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110th Congress                                              Exec. Rept.
                                 SENATE
 1st Session                                                      110-7

======================================================================



 
    GENEVA ACT OF THE HAGUE AGREEMENT CONCERNING THE INTERNATIONAL 
                   REGISTRATION OF INDUSTRIAL DESIGNS

                                _______
                                

                November 27, 2007.--Ordered to be printed

 Filed under authority of the order of the Senate of November 16, 2007

                                _______
                                

          Mr. Biden, from the Committee on Foreign Relations,
                        submitted the following

                                 REPORT

                   [To accompany Treaty Doc. 109-21]

    The Committee on Foreign Relations, to which was referred 
the Geneva Act of the Hague Agreement Concerning the 
International Registration of Industrial Designs, adopted in 
Geneva on July 2, 1999, and signed by the United States on July 
6, 1999 (the ``Geneva Act'' or ``Agreement'') (Treaty Doc. 109-
21), having considered the same, reports favorably thereon with 
nine declarations as indicated in the resolution of advice and 
consent, and recommends that the Senate give its advice and 
consent to ratification thereof, as set forth in this report 
and the accompanying resolution of advice and consent.

                                CONTENTS

                                                                   Page

  I. Purpose..........................................................1
 II. Background.......................................................2
III. Major Provisions.................................................2
 IV. Entry Into Force.................................................4
  V. Implementing Legislation.........................................4
 VI. Committee Action.................................................5
VII. Committee Recommendation and Comments............................5
VIII.Resolution of Advice and Consent to Ratification.................7


                               I. Purpose

    The main purpose of the Geneva Act is to facilitate 
intellectual property protection for industrial designs by 
inventors in every country that is a Party to the Agreement 
through a single standardized application filed directly with 
the International Bureau of the World Intellectual Property 
Organization (WIPO) or indirectly through an appropriate 
Contracting Party's office, such as the United States Patent 
and Trademark Office (USPTO). The Agreement thereby simplifies 
the application process and reduces the cost for inventors of 
industrial designs seeking to obtain and preserve their rights 
on a worldwide basis.

                             II. Background

    The Geneva Act was negotiated under the auspices of WIPO, 
which was established by the WIPO Convention in 1967 and is 
composed of 184 Member States, including the United States. 
Negotiations were concluded and the text of the Agreement was 
adopted by a diplomatic conference on July 2, 1999.
    The Geneva Act is the latest version of the 1925 Hague 
Agreement Concerning the International Deposit of Industrial 
Designs (the ``Hague Agreement''), which entered into force in 
1928 and has been revised and supplemented a number of times 
since then. The United States is not a party to the 1925 Hague 
Agreement and did not seek to join any of the subsequent Acts 
revising the Hague Agreement, because these agreements did not 
permit national offices of Contracting Parties to conduct their 
own substantive examination of international design 
applications for such things as novelty and non-obviousness. 
The Geneva Act, however, is different. The United States is 
able to join the Geneva Act because it is the first version of 
the Hague Agreement that provides for a system of individual 
review by national offices.

                         III. Major Provisions

    A detailed analysis of the operation of the Agreement may 
be found in the Letter of Submittal from the Secretary of State 
to the President, which is reprinted in full in Treaty Document 
109-21. Set forth below is a brief description of the 
international application process, followed by a summary of a 
few key provisions.

