[Congressional Record Volume 158, Number 129 (Friday, September 21, 2012)]
[Senate]
[Pages S6667-S6670]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]
PATENT LAW TREATIES IMPLEMENTATION ACT OF 2012
Mr. PRYOR. Mr. President, I ask unanimous consent that the Senate
proceed to the consideration of Calendar No. 532, S. 3486.
The PRESIDING OFFICER. The clerk will report the bill by title.
The legislative clerk read as follows:
A bill (S. 3486) to implement the provisions of the Hague
Agreement and the Patent Law Treaty.
There being no objection, the Senate proceeded to consider the bill
which had been reported from the Committee on the Judiciary, with an
amendment to strike all after the enacting clause and insert in lieu
thereof the following:
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 Withdrawn or abandoned international design application.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;
[[Page S6668]]
``(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 registration of
industrial designs.......................................401''.....
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)'';
[[Page S6669]]
(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
[[Page S6670]]
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).
Mr. PRYOR. Mr. President, I ask unanimous consent that the committee-
reported amendment be agreed to, the bill, as amended, be read a third
time and passed, the motion to reconsider be laid upon the table, with
no intervening action or debate, and any statements related to the bill
be printed in the Record.
The PRESIDING OFFICER. Without objection, it is so ordered.
The committee-reported amendment in the nature of a substitute was
agreed to.
The bill (S. 3486), as amended, was ordered to be engrossed for a
third reading, was read the third time, and passed.
____________________