[Federal Register Volume 89, Number 60 (Wednesday, March 27, 2024)]
[Notices]
[Pages 21242-21244]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-06390]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-C-2024-0008]


WIPO Diplomatic Conference on the Design Law Treaty

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice and request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO), 
Department of Commerce, requests public comments on negotiations at the 
World Intellectual Property Organization (WIPO) regarding a proposed 
Design Law Treaty (DLT). A diplomatic conference to finalize the DLT 
will be conducted in Riyadh, Saudi Arabia on November 11-22, 2024. 
Public comments are requested regarding the DLT.
    The negotiations at the Diplomatic Conference will be the 
culmination of years of discussions at the WIPO Standing Committee on 
the Law of Trademarks, Industrial Designs, and Geographical Indications 
(SCT). The provisions of the DLT will pertain to formalities associated 
with applications for the protection of industrial designs, and its 
adoption may result in changes to requirements associated with filing 
these applications in the United States.

DATES: Written comments must be received by June 25, 2024 to ensure 
consideration.

ADDRESSES: For reasons of government efficiency, comments should be 
submitted through the Federal eRulemaking Portal at https://www.regulations.gov. To submit comments via the portal, enter docket 
number PTO-C-2024-0008 on the homepage and select ``Search.'' The site 
will provide a search results page listing all documents associated 
with this docket. Find a reference to this request for information and 
select the ``Comment'' icon, complete the required fields, and enter or 
attach your comments. Attachments to electronic comments will be 
accepted in ADOBE[supreg] portable document format or MICROSOFT 
WORD[supreg] format. Because comments will be made available for public 
inspection, information that the submitter does not desire to make 
public, such as an address or phone number, should not be included.
    Visit the Federal eRulemaking Portal (https://www.regulations.gov) 
for additional instructions on providing comments via the portal. If 
electronic submission of comments is not feasible due to a lack of 
access to a computer and/or the internet, please submit comments by 
First-Class Mail or Priority Mail to: Keith M. Mullervy, Patent 
Attorney, Mail Stop OPIA, U.S. Patent and Trademark Office, P.O. Box 
1450, Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT: Keith M. Mullervy, Patent Attorney, 
Office of Policy and International Affairs (OPIA), at 571-270-7079.

