[Federal Register Volume 66, Number 161 (Monday, August 20, 2001)]
[Notices]
[Pages 43575-43578]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-20916]


-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No. 010731195-1195-01]
RIN 0651-AB25


Notice of Hearing and Request for Comments on Draft Convention on 
Jurisdiction and Foreign Judgments in Civil and Commercial Matters

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of Hearing and Request for Comments.

-----------------------------------------------------------------------

SUMMARY: The Hague Conference on Private International Law is 
negotiating a Convention designed to create common jurisdiction rules 
for international civil and commercial cases and to provide for 
international recognition and enforcement of judgments issued under 
these rules. The United States Patent and Trademark Office (USPTO) is 
seeking views of the public on recent developments on this effort. 
Interested members of the public are invited to testify at a hearing to 
be held September 11, 2001, and to present written comments on any of 
the topics outlined in the supplementary information section of this 
notice or otherwise related to the proposed Convention.

DATES: A public hearing will be held on September 11, 2001, starting at 
9:30 a.m. and ending no later than 5:00 p.m. Those wishing to testify 
must request an opportunity to do so no later than August 31, 2001. 
Speakers may provide a written copy of their testimony for inclusion in 
the record. Written comments should be submitted on or before October 
19, 2001.

ADDRESSES: The September 11 hearing will be held in the Patent Theater 
located on the Second Floor of Crystal Park 2, 2121 Crystal Drive, 
Arlington, Virginia. Persons interested in testifying should send their 
request to Director of the United States Patent and Trademark Office, 
Box 4, United States Patent and Trademark Office, Washington, DC 20231, 
marked to the attention of Anggie Reilly. Requests may also be 
submitted by facsimile transmission to (703) 305-8885 or by electronic 
mail through the Internet to [email protected].
    Persons interested in submitting written comments should send their 
comments to Director of the United States Patent and Trademark Office, 
Box 4, United States Patent and Trademark Office, Washington, DC 20231, 
marked to the attention of Velica Steadman. Comments may also be 
submitted by facsimile transmission to (703) 305-8885 or by electronic 
mail through the Internet to [email protected]. All comments 
will be maintained for public inspection in Room 902 of Crystal Park 2, 
2121 Crystal Drive, Arlington, Virginia. Written comments in electronic 
form will be made available via the USPTO's World Wide Web site at 
http://www.uspto.gov.

FOR FURTHER INFORMATION CONTACT: Jennifer Lucas by telephone at (703) 
305-9300, by facsimile at (703) 305-

[[Page 43576]]

8885; by electronic mail at [email protected]; or by mail marked 
to the attention of Jennifer Lucas, Attorney-Advisor, addressed to 
Director of the United States Patent and Trademark Office, Box 4, 
Washington, DC 20231.

SUPPLEMENTARY INFORMATION

Background

    The Hague Conference on Private International Law is negotiating a 
Convention on jurisdiction and the recognition and enforcement of 
foreign judgments in civil and commercial matters. The proposed 
Convention on Jurisdiction and Foreign Judgments in Civil and 
Commercial Matters would create jurisdictional rules governing 
international lawsuits and provide for recognition and enforcement of 
judgments by the courts of Contracting States. Contracting States would 
be required to recognize and enforce judgments covered by the 
Convention if the jurisdiction in the court rendering the judgment was 
founded on one of the bases of jurisdiction required by the Convention. 
In addition, some existing domestic bases of jurisdiction would be 
prohibited by the Convention for cases covered thereby.
    The negotiations began in 1992, based on a proposal made by the 
United States. The impetus behind the request was to gain recognition 
and enforcement of U.S. judgments in other countries. While U.S. 
Federal courts generally will recognize and enforce judgments from 
other countries under state law (see Hilton v. Guyot, 159 U.S. 113 
(1895)), U.S. judgments do not always receive the same treatment 
abroad. In October 1999, the Hague Conference published a draft 
Convention that was to be finalized at a Diplomatic Conference 
scheduled for October 2000, but in May 2000 that Diplomatic Conference 
was postponed to give member countries more time to discuss unsettled 
issues.
    Two particular topics that the Hague Conference has singled out for 
further discussion are intellectual property and electronic commerce. 
Recognizing the importance of concerns that had been raised about the 
impact of the Convention on these matters, in 1999 the Conference 
agreed to hold informal meetings of international experts to examine 
the relevant issues in those categories. Two meetings of experts on 
electronic commerce were held to discuss the effect that electronic 
commerce might have on traditional jurisdictional rules. In addition, a 
meeting of intellectual property experts was held in February 2001 in 
Geneva, Switzerland.
    On October 17, 2000, the USPTO published a Request for Comments 
seeking views on the impact that the October 1999 draft of the proposed 
Convention would have on intellectual property-related litigation (65 
FR 61306 (2000)). The responses to the Request for Comments are 
available at the USPTO's Web site at http://www.uspto.gov.
    The responses indicated that, while uniform rules on jurisdiction 
and enforcement of judgments might be welcome in the abstract, the 
problems with the jurisdictional provisions in the October 1999 draft 
outweighed any benefits that the enforcement provisions would offer. 
One of the primary flaws asserted about the October 1999 draft was that 
international developments such as the advent of the Internet and e-
commerce have called into question some of the jurisdictional rules 
that serve as the basis for the proposed Convention.
    After postponing the October 2000 Diplomatic Conference, the Hague 
Conference scheduled a two-part Diplomatic Conference, with meetings to 
be held in June 2001 and early 2002.
    The first session was held June 6-22, 2001, in The Hague, 
Netherlands. The goal of the Diplomatic Conference was to draft a new, 
consensus-based text to replace the October 1999 draft. The result was 
a long compilation text that captures consensus where it exists, and 
presents proposals, variants, and options on issues where there was no 
consensus. The text also is heavily footnoted to illuminate additional 
points. This text is lengthy and makes it clear that there are a 
considerable number of large and small issues, including those 
involving intellectual property, on which Members are not in agreement 
and on which much work is still necessary. The text of the proposed 
Convention and other documents relating to the proposal are available 
via the Hague Conference's Web site at http://www.hcch.net/e/workprog/jdgm.html.
    At the end of the Diplomatic Conference, the delegates were unable 
to decide how to move the negotiations forward. They agreed to 
reconvene, probably in late January 2002, to decide the scope of future 
negotiations--whether to continue the full project, refocus or scale it 
back in some way, or suspend it--and the schedule for any future 
negotiations based on the decision made.

