date on which a specification, with or 
        without claims, is received in the United States Patent and 
        Trademark Office.''; and
            (3) by adding at the end the following:
    ``(c) Prior Filed Application.--Notwithstanding the provisions of 
subsection (a), the Director may prescribe the conditions, including 
the payment of a surcharge, under which a reference made upon the 
filing of an application under subsection (a) to a previously filed 
application, specifying the previously filed application by application 
number and the intellectual property authority or country in which the 
application was filed, shall constitute the specification and any 
drawings of the subsequent application for purposes of a filing date. A 
copy of the specification and any drawings of the previously filed 
application shall be submitted within such period and under such 
conditions as may be prescribed by the Director. A failure to submit 
the copy of the specification and any drawings of the previously filed 
application within the prescribed period shall result in the 
application being regarded as abandoned. Such application shall be 
treated as having never been filed, unless--
            ``(1) the application is revived under section 27; and
            ``(2) a copy of the specification and any drawings of the 
        previously filed application are submitted to the Director.''.
    (b) Relief in Respect of Time Limits and Reinstatement of Rights.--
            (1) In general.--Chapter 2 of title 35, United States Code, 
        is amended by adding at the end the following:
``Sec. 27. Revival of applications; reinstatement of reexamination 
              proceedings
    ``The Director may establish procedures, including the requirement 
for payment of the fee specified in section 41(a)(7), to revive an 
unintentionally abandoned application for patent, accept an 
unintentionally delayed payment of the fee for issuing each patent, or 
accept an unintentionally delayed response by the patent owner in a 
reexamination proceeding, upon petition by the applicant for patent or 
patent owner.''.
            (2) Conforming amendment.--The table of sections for 
        chapter 2 of title 35, United States Code, is amended by adding 
        at the end the following:

``27. Revival of applications; reinstatement of reexamination 
                            proceedings.''.
    (c) Restoration of Priority Right.--Title 35, United States Code, 
is amended--
            (1) in section 119--
                    (A) in subsection (a)--
                            (i) by striking ``twelve'' and inserting 
                        ``12''; and
                            (ii) by adding at the end the following: 
                        ``The Director may prescribe regulations, 
                        including the requirement for payment of the 
                        fee specified in section 41(a)(7), pursuant to 
                        which the 12-month period set forth in this 
                        subsection may be extended by an additional 2 
                        months if the delay in filing the application 
                        in this country within the 12-month period was 
                        unintentional.''; and
                    (B) in subsection (e)--
                            (i) in paragraph (1)--
                                    (I) by inserting after the first 
                                sentence the following: ``The Director 
                                may prescribe regulations, including 
                                the requirement for payment of the fee 
                                specified in section 41(a)(7), pursuant 
                                to which the 12-month period set forth 
                                in this subsection may be extended by 
                                an additional 2 months if the delay in 
                                filing the application under section 
                                111(a) or section 363 within the 12-
                                month period was unintentional.''; and
                                    (II) in the last sentence--
                                            (aa) by striking 
                                        ``including the payment of a 
                                        surcharge'' and inserting 
                                        ``including the payment of the 
                                        fee specified in section 
                                        41(a)(7)''; and
                                            (bb) by striking ``during 
                                        the pendency of the 
                                        application''; and
                            (ii) in paragraph (3), by adding at the end 
                        the following: ``For an application for patent 
                        filed under section 363 in a Receiving Office 
                        other than the Patent and Trademark Office, the 
                        12-month and additional 2-month period set 
                        forth in this subsection shall be extended as 
                        provided under the treaty and Regulations as 
                        defined in section 351.''; and
            (2) in section 365(b), by adding at the end the following: 
        ``The Director may establish procedures, including the 
        requirement for payment of the fee specified in section 
        41(a)(7), to accept an unintentionally delayed claim for 
        priority under the treaty and the Regulations, and to accept a 
        priority claim that pertains to an application that was not 
        filed within the priority period specified in the treaty and 
        Regulations, but was filed within the additional 2-month period 
        specified under section 119(a) or the treaty and 
        Regulations.''.
    (d) Recordation of Ownership Interests.--Section 261 of title 35, 
United States Code, is amended--
            (1) in the first undesignated paragraph by adding at the 
        end the following: ``The Patent and Trademark Office shall 
        maintain a register of interests in patents and applications 
        for patents and shall record any document related thereto upon 
        request, and may require a fee therefor.''; and
            (2) in the fourth undesignated paragraph by striking ``An 
        assignment'' and inserting ``An interest that constitutes an 
        assignment''.

SEC. 202. CONFORMING AMENDMENTS.

