[Federal Register Volume 81, Number 223 (Friday, November 18, 2016)]
[Notices]
[Pages 81741-81744]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-27799]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2016-0046]
Request for Comments and Notice of Public Meeting on a
Preliminary Draft Convention on the Recognition and Enforcement of
Foreign Judgments Currently Being Negotiated at The Hague Conference on
Private International Law
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice of public meeting; request for comments.
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SUMMARY: The Hague Conference on Private International Law (``The Hague
Conference''), an international organization in the Netherlands, is
sponsoring negotiations for a convention on the recognition and
enforcement of foreign judgments in civil and commercial matters. In
February 2016, the Council on General Affairs and Policy of The Hague
Conference created a Special Commission on the Recognition and
Enforcement of Foreign Judgments (``the Special Commission'') to
prepare a preliminary draft text of the convention, which is subject to
a formal diplomatic negotiation open to member States of The Hague
Conference. At its first session in June 2016, the Special Commission
produced a Preliminary Draft Convention that contains general and
specific provisions that would apply to the recognition and enforcement
of judgments arising from transnational intellectual property disputes.
The United States Patent and Trademark Office (USPTO) seeks public
comments on the June 2016 Preliminary Draft Convention (the
``Preliminary
[[Page 81742]]
Draft'') as it relates to intellectual property matters.
To assist the USPTO in determining the best way to address this
topic, the USPTO will host a public meeting to obtain public input. The
meeting will be open to the public and will provide a forum for
discussion of the questions identified in this notice. Written comments
in response to the questions set forth in this notice also are
requested.
DATES: The public meeting will be held on January 12, 2017, beginning
at 1:00 p.m. Eastern Standard Time (EST) and ending at 4:00 p.m. EST.
Public Meeting Registration Deadline: Registration to attend the
public meeting in person or via webcast is required by January 5, 2017.
Additionally, requests to participate in the public meeting as a
speaker must be submitted in writing no later than December 29, 2016.
See the ``Event Registration Information'' section of this notice for
additional details on how to register and how to request to present as
a speaker.
Written Comments: Written comments must be received on or before
January 9, 2017.
ADDRESSES:
Event Address: The public meeting will be held in the USPTO
Headquarters, Global Intellectual Property Academy (GIPA), Madison
Building (East), Second Floor, 600 Dulany Street, Alexandria, Virginia
22314.
Written Comments: Interested parties are encouraged to file written
comments electronically by email to [email protected].
Comments submitted by email should be machine-searchable and should not
be copy-protected. Written comments also may be submitted by mail to
the Office of Policy and International Affairs, United States Patent
and Trademark Office, Mail Stop International Affairs, P.O. Box 1450,
Alexandria, Virginia 22313-1450. Responders should include the name of
the person or organization filing the comment, as well as a page
number, on each page of their submissions. Paper submissions should
also include a CD or DVD containing the submission in MS Word[supreg],
WordPerfect[supreg], or pdf format. CDs or DVDs should be labeled with
the name and organizational affiliation of the filer, and the name of
the word processing program used to create the document. All personally
identifiable information (for example, name, address, etc.) voluntarily
submitted by the commenter may be publicly accessible. Do not submit
confidential business information or otherwise sensitive or protected
information. The USPTO will accept anonymous written comments (enter
``N/A'' in the required fields if you wish to remain anonymous).
All comments received are part of the public record and will be
available for public inspection without change via the USPTO's Web site
at www.uspto.gov/learning-and-resources/ip-policy/hague-conference-private-international-law and at the Office of the Director, Policy and
International Affairs, located in Madison West, Tenth Floor, 600 Dulany
Street, Alexandria, Virginia 22314, upon request. Because comments will
be available for public inspection, information that is not desired to
be made public, such as name, an address or phone number, etc., should
not be included in the written comments.
FOR FURTHER INFORMATION CONTACT: Requests for additional information
should be directed to the attention of Michael Shapiro, Senior Counsel,
Office of Policy and International Affairs, USPTO, by telephone at 571-
272-9300, or by email to [email protected].
SUPPLEMENTARY INFORMATION:
Background
The Hague Conference is sponsoring negotiations for a convention on
the recognition and enforcement of foreign judgments. Following
preparatory work on the draft convention by a Working Group beginning
in 2012, in February 2016, the Council on General Affairs and Policy of
The Hague Conference established a Special Commission to prepare a
preliminary draft convention on the recognition and enforcement of
foreign judgments in civil and commercial matters. The first meeting of
the Special Commission took place June 1-9, 2016, at The Hague,
Netherlands. The second meeting of the Special Commission is scheduled
to take place February 16-24, 2017, at The Hague. The text of the
Preliminary Draft produced at the first session of the Special
Commission, along with other documents relating to the convention is
available at: https://www.hcch.net/en/projects/legislative-projects/judgments/special-commission1.