Brief Summary of Draft Convention

    As it stands, the draft Convention would create three categories of 
jurisdiction for cases covered by the Convention: (1) Required bases 
for jurisdiction, or, as they are referred to by the Hague Conference, 
the ``white list''; (2) prohibited bases for jurisdiction, or the 
``black list''; and (3) everything else not covered by the white or 
black lists, or the ``gray list.'' The draft Convention would, with 
some exceptions, apply whenever any one party to litigation is not 
habitually resident in the country where the litigation is brought (see 
Article 2 of the draft).
    The ``white list'' sets out jurisdictional rules for specific types 
of actions, such as contract and tort actions or disputes filed in the 
court of the defendant's ``habitual residence.'' If a court exercises 
jurisdiction in accordance with the rules set out in the white list, 
courts in other Contracting States must recognize and enforce the 
resulting judgment, with limited exceptions.
    Another example of a white list ground of jurisdiction is found in 
proposed Article 12, which would create exclusive jurisdiction over 
specified patent and trademark disputes. The draft presents two options 
for how to treat patents, trademarks, and potentially other types of 
industrial property. The main difference between the two is the fact 
that the first option provides for exclusive jurisdiction over patent 
and trademark infringement actions while the second option does not.
    The first option creates exclusive jurisdiction for disputes over 
the grant, registration, validity, abandonment, revocation, or 
infringement of a patent or trademark in the country of registration 
or, for unregistered marks, the country in which the rights arose. The 
second option would create exclusive jurisdiction for disputes over the 
grant, registration, validity, abandonment, or revocation of a patent 
or trademark; however, it would allow courts referred to in any of the 
other white list provisions also to exercise jurisdiction over patent 
or trademark infringement actions.
    Three additional provisions in Article 12 related to patent or 
trademark disputes are in brackets with footnotes for further 
consideration. First, the draft provides for an exception to exclusive 
jurisdiction for incidental questions, which are defined as when ``the 
court is not requested to give a judgment on that matter, even if a 
ruling on it is a necessary step in the reasoning that leads to the 
judgment.'' For example, in some court proceedings, such as a breach of 
contract or a legal malpractice proceeding, the grant, registration, 
validity, abandonment, revocation or infringement of a patent or mark 
might

[[Page 43577]]