    (a) In General.--Section 171 of title 35, United States Code, is 
amended--
            (1) by striking ``Whoever'' and inserting ``(a) In 
        General.--Whoever'';
            (2) by striking ``The provisions'' and inserting ``(b) 
        Applicability of This Title.--The provisions''; and
            (3) by adding at the end the following:
    ``(c) Filing Date.--The filing date of an application for patent 
for design shall be the date on which the specification as prescribed 
by section 112 and any required drawings are filed.''.
    (b) Relief in Respect of Time Limits and Reinstatement of Right.--
Title 35, United States Code, is amended--
            (1) in section 41--
                    (A) in subsection (a), by striking paragraph (7) 
                and inserting the following:
            ``(7) Revival fees.--On filing each petition for the 
        revival of an abandoned application for a patent, for the 
        delayed payment of the fee for issuing each patent, for the 
        delayed response by the patent owner in any reexamination 
        proceeding, for the delayed payment of the fee for maintaining 
        a patent in force, for the delayed submission of a priority or 
        benefit claim, or for the extension of the 12-month period for 
        filing a subsequent application, $1,700.00. The Director may 
        refund any part of the fee specified in this paragraph, in 
        exceptional circumstances as determined by the Director''; and
                    (B) in subsection (c), by striking paragraph (1) 
                and inserting the following:
            ``(1) Acceptance.--The Director may accept the payment of 
        any maintenance fee required by subsection (b) after the 6-
        month grace period if the delay is shown to the satisfaction of 
        the Director to have been unintentional. The Director may 
        require the payment of the fee specified in subsection (a)(7) 
        as a condition of accepting payment of any maintenance fee 
        after the 6-month grace period. If the Director accepts payment 
        of a maintenance fee after the 6-month grace period, the patent 
        shall be considered as not having expired at the end of the 
        grace period.'';
            (2) in section 119(b)(2), in the second sentence, by 
        striking ``including the payment of a surcharge'' and inserting 
        ``including the requirement for payment of the fee specified in 
        section 41(a)(7)'';
            (3) in section 120, in the fourth sentence, by striking 
        ``including the payment of a surcharge'' and inserting 
        ``including the requirement for payment of the fee specified in 
        section 41(a)(7)'';
            (4) in section 122(b)(2)(B)(iii), in the second sentence, 
        by striking ``, unless it is shown'' and all that follows 
        through ``unintentional'';
            (5) in section 133, by striking ``, unless it be shown'' 
        and all that follows through ``unavoidable'';
            (6) by striking section 151 and inserting the following:
``Sec. 151. Issue of patent
    ``(a) In General.--If it appears that an applicant is entitled to a 
patent under the law, a written notice of allowance of the application 
shall be given or mailed to the applicant. The notice shall specify a 
sum, constituting the issue fee and any required publication fee, which 
shall be paid within 3 months thereafter.
    ``(b) Effect of Payment.--Upon payment of this sum the patent may 
issue, but if payment is not timely made, the application shall be 
regarded as abandoned.'';
            (7) in section 361, by striking subsection (c) and 
        inserting the following:
    ``(c) International applications filed in the Patent and Trademark 
Office shall be filed in the English language, or an English 
translation shall be filed within such later time as may be fixed by 
the Director.'';
            (8) in section 364, by striking subsection (b) and 
        inserting the following:
    ``(b) An applicant's failure to act within prescribed time limits 
in connection with requirements pertaining to an international 
application may be excused as provided in the treaty and the 
Regulations.''; and
            (9) in section 371(d), in the third sentence, by striking 
        ``, unless it be shown to the satisfaction of the Director that 
        such failure to comply was unavoidable''.

SEC. 203. EFFECTIVE DATE.

    (a) In General.--The amendments made by this title--
            (1) shall take effect on the date that is 1 year after the 
        date of the enactment of this Act; and
            (2) shall apply to--
                    (A) any patent issued before, on, or after the 
                effective date set forth in paragraph (1); and
                    (B) any application for patent that is pending on 
                or filed after the effective date set forth in 
                paragraph (1).
    (b) Exceptions.--
            (1) Section 201(a).--The amendments made by section 201(a) 
        shall apply only to applications that are filed on or after the 
        effective date set forth in subsection (a)(1).
            (2) Patents in litigation.--The amendments made by this 
        title shall have no effect with respect to any patent that is 
        the subject of litigation in an action commenced before the 
        effective date set forth in subsection (a)(1).

            Passed the Senate September 22 (legislative day, September 
      21), 2012.

            Attest:

                                                             Secretary.
112th CONGRESS

  2d Session

                                S. 3486

_______________________________________________________________________

                                 AN ACT

 To implement the provisions of the Hague Agreement and the Patent Law 
                                Treaty.