Leahy, Grassley Bill Would Implement Hague Agreement, Patent Law Treaty

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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.

Hague Agreement History, Effect.

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 of grant.

“[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.”

Patent Law Treaty History, Effect.

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:

• filing a patent application and establishing a filing date, under 35 U.S.C. §111;

• reviving an abandoned application or failure to respond in reexamination, through a new Section 27; and

• making 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 Section 115.

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.

Responding to Kappos's Push.

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 global stage.”

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/

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