[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