Brief Summary of the Draft Convention
The Preliminary Draft currently contains 16 articles organized into
two chapters. Chapter I (Articles 1-3) sets forth the scope and
definitions for the draft treaty. Chapter II (Articles 4-16) sets forth
the basic rules governing the recognition and enforcement of judgments
under the treaty.
Scope, Exclusions From Scope, and Definitions
The Preliminary Draft applies to the recognition and enforcement of
judgments in a Contracting State of judgments relating to civil or
commercial matters in another Contracting State (Article 1). The term
``judgment'' means any decision on the merits, including determinations
of costs or expenses related to such decisions (Article 3). Judgments
related to revenue, customs, and administrative matters are excluded
from the scope of the Convention (Article 1) as well as more specific
subject matter such as family law matters, wills and succession, and
insolvency, but judgments related to intellectual property matters
(Article 2) are not excluded.
Bases for Recognition and Enforcement
The Preliminary Draft requires that a judgment of a court in a
Contracting State (the ``State of origin'') be recognized and enforced
in another Contracting State (the ``requested State'') without
reviewing its merits (Article 4). Recognition and enforcement, however,
may be refused but only under the grounds set forth in the treaty. The
Preliminary Draft sets forth the bases for recognition and enforcement
of judgments (Article 5).
Of particular importance to the intellectual property community are
paragraphs 5(1)(k) and 5(1)(l), which set forth the bases for the
recognition and enforcement of judgments for infringements of a patent,
trademark, design, or other similar right, and judgments on the
validity or infringement of a copyright or a related right,
respectively. It should also be noted (subject to Article 6, discussed
below), a judgment in such an infringement case might also be
enforceable if one of the other bases for recognition and enforcement
of the judgment set forth in Article 5 exists (for example, the person
against whom recognition or enforcement is sought brought the claim on
which the judgment is based) applies.
Exclusive Bases for Recognition and Enforcement
Notwithstanding Article 5, a judgment on the registration or
validity of patents, trademarks, designs, or other similar rights that
are required to be deposited or registered is eligible for recognition
and enforcement in a requested State ``if and only if'' the State of
origin is the State where the deposit or registration took place, or is
deemed to have taken place under an international or regional
[[Page 81743]]
instrument (Article 6). Judgments on the validity of copyrights or
related rights, however, are not subject to the exclusive jurisdiction
rule in Article 6. The Preliminary Draft also lists several bases on
which a court of a Contracting State may refuse to recognize and
enforce foreign judgments (Article 7).
Preliminary Questions
The Preliminary Draft bars the recognition and enforcement of
rulings on the registration or validity of patents, trademarks, and
designs, or other similar rights that arose as a preliminary question
in courts other than those with exclusive jurisdiction under Article 6
(Article 8(1)). The Explanatory Note Providing Background on the
Proposed Draft Text and Identifying Outstanding Issues (Prel. Doc. No.
2) provides the following example of a preliminary question: a ruling
on the validity of a patent raised as a defense to an infringement
claim (Prel. Doc. No. 2, para. 111). In such instances, however, a
court may refuse or postpone the recognition or enforcement of a ruling
on validity only (1) where the ruling is inconsistent with a judgment
or a decision of a competent authority on the matter or (2) where the
proceedings on validity took place in the State with exclusive
jurisdiction under Article 6 (Article 8(3)). A court may refuse to
recognize a judgment ``if, and to the extent that, it was based on'' a
ruling on registration or validity as a preliminary question by in
courts other than those with exclusive jurisdiction under Article 6.
Damages and Other Remedies
The Preliminary Draft allows the court of the requested State to
refuse recognition and enforcement of judgment awarding damages if and
to the extent that those damages (including exemplary or punitive
damages) do not compensate a party for actual loss or harm suffered
(Article 9). The Preliminary Draft does not expressly address
enforcement of judgments for injunctive relief. However, the
Explanatory on the Preliminary Draft notes, without expressly
mentioning injunctive relief, that ``non-money judgments have been
included in the scope of the Proposed Draft Text'' (Prel. Doc. No 2,
para. 52).