SUPPLEMENTARY INFORMATION: WIPO is a specialized United Nations agency 
based in Geneva, Switzerland. The WIPO SCT is a forum at which WIPO 
Member States \1\ and accredited observers facilitate coordination and 
provide guidance on the development of international law on trademarks, 
industrial designs, and geographical indications, including the 
harmonization of national laws and procedures.
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    \1\ WIPO currently has 193 Member States. www.wipo.int/members/en/.
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    The draft DLT aims to help designers obtain easier, faster and 
cheaper protection for their industrial designs--both in domestic and 
foreign markets. The DLT would streamline the global system for 
protecting industrial designs, which are an integral part of many 
brands, by simplifying and aligning requirements associated with 
industrial design filings. If approved, these changes would benefit the 
community of designers, particularly for small-scale designers who may 
have limited access to legal support for registering their industrial 
designs. In particular, the DLT would make it significantly easier for 
small and medium-sized enterprises to obtain industrial design 
protection overseas as a result of simplified, streamlined and aligned 
procedures and requirements.
    Work on the simplification of procedures for the protection of 
industrial designs was initially started in the WIPO SCT in 2006 and 
gradually matured into an initial set of draft Articles (WIPO/SCT/35/
2,\2\ the ``Industrial Design Law and Practice--Draft Articles'') and 
draft Regulations (WIPO/SCT/35/3,\3\ the ``Industrial Design Law and 
Practice--Draft Regulations'') for a treaty. Similar treaties already 
exist in the area of patents (Patent Law Treaty of 2000) and trademarks 
(Trademark Law Treaty of 1994 and Singapore Treaty on the Law of 
Trademarks of 2006).
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    \2\ https://www.wipo.int/edocs/mdocs/sct/en/sct_35/sct_35_2.pdf.
    \3\ https://www.wipo.int/edocs/mdocs/sct/en/sct_35/sct_35_3.pdf.
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    In 2006 and 2007, the SCT requested the WIPO Secretariat to develop 
a set of questionnaires relating to the formalities of industrial 
design registration and to the differences between all types of marks 
and industrial designs, with a view to promoting a better understanding 
of the different design systems. In response, the Secretariat developed 
a set of questionnaires on industrial design law and practice and 
circulated them among SCT members. After receiving replies from the SCT 
members, the Secretariat compiled a summary of replies to the set of 
questionnaires (WIPO/Strad/INF/2 Rev.2).\4\ In addition, in 2011 and 
2012, the SCT requested that the Secretariat prepare a study on the 
impact of the Draft Articles and Draft Regulations. In response, the 
Secretariat, with the involvement of the WIPO Chief Economist prepared 
the study (WIPO/SCT/27/4 \5\ and WIPO/SCT/27/4 ADD).\6\
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    \4\ https://www.wipo.int/export/sites/www/sct/en/meetings/pdf/wipo_strad_inf_2_rev_2.pdf.
    \5\ https://www.wipo.int/edocs/mdocs/sct/en/sct_27/sct_27_4.pdf.
    \6\ https://www.wipo.int/edocs/mdocs/sct/en/sct_29/sct_27_4_add.pdf.
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    In addition, at its Fifty-Fifth (30th Extraordinary) Session, held 
in Geneva on July 14-22, 2022, the WIPO General Assembly decided to 
convene a diplomatic conference (to be held no later than 2024) to 
conclude and adopt a Design Law Treaty, based on: document WIPO/SCT/35/
2; document WIPO/SCT/35/3; the 2019 proposal considered by the WIPO 
General Assembly, on draft Articles and Regulations on Industrial 
Design Law and Practice; and any other contributions by Member States. 
The General Assembly further decided to convene a Preparatory Committee 
in the second half of 2023 to establish the

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necessary modalities of the diplomatic conference. The General Assembly 
also directed the SCT to meet in a special session for five days in the 
second half of 2023, preceding the Preparatory Committee, to further 
close any existing gaps to a sufficient level. Following that session 
of the WIPO General Assembly, the Secretariat prepared an updated set 
of draft Articles (WIPO/SCT/S3/4,\7\ the ``Industrial Design Law and 
Practice--Draft Articles'') (``the Draft Articles'') and draft 
Regulations (WIPO/SCT/S3/5,\8\ the ``Industrial Design Law and 
Practice--Draft Regulations'') (``the Draft Regulations'') for a 
treaty.
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    \7\ https://www.wipo.int/edocs/mdocs/sct/en/sct_s3/sct_s3_4.pdf.
    \8\ https://www.wipo.int/edocs/mdocs/sct/en/sct_s3/sct_s3_5.pdf.
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    A special session of the SCT, held in Geneva on October 2-6, 2023, 
worked to close existing gaps in the text based on document WIPO/SCT/
S3/4; document WIPO/SCT/S3/5; and any other contributions by Member 
States. The special session is summarized in document WIPO/SCT/S3/9.\9\ 
In addition, a Preparatory Committee of the Diplomatic Conference, also 
held in Geneva on October 9, 2023, established the procedures for the 
diplomatic conference. The Preparatory Committee further determined 
that the diplomatic conference to conclude and adopt a design treaty 
will take place in Riyadh, Kingdom of Saudi Arabia, from November 11-
22, 2024.\10\ The Preparatory Committee meeting is summarized in 
document WIPO/DLT/2/PM/6.\11\
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    \9\ https://www.wipo.int/edocs/mdocs/sct/en/sct_s3/sct_s3_9.pdf.
    \10\ https://www.wipo.int/diplomatic-conferences/en/design-law/index.html.
    \11\ https://www.wipo.int/edocs/mdocs/sct/en/dlt_2_pm/dlt_2_pm_6.pdf.
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Request for Comments