                  THE INTERNATIONAL APPLICATION PROCESS

    As previously noted, the main purpose of the Geneva Act is 
to facilitate intellectual property protection for industrial 
designs by inventors in every country that is a Party to the 
Agreement through a single standardized application filed 
directly with WIPO's International Bureau (the ``IB'') or 
indirectly through an appropriate Contracting Party's office, 
such as the United States Patent and Trademark Office (USPTO). 
From a United States perspective, this means that the Geneva 
Act would permit a U.S. design applicant to file for protection 
in any country that is a party to the Agreement, including the 
United States, by filing a single standardized application in 
English.
    Specifically, Articles 3 and 4(1) of the Agreement provide 
that any person who is a national of or is domiciled in a 
treaty country may file an international design application 
with the applicant's treaty country's national Office or with 
the IB. If the United States were a Party to the Agreement, in 
accordance with Article 9(1) and Rule 13(3), the filing date of 
the international design application would be the date that the 
application is received by either the IB or the USPTO. If the 
application is filed in the United States, in accordance with 
Rule 13, the USPTO would have to transmit it to the IB within 
one month from the date on which the USPTO received the 
application, but because a security clearance is required by 
U.S. law (as reflected in the eighth declaration included in 
the resolution of advice and consent), this deadline is 
extended to six months.
    In accordance with Articles 5 and 10, designers are 
required to designate in their application the countries in 
which they seek to be registered and on that basis the IB makes 
a copy of the published international deposit available for 
download by the national offices of each designated country. 
The IB also publishes each international deposit in the 
Industrial Designs Bulletin, a publication that is distributed 
on a monthly basis by CD-ROM. If the United States is one of 
the designated countries on an international deposit, the IB 
will make a copy of the published registration available for 
download by the USPTO.
    Pursuant to Article 12, upon receiving a copy of the 
application from the IB, the USPTO has six months from the 
publication date of the application by WIPO to conduct a 
substantive examination of the industrial design and refuse 
protection, if it does not meet the necessary conditions for 
protection under U.S. law. In accordance with Rule 18, the 
USPTO can, as an Examining Office, notify the Director General 
of WIPO that the period for refusal (the time period during 
which the United States can refuse protection for the design) 
shall be extended for the United States to 12 months from the 
date of publication of the application. Under Article 14 and 
Rule 18, if the USPTO does not notify the IB of its refusal to 
protect the international registration in the United States 
within six months of publication, or 12 months if an extension 
has been obtained, the protection of the designs included in 
the international deposit is the same as if the deposit had 
been entered in the national register of the State concerned, 
which in this case would be the United States.

                             KEY PROVISIONS

1. The Harmonization and Simplification of Application Requirements

    Article 5 of the Geneva Act sets forth mandatory 
requirements as to the contents of an international design 
application, as well as certain additional elements that can be 
required for an application made in a Contracting Party that 
has an intellectual property office that is an ``Examining 
Office,'' such as the USPTO.

2. Rights of Priority

    Article 6 provides that an international design application 
is deemed, as from its filing date and regardless of its 
subsequent fate, equivalent to a regular national filing within 
the meaning of Article 4 of the 1883 Paris Convention for the 
Protection of Industrial Property (the ``Paris Convention''), 
which is the basic convention that harmonizes substantive 
domestic law among Contracting Parties regarding the protection 
of industrial property, including industrial designs. As a 
result, international design applications under the Geneva Act 
can serve as a basis for claiming priority over a national or 
regional application subject to the Paris Convention.

3. Equivalent Grant of Protection of the Design under Domestic Law

    Article 14 provides that a proper international 
registration has at least the same effect as a regularly-filed 
application for the grant of protection as it would have had if 
filed in the Contracting Party's Office under the domestic law 
of that Contracting Party, unless a timely refusal has been 
communicated in accordance with Article 12. The international 
applicant furthermore has the same related remedies as if the 
design had been the subject of a national application.

4. Opportunity to Defend One's Right if a Registration is Pronounced 
        Invalid

    Article 15(1) of the Agreement provides that the competent 
authority in a designated Contracting Party cannot pronounce a 
registration invalid without the right holder having ``in good 
time'' the opportunity to defend his or her rights.

5. Renewal of Registration

    Article 17 of the Agreement provides that international 
registrations shall be for an initial term of five years, which 
is renewable every five years and if properly renewed, a 
Contracting Party must continue to provide protection for the 
registration, for at least 15 years in total.

                          IV. Entry Into Force

    In accordance with Article 28, the Geneva Act will enter 
into force for the United States three months after the date on 
which the United States deposits its instrument of ratification 
with the Director General of WIPO or on a later date indicated 
in the U.S. instrument.