Questions Posed
The USPTO is seeking comments on the Preliminary Draft as it
relates to intellectual property. Interested members of the public are
invited to present 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. Comments
also are invited on any or all of the questions listed below.
As used in the Preliminary Draft, the term ``intellectual property
rights'' includes patents, trademarks, designs, and copyrights or
related rights. If your response does not apply to all of these
intellectual property rights, please state the specific intellectual
property right, or rights, to which your response applies. Other
intellectual property rights that are outside the scope of the current
text of the Preliminary Draft, such as trade secrets, are identified
separately in this notice where appropriate.
With respect to these and any other issues raised by the
Preliminary Draft, in your responses, please: (1) Clearly identify the
matter being addressed; (2) provide examples where appropriate; (3)
identify any relevant legal authorities to support your comment; (4)
indicate approaches and provisions that are unacceptable; and (5)
express preferences for approaches, effective solutions to specific
challenges, and drafting recommendations to address the matter being
addressed.
1. What are your experiences in having U.S. judgments involving
intellectual property matters recognized and enforced in foreign
courts?
2. What are the benefits, if any, of increasing the recognition and
enforcement of U.S. judgments involving intellectual property matters
in foreign courts through joining a multilateral treaty?
3. What are your experiences in having foreign judgments recognized
in U.S. courts, including on the basis of comity or under state
statutes?
4. What are the risks, if any, of increasing the recognition and
enforcement of foreign judgments involving intellectual property
matters by U.S. courts through joining a multilateral treaty?
5. Are uniform rules for international enforcement of intellectual
property judgments desirable?
6. What impact, if any, would the territorial nature of
intellectual property rights have on enforcing rights across borders?
7. What impact, if any, would differences in procedural practices
across borders have on enforcing intellectual property rights across
borders?
8. What impact, if any, would differences in substantive law have
on enforcing intellectual property rights across borders?
9. Would this convention have any disproportionate effects on a
particular technology sector? If so, which ones and how?
10. Please identity problems that could occur from recognizing or
enforcing judgments rendered on intellectual property matters in other
Contracting States that have policies or laws that are inconsistent
with U.S. intellectual property laws and policies.
11. Please identify any challenges with respect to enforcement in
foreign courts of U.S. judgments, or in U.S. courts of foreign
judgments, involving intellectual property matters.
12. How often are U.S. nationals also foreign intellectual property
owners who would then be able to use this Convention to have judgments
they obtain in foreign courts enforced by U.S. courts? Would that be
useful for U.S. nationals?
13. What changes, if any, to U.S. law would be needed to implement
the proposed convention? Please identify any drawbacks and/or
advantages to such changes.
14. What effect, if any, would the Preliminary Draft have on the
enforcement of intellectual property rights in the digital environment?
In particular, should the language in the Preliminary Draft be revised
to take into account issues that arise in connection with infringement
and enforcement of intellectual property rights on the Internet?
Exclusions From Scope
15. Should judgments on the validity and/or the infringements of
intellectual property rights, other than copyright and related rights,
be excluded from the scope of the treaty under Article 2(2)? Please
identify the specific intellectual property right at issue and the
specific concerns, if any, raised by including it within the scope of
this convention?
16. Should judgments on the validity, ownership, subsistence, and/
or the infringement of copyright and related rights be excluded from
the scope of the treaty under Article 2(2)? Please state the specific
concerns, if any, raised by including copyrights or related rights
within the scope of this convention.
17. Should judgments on the validity or misappropriation and/or
theft of trade secrets be excluded from the scope of the treaty under
Article 2(2)? Please state the specific concerns, if any, raised by
including judgments on the validity or misappropriation and/or theft of
trade secrets within the scope of this convention.
Bases for Recognition and Enforcement
18. Should judgments on the infringement of intellectual property
rights, other than copyright and related
[[Page 81744]]
rights, be included as bases for recognition and enforcement in Article
5(1)(k)?
19. Should judgments on the infringements of plant breeders' rights
be included in Article 5(1)(k)?
20. Should judgments on the infringements of service marks, trade
dress, and geographical indications rights be expressly included in
Article 5(1)(k)?
21. Should judgments on the validity or infringement of
unregistered designs and trademarks be included in Article 5(1)(l)?
22. Should judgments on the validity or the misappropriation and/or
theft of trade secrets be included in Article 5(1)(l)?
23. Should the bracketed language in Article 5(1)(l) be included?
24. Should judgments on the validity, ownership, subsistence or
infringement of copyright or related rights be included in Article
5(1)(l) in cases where the right arose under the law of the State of
origin?