    This request for comments seeks public/stakeholder input to inform 
U.S. government participation in the diplomatic conference (scheduled 
from November 11-22, 2024) to conclude and adopt a Design Law Treaty. 
The proposed Design Law Treaty is a formalities treaty that would 
require contracting parties--that is, the countries and 
intergovernmental organizations that accede to the treaty--to adhere to 
certain requirements with respect to the protection of industrial 
designs. Examples of its provisions include:
     Limits on the requirements that contracting parties can 
impose as a condition for according design application filing dates to 
applicants;
     Requirements that contracting parties provide design 
applicants with certain flexibilities, including flexibilities for 
applicants who miss a time limit during the application process or who 
unintentionally allow the registration to lapse;
     Requirements that contracting parties must allow design 
applicants to correct or add a priority claim to an application in 
certain circumstances;
     Requirements that contracting parties provide for a grace 
period during which public disclosure would not affect eligibility 
requirements for obtaining the right; and
     Limits on the requirements that contracting parties may 
impose as to when applicants can be required to obtain local 
representation to take an action before the local office.
    In addition, certain provisions are the subject of alternative 
options or proposals supported by several delegations, including:
     Requirements for an applicant disclosure in design 
applications of the origin or source of traditional cultural 
expressions, traditional knowledge or biological/genetic resources 
providing inspiration for, tangentially associated with, or utilized or 
incorporated in, some aspect of the industrial design;
     Limits on the requirements in requests for recording of a 
license or a security interest; and
     Effects of the non-recording of a license.

Request for Information

    The USPTO welcomes any relevant comments on the topics described in 
this Request for Comments. However, the USPTO is particularly 
interested in comments responsive to the questions below. When 
responding to the questions, please identify yourself. Commenters need 
not respond to every question and may provide relevant information even 
if it is not responsive to a particular question.

Questions for Comments

Section I--Observations and Experiences--Generally

    1. Please discuss any experiences with filing for industrial design 
protection outside of the United States, and to the extent possible, 
please: (a) identify the jurisdiction(s); (b) describe the specific 
formalities requirements in these jurisdictions; and (c) describe any 
experiences associated with satisfying the specific formalities 
requirements in these jurisdictions.
    2. Please identify any particular challenges encountered in 
relation to requirements across jurisdictions when pursuing protection 
for an industrial design in multiple jurisdictions.
    3. Please describe instances, if any, in which particular formality 
requirements associated with the submission of design applications have 
resulted in any loss of design rights, additional costs, or other 
negative consequences.

Section II--Observations and Experiences--Disclosure Requirement 
Related to Genetic Resource, Traditional Knowledge and Traditional 
Cultural Expressions

    4. Please discuss any experiences with filing for industrial design 
protection in a jurisdiction that requires disclosure of the source of 
genetic resources, traditional knowledge, or traditional cultural 
expressions in an industrial design application, and to the extent 
possible, please: (a) identify the jurisdiction(s) that required such 
disclosure; (b) describe the circumstances associated with satisfying 
the patent disclosure requirement in that jurisdiction; and (c) 
describe any experiences associated with the ease or difficulty in 
satisfying the patent disclosure requirement in that jurisdiction.
    5. Please characterize the level of difficulty in complying with 
the aforementioned disclosure requirement. Please describe any 
anticipated or unanticipated problems that resulted or may result from 
the disclosure itself or the associated requirement for the disclosure.
    6. Please describe how experiences with the disclosure requirement 
in the aforementioned jurisdiction or other jurisdictions affect the 
conduct of a design applicant or holder's business. Where possible, 
please identify the jurisdiction as well as any relevant details of the 
disclosure requirement.
    7. Please identify any type of disclosure requirement associated 
with the filing of an application for industrial design protection, in 
particular, requirements pertaining to the disclosure of genetic 
resources, traditional knowledge, or traditional cultural expressions, 
that you believe is necessary, and any benefits or detriments stemming 
from such disclosure requirements.
    8. Please share whether the existence of an industrial design 
disclosure requirement for the source of genetic resources, traditional 
knowledge, or traditional cultural expressions in an industrial design 
application was (or is or would be) a consideration in pursuing 
industrial design protection on a design in a given jurisdiction. 
Please provide details in relation to relevant sectors, industries or 
technologies