                      V. Implementing Legislation

    Implementing legislation and the promulgation of new 
regulations by the USPTO are required for this Agreement. It is 
expected, therefore, that the United States will not deposit 
its instrument of ratification until this legislative process 
is complete, so as to ensure that the United States is capable 
of complying with its obligations under the Agreement. 
Specifically, Title 35 of the United States Code, known as the 
``Patent Act of 1952,'' must be amended in order to comply with 
the Geneva Act. The Department of Commerce has submitted a 
draft bill to Congress entitled the ``Hague Agreement 
Implementation Act'' and it is currently under consideration by 
the Committees on the Judiciary of the House and Senate.
    The proposed Hague Agreement Implementation Act would 
maintain the U.S. substantive examination process for design 
applications; set forth the qualifications needed to apply, 
through the USPTO, for international registration of a design 
under the Act; and provide that the USPTO's substantive 
examination process will apply to international design 
applications seeking protection in the United States. The 
proposed Act makes no substantive changes in U.S. design patent 
law with the exception of the following: the provision of 
limited rights to patent applicants between the date that their 
international design application is published by the IB and the 
date on which they are granted a U.S. patent based on that 
application; the extension of a patent term for designs from 
fourteen to fifteen years from grant; and allowing the USPTO to 
use a published international design registration as a basis 
for rejecting a subsequently filed national patent application 
that is directed at the same or a similar subject matter.

                          VI. Committee Action

    The committee held a public hearing on the Agreement on 
July 17, 2007 (a hearing print of this session will be 
forthcoming). Testimony was received by Ms. Lois E. Boland, 
Director of the Office of International Relations, United 
States Patent and Trademark Office. On September 11, 2007, the 
committee considered the Agreement, and ordered it favorably 
reported by voice vote, with a quorum present and without 
objection.

               VII. Committee Recommendation and Comments

    The Committee on Foreign Relations believes that the 
Agreement is an important tool to further promote and protect 
the contributions of U.S. design owners on a worldwide basis. 
The Agreement establishes a reasonably streamlined process for 
U.S. design owners to protect their industrial designs 
internationally. If the United States ratifies the Geneva Act, 
it will no longer be necessary for U.S. design owners to make 
separate national deposits in each of the States in which they 
require protection, pay a series of national fees in various 
currencies, submit applications in various languages, or keep 
watch on the deadlines for renewal of a series of national 
deposits. Instead, U.S. design owners will be able to obtain 
multinational design protection through a single deposit 
procedure. Similarly, it will be possible to renew a design 
registration in each Contracting Party by filing a single 
request along with payment of the appropriate fees at the IB.
    The committee therefore urges the Senate to act promptly to 
give advice and consent to ratification of the Geneva Act, as 
set forth in this report and the accompanying resolution of 
advice and consent.

                            A. DECLARATIONS

    The executive branch has recommended, and the committee has 
included in the resolution of advice and consent, nine 
declarations. The proposed declarations address a variety of 
technical issues, including the following: (1) ensuring that 
the USPTO is recognized as an Examining Office, which will be 
examining each international deposit in which the United States 
is designated individually; (2) making it clear that fees 
currently charged by the USPTO for processing national design 
applications are also applicable for international design 
applications deposited under the Agreement; (3) making clear 
that the USPTO will continue to allow only one independent and 
distinct design to be claimed in a single application; (4) 
providing that the USPTO will continue its practice of 
requiring that an application for the protection of an 
industrial design be filed in the name of the creator of the 
design; and (5) making it clear that U.S. law requires a 
security clearance so that the USPTO has six months rather than 
one month to forward applications to the IB without causing the 
filing date of the international application to be changed to 
the date of receipt by the IB.
    The second declaration in the resolution of advice and 
consent made pursuant to Article 7(2) and Article 12(3), 
reflects updated individual designation fees, based on 
information supplied to the committee by the USPTO. 
Nevertheless, due to a Final Rule on August 22, 2007, which 
went into effect on September 30, 2007, the individual design 
fees have since been increased to track the Consumer Price 
Index (72 Fed. Reg. 162 at 46899 (Aug. 22, 2007)). The 
committee understands that the executive branch will adjust the 
fee amounts in this declaration when depositing the instrument 
of ratification to reflect the current fee structure.

