[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.''