25. Should such judgments be included in Article 5(1)(l) where the
right did not arise under the law of the State of origin but where
another basis for jurisdiction set forth in Article 5 is satisfied?
Exclusive Jurisdiction
26. With respect to a judgment on the registration or validity of
patents, trademarks, designs, or other similar rights that are required
to be deposited, registered, or issued, the Preliminary Draft provides
for exclusive jurisdiction of the court in the State of origin where
the right issued or registration took place, or is deemed to have taken
place under an international or regional instrument (Article 6). Please
comment on the appropriateness of this rule.
27. Should a judgment on the registration or validity of mask works
or vessel designs that are required to be deposited, registered, or
issued be included in Article 6?
Preliminary Matters
28. What are your experiences in having U.S. rulings on preliminary
questions, or judgments based on such rulings, involving the
registration or validity of patents, trademarks, and designs, or other
similar rights, by courts other than those with exclusive jurisdiction
recognized and enforced by a foreign court?
29. Should a judgment on the registration or validity of mask works
or vessel designs that are required to be deposited, registered, or
issued be included in Article 8?
30. Does Article 8 provide an appropriate framework for resolving
problems, if any, related to recognition and enforcement of rulings on
preliminary questions and judgments based on such rulings?
31. How much discretion should a court in the requested State have
to refuse or postpone the recognition or enforcement of a ruling on the
validity of a patent, trademark, design, and other similar rights
raised as preliminary matter in a court in the State of origin?
Remedies
32. Article 9 provides that recognition or enforcement of a
judgment may be refused if, and to the extent that, the judgment awards
damages, including exemplary or punitive damages, that do not
compensate a party for actual loss or harm suffered. Should the court
in a requested State be allowed to recognize and enforce non-
compensatory damages in judgments involving intellectual property
matters?
33. Does Article 9 include the types of damages that would provide
effective relief for intellectual property right owners? If not, what
other types of damages or other remedies ought to be included? Why?
34. How should statutory damages for copyright infringement be
treated under this Article, and should Article 9 be amended to address
statutory damages expressly?
35. When a judgment for infringement of an intellectual property
covered by the convention includes injunctive relief, should a court in
the requested State be required to recognize and enforce the award of
injunctive relief?
36. If so, should there be any limitation on the circumstances
under which such awards should be recognized and enforced (for example,
by specifying the limitation in Article 5)? If not, should a judgment
for infringement of an intellectual property right covered by the
convention that includes injunctive relief be excluded as a basis for
recognition and enforcement, or whole or in part, under Article 5?
Event Registration Information: To register to attend or to request
to present as a speaker, please send an email message to
[email protected] and provide the following information: (1)
Your name, title, company or organization (if applicable), address,
phone number, and email address; (2) whether you wish to attend in
person or via webcast; and (3) whether you wish to make an oral
presentation at the meeting and, if so, which question(s) identified in
the supplementary information section of this notice will be addressed
and the approximate desired length of your presentation. Each attendee,
even if from the same organization, must register separately. In order
to give all speakers a meaningful opportunity to speak, the USPTO may
not be able to accommodate all persons who wish to make a presentation.
However, the USPTO will attempt to accommodate as many persons as
possible who wish to make a presentation. After reviewing the speaker
requests and the information regarding the presentations provided in
the requests, the USPTO will contact each speaker prior to the event
with the amount of time available and the approximate time that the
speaker's presentation is scheduled to begin. The amount of time
available for each speaker presentation and selected speakers without a
formal presentation may be limited to ensure that all persons selected
to speak will have a meaningful opportunity to do so. Speakers who opt
to employ slides as part of their presentation must send final
electronic copies of the slides in Microsoft PowerPoint[supreg] to
[email protected] by January 5, 2017, so that the slides can
be displayed at the meeting. Additionally, and only if time allows, the
USPTO will provide an opportunity for persons in the audience, who did
not register as speakers or were not selected as speakers, to speak at
the meeting without a formal presentation. For more information on the
meeting, including webcast access instructions, agenda, and a list of
speakers, please visit USPTO's Web site at www.uspto.gov/learning-and-resources/ip-policy/hague-conference-private-international-law. If
special accommodations due to a disability are needed, please inform
the contact person(s) identified under the heading FOR FURTHER
INFORMATION CONTACT.
Dated: November 14, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2016-27799 Filed 11-17-16; 8:45 am]
BILLING CODE 3510-16-P