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where this may be a consideration, as well as alternative actions, if 
any, that the public has taken or would take in lieu of pursuing 
industrial design protection in that jurisdiction.
    9. Would a disclosure requirement related to genetic resources, 
traditional knowledge, and/or traditional cultural expressions make the 
industrial design application process more simplified, consistent, 
straight-forward, and time and cost efficient for applicants, including 
for small and medium sized enterprises? Please explain why or why not.
    10. Should a disclosure requirement related to genetic resources, 
traditional knowledge, and/or traditional cultural expressions be 
included in the Design Law Treaty? Please explain why or why not.

Section III--Current Text for Diplomatic Conference

    11. Please describe your views on the current working text for an 
International Legal Instrument Relating to a Design Law Treaty, which 
has been approved for consideration by the Diplomatic Conference. 
Please describe recommendations, if any, for additions, deletions, or 
changes that you would recommend to Articles 1 through 32 of the 
Articles or to the Common Regulations, namely Rules 1 through 17. These 
texts can be found at the links below:
    (a) Current working text ``substantive articles'' (Articles 1 
through 23 from the WIPO Industrial Design Law and Practice--Draft 
Articles), as revised in the Third Special Session of the Standing 
Committee on the Law of Trademarks, Industrial Designs, and Geographic 
Indicators, held in Geneva on October 2-6, 2023, as included as pages 
3-22 of Annex I to document WIPO/SCT/S3/9, which can be found on the 
WIPO website, https://www.wipo.int/edocs/mdocs/sct/en/sct_s3/sct_s3_9.pdf.
    (b) Current working text ``administrative provisions and final 
clauses'' (Articles 24 through 32 from the WIPO Draft Administrative 
Provisions and Final Clauses for a Design Law Treaty), as revised in 
the Preparatory Committee of the Diplomatic Conference to Conclude and 
Adopt a Design Law Treaty, held in Geneva on October 9, 2023, as 
included as pages 2-6 of the Annex to document WIPO/DLT/2/PM6, which 
can be found on the WIPO website, https://www.wipo.int/edocs/mdocs/sct/en/dlt_2_pm/dlt_2_pm_6.pdf.
    (c) Current working text ``draft regulations'' (Rules 1 through 17 
from the WIPO Industrial Design Law and Practice--Draft Regulations), 
as revised in the Third Special Session of the Standing Committee on 
the Law of Trademarks, Industrial Designs and Geographic Indicators, 
held in Geneva on October 2-6, 2023, as included as pages 2-14 of Annex 
II to document WIPO/SCT/S3/9, which can be found on the WIPO website, 
https://www.wipo.int/edocs/mdocs/sct/en/sct_s3/sct_s3_9.pdf.
    (d) WIPO has established a website dedicated to the Diplomatic 
Conference to Conclude and Adopt a Design Law Treaty which can be found 
at https://www.wipo.int/diplomatic-conferences/en/design-law/ which 
contains the aforementioned Articles and Regulations and other 
information regarding the Diplomatic Conference, the Design Law Treaty 
being considered, and other related information.
    (e) Please identify any additional issues in relation to 
formalities for industrial designs that you believe should be 
considered for inclusion in the Design Law Treaty that are not already 
included or any amendments you recommend to existing provisions. 
Similarly, please identify any provisions (e.g., Article or Rules) 
presently included that should not be included. In any of these 
instances, please explain the rationale for this recommendation of an 
addition, amendment, or deletion of a provision.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2024-06390 Filed 3-26-24; 8:45 am]
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