[Congressional Record Volume 158, Number 117 (Thursday, August 2, 2012)]
[Senate]
[Pages S5980-S5983]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]
By Mr. LEAHY (for himself and Mr. Grassley):
S. 3486. A bill to implement the provisions of the Hague Agreement
and the Patent Law Treaty; to the Committee on the Judiciary.
Mr. LEAHY. Mr. President, I am pleased to introduce today legislation
that will help American businesses and inventors by reducing obstacles
for obtaining patent protection overseas. This bipartisan measure
implements two patent law treaties that were signed under President
Clinton and submitted for the Senate's advice and consent by President
George W. Bush. The Senate voted to ratify the treaties in 2007 without
a single Senator in dissent. With this implementing legislation,
Congress will complete its work so that the treaties at last can be
ratified and go into effect.
Our patent system plays a key role in encouraging innovation and
bringing new products to market. The discoveries made by American
inventors and research institutions, commercialized by our companies,
and protected and promoted by our patent laws, have made our system the
envy of the world. But in this global economy, it is not enough to have
an effective domestic patent system; we must also help American
inventors and businesses to protect their inventions and thrive in
markets around the world. Consistent with last year's landmark patent
reform legislation, the Leahy-Smith America Invents Act, this
legislation will benefit American inventors by implementing two
measures to reduce application barriers around the world.
The Hague Agreement Concerning International Registration of
Industrial Designs provides a simplified application system for U.S.
creators of industrial designs who, by filing a single standardized
application for a design patent at the U.S. Patent and Trademark
Office, can apply for design protection in each country that has
ratified the Treaty. American design patent applicants who previously
had to file separate applications in numerous countries may now file a
single, English-language application at the U.S. Patent Office,
reducing the costs and burdens of obtaining international protections.
The U.S. Patent Office may also receive applications that have been
filed internationally, but its substantive examination process remains
unchanged. The standard for obtaining a design patent is not affected.
By simplifying the process for American businesses to obtain design
patents overseas, the Hague Agreement will reduce barriers for small
and mid-size companies to expand into foreign markets.
The Patent Law Treaty also streamlines the process for American
businesses seeking patent protection overseas. It limits the
formalities different countries can require in patent applications,
which are often used to disadvantage American applications in foreign
jurisdictions. American businesses and inventors will benefit from
harmonized applications, reducing the cost of doing business and
encouraging U.S. innovators to protect and export their products
internationally.
In June, Director Kappos of the U.S. Patent and Trademark Office
testified before the Judiciary Committee about the important need for
this implementing legislation, stating that the treaties are ``pro-
American innovation, pro-global innovation, pro-jobs, pro-
opportunity.'' I agree. I urge the Senate to act quickly on this final
step so that the treaties can at last be ratified, and American
innovators and businesses can benefit from them as U.S. products
continue to thrive on the global stage.
Mr. President, I ask unanimous consent that the text of the bill be
printed in the Record.
There being no objection, the text of the bill was ordered to be
printed in the Record, as follows:
S. 3486
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''.
[[Page S5981]]
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 term `designation' means 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 indicated 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 of this title,
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 of
this title 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 of this title 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 of
this title, 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
application, presented in the number and manner prescribed in
the treaty and the Regulations;
``(5) an indication of the product or products which
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 of
this title may be treated as a design application under
chapter 16 of this title.
``(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
this part, of an application for patent filed in the Patent
and Trademark Office pursuant to chapter 16 of this title.
``Sec. 386. Right of priority
``(a) National Application.--In accordance with the
conditions and requirements of subsections (a) through (d) of
section 119 of this title and section 172 of this title, a
national application shall be entitled to the right of
priority based on a prior international design application
which designated at least one 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 of this title and section 172 of this title 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) of this title designating at least one country
other than the United States, or a prior international design
application designating at least one country other than the
United States.
``(c) Prior National Application.--In accordance with the
conditions and requirements of section 120 of this title, 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) of this title
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) of this title 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) of this title, as may be prescribed by the Director.
``Sec. 388. Withdrawn or abandoned international design
application
``Subject to sections 384 and 387 of this part, 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) of this part 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
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
[[Page S5982]]
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 of this title.
``(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 of
this title.
``Sec. 390. Publication of international design application
``The publication under the treaty defined in section
381(a)(1) 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 registration of
industrial designs.......................................401''.....
SEC. 102. CONFORMING AMENDMENTS.
Title 35, United States Code, is amended--
(1) in section 100(i)(1)(B), 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), 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), 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) of this title
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) of this title 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 ``withdrawl.'' 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) of this part, 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 be
effective on the later of--
(1) the date that is 1 year after the date of enactment of
this Act, or
(2) the date of entry into force of the treaty, as defined
in section 381 of title 35, as amended by this Act, 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 as defined in
section 351(c) of title 35, United States Code, 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).
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.--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
application being regarded as abandoned and treated as having
never been filed.''.
(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
``(a) In General.--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) Technical and 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), 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
foreign Receiving Office, the 12-month and additional 2 month
[[Page S5983]]
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 where such priority claim 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 applications for patents
and 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 by adding at the end the following:
``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 subsection (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 paragraph (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
``If it appears that 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.
``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.--Except as provided in subsection (b), the
amendments made by this title shall be effective on the date
that is 1 year after the date of enactment of this Act and
shall apply to all patents and to all applications for patent
pending on or filed after the date that is 1 year after the
date of enactment of this Act.
(b) Exceptions.--
(1) Section 201(a).--The amendments made by section 201(a)
shall apply only to applications filed on or after the date
that is 1 year after the date of enactment of this Act.
(2) Patent that is subject of 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 date that is 1 year after the date of
enactment of this Act.
______