arise as an incidental question to the main complaint. Proposed Article 
12(6) would allow a court that otherwise would have no jurisdiction 
over an industrial property question to decide that question as a 
factual determination in the underlying case. Such a ruling would have 
no binding effect in subsequent proceedings regarding the subject 
patent or trademark, even between the same parties.
    Second, it has been suggested in proposed Article 12(7) that other 
intellectual property rights, such as plant breeders rights and 
industrial designs but excluding copyrights or neighboring rights, be 
covered. Finally, as seen in proposed Article 12(8), the draft 
questions whether the term ``court'' should include a Patent Office or 
similar agency for the purpose of recognizing their judgments.
    Proceedings related to copyrights could fall under any of the white 
list grounds of jurisdiction. For instance, copyright infringement 
proceedings could be covered by the jurisdiction rules for tort actions 
found in Article 10. Article 10 provides for jurisdiction either in the 
State in which the act or omission occurred, or the State in which the 
injury arose so long as the injury in that State was reasonably 
foreseeable. A proposal, however, was made at the Diplomatic Conference 
that would have included copyright infringement in the exclusive 
jurisdiction provision. That issue is still open for discussion.
    Proposed Article 13 consists of two alternatives that would create 
a white list ground of jurisdiction for provisional and protective 
measure orders under enumerated circumstances. It has been proposed, 
however, that provisional and protective measures either be excluded 
from the scope of the proposal (Article 1) or be included in the gray 
area (Article 17).
    Other areas of particular interest to intellectual property holders 
and users are proposed provisions that would create white list 
jurisdiction for choice of court clauses in contracts (Article 4), 
contracts (Article 6), consumer contracts (Article 7) and employment 
contracts (Article 8).
    The ``black list,'' currently Article 18, defines grounds of 
jurisdiction that are prohibited in Contracting States for cases 
covered by the Convention. Article 18(1) would place a general 
limitation on the exercise of jurisdiction based on the absence of a 
``substantial connection between that State and the dispute.'' Article 
18(2)(e) is of particular interest to U.S. litigants. It states that 
jurisdiction cannot be based solely on the fact that a defendant 
carries on commercial or other activities in that State, except where 
the dispute is directly related to those activities. This provision 
would prohibit the exercise of general ``doing business'' jurisdiction 
as currently recognized under U.S. law. Article 18(2) also would 
prohibit the exercise of ``tag'' jurisdiction in a court based on 
service upon the defendant in the State.
    Everything that does not fall under either of these categories is 
included in the ``gray area'' as defined in Article 17. Countries can 
continue to act as they normally do under their respective national 
laws; however, judgments resulting from actions covered by this 
provision would not get the benefits of recognition and enforcement 
under the Convention.
    The second half of the Convention provides rules governing the 
recognition and enforcement of judgments based on a ground of 
jurisdiction provided for in the white list (Articles 3-16). This 
includes provisions on topics such as dismissal in favor of a 
previously filed action in another court (known as ``lis pendens'') 
(Article 21), forum non conveniens (Article 22), types of judgments to 
be recognized or enforced (Article 25), grounds for refusal of 
recognition (Article 28), and damages (Article 33).

Issues for Public Comment

    The USPTO wants to assess support for or opposition to the effort 
to negotiate a convention on jurisdiction and enforcement of judgments 
and to obtain comments and suggestions on the proposed Convention as it 
relates to intellectual property. Interested members of the public are 
invited to present oral or written comments on any issues they believe 
to be relevant to protection of intellectual property or any aspect of 
the proposed Convention as it relates to intellectual property. The 
USPTO reserves the right to limit the number of oral comments presented 
if necessary due to time constraints at the hearing, but will accept 
and consider all written comments submitted. Comments also are welcome 
on the following specific issues:
    1. What are your experiences in having judgments involving 
intellectual property from one jurisdiction recognized in a foreign 
court? Have you had different experiences in having those judgments 
recognized in U.S. courts? In your response, please identify whether 
you generally represent intellectual property owners, licensees, users, 
or others.
    2. Are uniform rules for international enforcement of judgments 
desirable?
    3. Would the elimination of ``tag'' or general ``doing business'' 
jurisdiction have any impact on intellectual property owners' ability 
to protect their rights either domestically or internationally?
    4. What effect, if any, could this Convention have on an owner's 
ability to enforce its intellectual property rights for uses over the 
Internet?
    5. Is exclusive white list jurisdiction needed for infringement 
actions involving patents, trademarks, and/or copyrights?
    6. Should non-exclusive white list jurisdiction apply, per proposed 
Article 12(6), to matters that otherwise would be covered by Article 12 
when they arise as incidental questions in proceedings that do not have 
as their object the grant, registration, abandonment, revocation or 
infringement of a patent or trademark?
    7. If you responded yes to Question 6, should the court's decision 
regarding the incidental question have preclusive effect in a court of 
other Contracting States? What about courts in the same Contracting 
State?
    8. What other registered intellectual property, if any, should be 
subject to the exclusive jurisdiction provisions?
    9. What other unregistered intellectual property, if any, should be 
subject to the exclusive jurisdiction provisions?
    10. How should other intellectual property or related actions, such 
as passing off, unfair competition, cybersquatting and dilution 
complaints, be treated under the Convention?
    11. Should provisional and protective measures be covered by the 
Convention, specifically excluded from the Convention, or left to 
current national law?
    12. Does the draft Convention affect in any way the substantive law 
that applies to an activity of any party with respect to intellectual 
property?
    13. How will the draft Convention provisions affect traditional 
contractual freedom for parties to enter into agreements that typically 
designate choice of forum and law?
    14. Should jurisdiction over actions involving intellectual 
property be included within the scope of the Convention? If no, please 
explain which types of intellectual property should be excluded and 
why.
    15. Please identify any other potential concerns or advantages 
raised by the draft Convention and ways it might be modified to achieve 
an identified objective.
    In your response, please include the following: (1) Clearly 
identify the matter being addressed; (2) Provide examples, where 
appropriate, of the matter being addressed; (3) Identify any relevant 
legal

[[Page 43578]]

authorities applicable to the matter being addressed; and (4) Provide 
suggestions regarding how the matter should be addressed by the United 
States.

    Dated: August 14, 2001.
Nicholas P. Godici,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 01-20916 Filed 8-17-01; 8:45 am]
BILLING CODE 3510-16-P