Bill to Implement Hague, Patent Law Treaties Cleared for President's Signature

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The U.S. House of Representatives approved by voice vote Dec. 5 a bill aimed at bringing into force provisions of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs and the Patent Law Treaty.

“S. 3486 saves American innovators money and expands their patent protection outside the United States,” Rep. Lamar S. Smith (R-Texas) said as he brought the bill up for vote on the House floor.

The only other lawmaker to speak before the vote, Rep. Robert C. Scott (D-Va.), said passage of the bill “will decrease the barriers that U.S. innovators and businesses confront when they pursue patent protection in foreign countries.”

The Senate approved the legislation Sept. 22 (185 PTD, 9/25/12). It will now go to President Obama's desk for enactment.

A Long Time Coming.

The treaties were originally signed by President William Jefferson Clinton in 1992, and the Senate ratified both treaties in 2007. However, implementing legislation is necessary for the United States to become a member of the treaties, and no action on that process was taken in Congress until this year.

S. 3486 was introduced Aug. 2 by Sens. Patrick J. Leahy (D-Vt.) and Charles E. Grassley (R-Iowa), their parties' leaders on the Senate Judiciary Committee (150 PTD, 8/6/12).

The Patent Law Treaty limits and synchronizes patent application filing formalities among signatory 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,” Leahy said when the bill was introduced.

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.

Among the substantive changes proposed under the treaty implementation bill are that design patent protection would be increased from 14 to 15 years.

The Congressional Budget Office issued a cost estimate Oct. 15 (219 PTD, 11/14/12). According to the CBO, the legislation “would not affect direct spending or revenues; therefore, pay-as-you-go procedures do not apply.”

The CBO also stated that an anticipated increase in international applications for design patents would not significantly increase the PTO's work load. And, to the extent that there might be some more costs, the PTO is now authorized, since passage of the America Invents Act, to adjust fee schedules in order to account for them.

By Tony Dutra  


Bill at http://pub.bna.com/ptcj/S3486Sept21.pdf

CBO report at http://www.cbo.gov/sites/default/files/cbofiles/attachments/s3486.pdf