[Congressional Bills 112th Congress]
[From the U.S. Government Publishing Office]
[S. 3486 Referred in House (RFH)]
112th CONGRESS
2d Session
S. 3486
_______________________________________________________________________
IN THE HOUSE OF REPRESENTATIVES
September 25, 2012
Referred to the Committee on the Judiciary
_______________________________________________________________________
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 Withdrawn or abandoned international design application.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:
NANCY ERICKSON,
Secretary.