    [Senate Treaty Document 109-21]
    [From the U.S. Government Publishing Office]

    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

    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.''