                          B. TACIT AMENDMENTS

    As in the case of other multilateral intellectual property 
treaties, such as the Protocol to the Madrid Agreement 
Concerning the International Registration of Marks and the 
Patent Law Treaty, amendments to certain provisions of the 
Geneva Act may be adopted by a super-majority vote of the 
Assembly and such amendments may take effect for all once 
accepted by three-fourths of the Contracting Parties, even 
absent the explicit consent of all the Parties.
    Such a tacit amendment procedure applies with respect to 
amendments to Articles 21, 22, 23 and 26, which are largely 
procedural in nature but could, in some circumstances, have 
substantive effect. Article 21 deals with the Assembly and 
covers such issues as its composition, tasks to be performed, 
and its decision-making procedures. Article 22 describes the 
administrative duties of the IB and the IB's relationship to 
the Assembly. Article 23 addresses the financing of the Hague 
Union, which is a body comprised of Contracting Parties 
established in the 1925 Hague Agreement and maintained in 
subsequent Acts, including the Geneva Act (Article 20). Article 
26 sets forth the tacit amendment procedure that is available 
for amending Articles 21, 22, 23 and 26.
    Article 26 provides that in general, amendments to Articles 
21, 22, 23 and 26 require a three-fourths majority to adopt, 
and enter into force one month after three-fourths of the 
Contracting Parties that were members of the Assembly and had 
the right to vote on the amendment when it was adopted have 
accepted the amendment in writing to the Director General. 
Amendments to certain provisions, however, have stricter 
requirements with respect to their adoption and entry into 
force. The adoption of any amendment to Article 21, for 
example, requires a four-fifths majority. Moreover, amendments 
to Article 21(3) and (4), which set forth the decision-making 
procedures of the Assembly and the requirements of a quorum, as 
well as Article 26(3)(b), which sets forth this particular 
entry into force requirement, will not enter into force if any 
Contracting Party objects within six months of the amendment's 
adoption by the Assembly.
    In accordance with Article 26(1), any proposal by a 
Contracting Party, or by the Director General of WIPO, to amend 
Articles 21, 22, 23 and 26 must be communicated by the Director 
General to the Parties at least six months in advance of their 
consideration by the Assembly. The committee expects the 
executive branch to inform it of any proposed amendments 
subject to this tacit-amendment procedure upon receipt of a 
proposed amendment from the Director General and to consult 
with the committee in a timely manner in order to determine 
whether Senate advice and consent is necessary.
    In addition to the tacit amendment process described above, 
the Assembly established in the Agreement may, under Article 
21(2)(iv), amend the Regulations. In accordance with Article 
21(4), the Assembly endeavors to take decisions by consensus; 
however, if a decision cannot be arrived at by consensus, the 
matter may be decided by a vote and consequently, unless the 
Regulations specifically require unanimity or a four-fifths 
majority for the amendment at issue, the Regulations could be 
amended by a two-thirds vote of the Assembly pursuant to 
Articles 21(5) and 24(2).
    The committee recognizes that a tacit amendment procedure 
for amending regulations annexed to a treaty is fairly common 
in multilateral intellectual property treaties negotiated under 
the auspices of WIPO, many of which have been ratified by the 
United States. Allowing the Assembly to amend the Regulations 
in this manner makes it possible for the technical 
implementation of the treaty to evolve without going through 
the formalized and standard amendment process, which frequently 
takes years to effect. Amendments effected through this 
mechanism may not, as a matter of law, rise to the level of 
those that require the advice and consent of the Senate. The 
executive branch has assured the committee that there is an 
inherent limitation on any implementing regulations the 
Assembly can consider, because the Regulations cannot exceed 
and can only implement the Agreement's provisions. Such 
modifications to the Regulations should not, in the normal 
course, require advice and consent. If there is any question, 
however, as to whether an amendment to the Regulations goes 
beyond the implementation of specific provisions in the Geneva 
Act, the committee expects the executive branch to consult with 
the committee in a timely manner in order to determine whether 
Senate advice and consent is necessary.

