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[Senate Treaty Document 109-21]
[From the U.S. Government Printing Office]



109th Congress 
 2d Session                      SENATE                     Treaty Doc.
                                                                 109-21
_______________________________________________________________________
 
    GENEVA ACT OF THE HAGUE AGREEMENT CONCERNING THE INTERNATIONAL 
                   REGISTRATION OF INDUSTRIAL DESIGNS

                               __________

                                MESSAGE

                                  from

                   THE PRESIDENT OF THE UNITED STATES

                              transmitting

  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 ON JULY 6, 1999




November 13, 2006.--Treaty was read the first time, and together with 
the accompanying papers, referred to the Committee on Foreign 
Relations and order to be printed for the use of the Senate 
                         LETTER OF TRANSMITTAL 

                              ----------                              

                           The White House, November 13, 2006. 
To the Senate of the United States: 
    With a view to receiving the advice and consent of the 
Senate to ratification, I transmit herewith 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 on July 6, 1999. 
I also transmit, for the information of the Senate, a report of 
the Department of State with respect to the Agreement.
    This Agreement promotes the ability of U.S. design owners 
to protect their industrial designs by allowing them to obtain 
multinational design protection through a single deposit 
procedure. Under the Agreement, U.S. design owners would be 
able to file for design registration in any number of the 
Contracting Parties with a single standardized application in 
English at either the U.S. Patent and Trademark Office or at 
the International Bureau of the World Intellectual Property 
Organization (WIPO). Similarly, renewal of a design 
registration in each Contracting Party may be made by filing a 
single request along with payment of the appropriate fees at 
the International Bureau of WIPO. This Agreement should make 
access to international protection of industrial designs more 
readily available to U.S. businesses.
    In the event that the Senate provides its consent to ratify 
the Agreement, the United States would not deposit its 
instrument of ratification until the necessary implementing 
legal structure has been established domestically.
    I recommend that the Senate give early and favorable 
consideration to this Agreement and give its advice and consent 
to its ratification, subject to the declarations described in 
the accompanying report of the Department of State.

                                                    George W. Bush.
                          LETTER OF SUBMITTAL

                              ----------                              

                                       Department of State,
                                        Washington, April 14, 2006.
The President,
The White House.
    The President: I have the honor hereby to submit to you, 
with a view to its transmittal to the Senate for advice and 
consent to ratification, the Geneva Act of the Hague Agreement 
Concerning the International Registration of Industrial Designs 
(hereinafter the ``Agreement''), adopted at Geneva, July 2, 
1999. This treaty was adopted under the auspices of the World 
Intellectual Property Organization (``WIPO'') with the 
objective of simplifying the process of seeking protection for 
designs in multiple countries.
    The Agreement traces its roots to the Hague Agreement 
Concerning the International Deposit of Industrial Designs done 
at The Hague, Netherlands, on November 6, 1925, which entered 
into force in 1928, and was revised numerous times. For the 42 
current member states of the Hague Union, these existing 
agreements facilitate the obtainment of intellectual property 
protection for industrial designs by allowing multinational 
patent protection in a number of countries through a single 
``international deposit'' procedure. However, these Acts did 
not meet the needs of nations, such as the United States, that 
review each application individually. This Agreement allows the 
United States to partake in the benefits of facilitating 
multinational design protection for applicants while continuing 
its system of individual review.
    The Department of Commerce and the Office of the United 
States Trade Representative join the Department of State in 
requesting that the Geneva Act of the Hague Agreement 
Concerning the International Registration of Industrial Designs 
be transmitted to the Senate for its advice and consent to 
ratification as soon as possible, subject to the declarations 
described in the enclosed document.
    Respectfully submitted.
                                                  Condoleezza Rice.
    Enclosure: Key Provisions of the Geneva Act of the Hague 
Agreement Concerning the International Registration of 
Industrial Designs.
Key Provisions of the Geneva Act of the Hague Agreement Concerning the 
            International Registration of Industrial Designs


