Federal Register, Volume 89 Issue 60 (Wednesday, March 27, 2024)

[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

[[Page 21243]]

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

[[Page 21244]]

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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