         VIII. Resolution of Advice and Consent to Ratification

    Resolved (two-thirds of the Senators present concurring 
therein),

SECTION 1. SENATE ADVICE AND CONSENT SUBJECT TO DECLARATIONS

    The Senate advises and consents to the ratification of the 
Geneva Act of the Hague Agreement Concerning the International 
Registration of Industrial Designs (the ``Agreement''), adopted 
in Geneva on July 2, 1999, and signed by the United States of 
America on July 6, 1999 (Treaty Doc. 109-21), subject to the 
declarations of section 2.

SECTION 2. DECLARATIONS

    The advice and consent of the Senate under section 1 is 
subject to the following declarations, which shall be included 
in the United States instrument of ratification:
          (1) Pursuant to Article 5(2)(a) and Rule 11(3) of the 
        Agreement, the United States of America declares that 
        its Office is an Examining Office under the Agreement 
        whose law requires that an application for the grant of 
        protection to an industrial design contain: (i) 
        indications concerning the identity of the creator of 
        the industrial design that is the subject of the 
        application; (ii) a brief description of the 
        reproduction or of the characteristic features of the 
        industrial design that is the subject of the 
        application; and (iii) a claim. The specific wording of 
        the claim shall be in formal terms to the ornamental 
        design for the article (specifying name of article) as 
        shown, or as shown and described.
          (2) Pursuant to Article 7(2) and Rule 12(3) of the 
        Agreement, the United States of America declares that, 
        as an Examining Office under the Agreement, the 
        prescribed designation fee referred to in Article 7(1) 
        of the Agreement shall be replaced by an individual 
        designation fee, that is payable in a first part at 
        filing and a second part payable upon allowance of the 
        application. The current amount of the designation fee 
        is US$1,230, payable in a first part of US$430 at 
        filing and a second part of US$800 upon allowance of 
        the application. However, for those entities that 
        qualify for ``small entity'' status within the meaning 
        of section 41(h) of title 35 of the United States Code 
        and section 3 of the Small Business Act, the amount of 
        the individual designation fee is US$615, payable in a 
        first part of US$215 and a second part of US$400. In 
        addition, these amounts are subject to future changes 
        upon which notification to the Director General will be 
        made in future declarations as authorized in Article 
        7(2) of the Agreement.
          (3) Pursuant to Article 11(1)(b) of the Agreement, 
        the United States of America declares that the law of 
        the United States of America does not provide for the 
        deferment of the publication of an industrial design.
          (4) Pursuant to Article 13(1) of the Agreement, the 
        United States of America declares that its laws require 
        that only one independent and distinct design may be 
        claimed in a single application.
          (5) Pursuant to Article 16(2) of the Agreement, the 
        United States of America declares that a recording by 
        the International Bureau under Article 16(1)(i) of the 
        Agreement shall not have effect in the United States of 
        America until the United States Patent and Trademark 
        Office has received the statements or documents 
        recorded thereby.
          (6) Pursuant to Article 17(3)(c) of the Agreement, 
        the United States of America declares that the maximum 
        duration of protection for designs provided for by its 
        law is 15 years from grant.
          (7) Pursuant to Rule 8(1) of the Agreement, the 
        United States of America declares that the law of the 
        United States of America requires that an application 
        for protection of an industrial design be filed in the 
        name of the creator of the industrial design. The 
        specific form and mandatory contents of a statement 
        required for the purposes of Rule 8(2) of the Agreement 
        are contained in section 1.63 of title 37 of the Code 
        of Federal Regulations of the United States.
          (8) Pursuant to Rule 13(4) of the Agreement, the 
        United States of America declares that the period of 
        one month referred to in Rule 13(3) of the Agreement 
        shall be replaced by a period of six months as to the 
        United States of America in light of the security 
        clearance required by United States law.
          (9) Pursuant to Rule 18(1)(b), the United States of 
        America declares that the period of six months referred 
        to in Rule 18(1)(a) of the Agreement shall be replaced 
        by a period of twelve months with respect to the United 
        States of America, as the Office of the United States 
        of America is an Examining Office under the Agreement.