Sens. Patrick J. Leahy (D-Vt.) and Charles E. Grassley (R-Iowa), their
parties' leaders on the Senate Judiciary Committee, introduced legislation Aug.
2 that would allow the United States to ratify two intellectual property
treaties signed over 12 years ago.
S. 3486, the “Patent Law Treaties Implementation Act of 2012,” would
implement the provisions of the Hague Agreement and the Patent Law Treaty.
Under the Hague system, U.S. applicants can apply for design patent
protection in all member countries by filing a single application at the Patent
and Trademark Office. “By simplifying the process for American businesses to
obtain design patents overseas, the Hague Agreement will reduce barriers for
small and mid-size companies to expand into foreign markets,” Leahy said while
introducing the bill.
The Patent Law Treaty limits and synchronizes patent application filing
formalities among member countries. “American businesses and inventors will
benefit from harmonized applications, reducing the cost of doing business and
encouraging U.S. innovators to protect and export their products
internationally,” according to Leahy.
Both treaties were ratified by the U.S. Senate in 2007. They require the
implementing legislation for the U.S. to become a member.
The bill was referred to the Judiciary Committee.
The most recent version of the Hague
Agreement, formally known as the Geneva Act of the Hague Agreement
Concerning the International Registration of Industrial Designs, is intended to
streamline the process whereby owners of industrial designs can obtain and renew
patent protections for their designs across multiple nations.
Today, U.S. applicants must file separate applications for design protection
in each country. Under the Hague Agreement, American design owners could protect
their industrial designs in signatory states simply by filing a single,
standardized, English-language application with the PTO or with the World
Intellectual Property Organization.
The agreement was first agreed to in 1925. The Geneva Act, which included
some changes that were intended to satisfy the United States, was signed in July
1999. President George W. Bush submitted the treaty to the Senate for
ratification in November 2006 (221 PTD, 11/16/06).
S. 3486 identifies changes to the Patent Act that would conform U.S. design
patent law with the requirements of the treaty. It would add a new Chapter 38 to
35 U.S.C. on “international design applications,” setting the rules for filing
the application and determining filing date priority.
Otherwise, the most notable change is that the bill would modify 35 U.S.C.
§173 by changing the term of a design patent from 14 to 15 years from the date
“[The Hague procedure] is similar to the way the Madrid Protocol provides an
option for multinational trademark protection,” PTO Director David J. Kappos
said in testimony before the Judiciary Committee in June (119 PTD, 6/21/12).
“The Geneva Act was negotiated specifically to maintain substantive examination
systems like that used in the U.S. while providing a globally streamlined design
protection system for U.S. owners of industrial designs.”
The United States signed the Patent Law Treaty in June
2000 with 43 other countries. The agreement entered into force in 32 countries,
beginning in 2005, and the Senate voted to approve ratification in 2007.
“The PLT simplifies the formal requirements and reduces associated costs of
obtaining and preserving patent rights in multiple countries of the world,”
Kappos said in June. “The PLT complements our existing international obligations
and the new provisions in the AIA.”
S. 3486 would make changes to the requirements for:
a patent application and establishing a filing date, under 35 U.S.C. §111;
an abandoned application or failure to respond in reexamination, through a new
Section 27; and
payments and surcharges under Section 41, with an impact on priority
considerations under Sections 111 and 119 and late payment of an issue fee under
The bill would make further changes in the PTO's recording of an “assignment”
to “an interest in an assignment,” and require that the agency maintain a
register of such interests, under Section 261.
On the Senate floor, Leahy noted Kappos's push for action on the treaties by
Congress, quoting from Kappos's testimony that the treaties are “pro-American
innovation, pro-global innovation, pro-jobs, pro-opportunity.”
“I agree,” Leahy said. “I urge the Senate to act quickly on this final step
so that the treaties can at last be ratified, and American innovators and
businesses can benefit from them as U.S. products continue to thrive on the
By Tony Dutra
Bill at http://pub.bna.com/ptcj/S3486intro12Aug2.pdf
Information on Hague Agreement at http://www.wipo.int/hague/en/
Information on Patent Law Treaty at http://www.wipo.int/treaties/en/ip/plt/