                      the operation of the treaty


    The Agreement will permit a U.S. design applicant to file 
for protection in any of the Contracting Parties, including the 
United States, by filing a single standardized application in 
English. Pursuant to Articles 3 and 4( 1) of the Agreement, any 
person who is a national of or is domiciled in the United 
States may file an international design application with the 
United States Patent and Trademark Office (USPTO) or directly 
with the International Bureau (IB) of the World Intellectual 
Property Organization (WIPO). The filing date of the 
international design application is the date that the 
application is received by either the IB or the USPTO (Article 
9(1) and Rule 13(3)).
    The USPTO must transmit any application to the IB within 
one month from the date on which the USPTO receives it. If, 
however, a security clearance is required by law, then the 
USPTO can notify the Director General of WIPO (Director 
General) as to this fact, and the USPTO has six months to 
transmit the application to the lB.
    Article 5(1) sets forth the mandatory requirements as to 
the contents of an international design application. Article 
5(2) provides additional mandatory contents as to Contracting 
Parties that have an intellectual property office that is an 
Examining Office, such as the USPTO.
    The Agreement also provides a basis for rights of priority 
with regard to international design applications filed under 
the Agreement. Article 6(1) states that the application may 
contain a declaration under Article 4 of the Paris Convention 
for the Protection of Industrial Property (1967) claiming the 
priority of one or more earlier applications filed in or for 
any country party to the Paris Convention or any member of the 
World Trade Organization. Article 6(2) provides that an 
international design application is deemed, as from its filing 
date and regardless of its subsequent fate, equivalent to a 
regular filing within the meaning of Article 4 of the Paris 
Convention. Thereby, international design applications under 
the Agreement may serve as a basis for claiming priority in a 
national or regional application.
    Article 7 states that the fees shall include a designation 
fee for each designated Contracting Party. However, any 
Contracting Party, such as the United States, whose Office is 
an Examining Office, may declare that the prescribed 
designation fees be replaced by an individual designation fee, 
which may be payable in two parts.
    According to Article 10(1) and Rule 15 of the Agreement, 
the IB will register each design that is the subject of an 
international design application immediately upon receipt by 
the IB of the application. The general rule under Article 10(2) 
is that the date of the international registration will be the 
filing date of the application, provided it is complete and 
complies with the mandatory requirements of the Agreement. 
Pursuant to Article 9(3) and Rule 14, if the application 
contains any of the following missing parts or irregularities, 
the date of the international registration is the date on which 
the correction is received by the IB: (1) the application is 
not in a prescribed language (English or French); (2) the 
application lacks any indication that registration under the 
Agreement is sought; (3) the application is missing indications 
allowing the identity of the applicant to be established; (4) 
the application lacks a reproduction, or a specimen, as 
required; or (5) the application does not contain the 
designation of at least one Contracting Party. If an 
irregularity is discovered other than the five listed above, 
the international registration date is the filing date, 
provided that the irregularity is corrected within the 
prescribed time limit of three months. If not corrected within 
the time limit, the application is considered abandoned. 
However, pursuant to Article 8(2)(b), if the irregularity 
relates to additional elements that may be required by an 
Examining Office, or to a special requirement notified to the 
Director General by a Contracting Party, and the applicant has 
not complied within the prescribed time limit of three months, 
the application is merely deemed not to contain the designation 
of the concerned Contracting Party.
    In accordance with Article 10(3) and Rule 17, the IB will 
normally publish the international registration within six 
months of the registration date, unless the applicant requests 
that the publication be made immediately after the 
registration. Article 11 (1) and Rule 16( 1) provide that 
applicants may also request deferment of publication, which 
shall be granted for a period of less than 30 months from the 
filing date if such deferment is allowed by the laws of all the 
Contracting Parties designated in an application. Article 11 
(1)(b) provides that where a Contracting Party does not provide 
for the deferment of the publication of an industrial design, 
as is the case in the United States, the Contracting Party 
shall notify the Director General of that fact in a 
declaration.
    Pursuant to Article 12( 1), the USPTO may refuse 
registration, in whole or in part, of the international 
registration, when the conditions for the grant of protection 
under the laws of the United States are not met. UnderArticle 
12(2), the refusal shall be communicated by the USPTO to the IB within 
the prescribed period of six months from the date on which the IB sends 
to the USPTO a copy of the publication of the international 
registration, as set forth in Rule 18(1)(a). However, the USPTO, as an 
Examining Office, may notify the Director General that the period for 
refusal for the United States shall be 12 months.
    According to Article 14(2) and Rule 18(1), if the USPTO 
does not communicate a notification of refusal, the 
international registration will have the same effect as a grant 
of protection for the industrial design under the laws of the 
United States at the latest on the last day of the period in 
which USPTO could have transmitted a notice of refusal to the 
IB. However, if the USPTO unintentionally does not communicate 
a notice of refusal within that time period, the USPTO may 
notify the IB and communicate the decision to the holder of the 
international registration promptly thereafter (Rule 
18(1)(c)(ii)).
    Article 14(1) provides that the international registration 
has the same effect in the USPTO as a regularly-filed 
application for the grant of protection of the design under 
U.S. law. The applicant has the same remedies as if the design 
had been the subject of a U.S. national application. Under 
Article 12(4), the USPTO may withdraw a notification of 
refusal, in whole or in part, at any time. However, in that 
case, a grant of protection will ensue from the latest date on 
which the refusal was withdrawn (see Article 14(2)(b)).
    Article 15 provides that invalidation by the competent 
authorities in a designated Contracting Party may not be 
pronounced without the right holder having, in good time, the 
opportunity to defend his rights. Additionally, in the United 
States, the USPTO must, where it is aware of the invalidation, 
notify the IB. Article 16 provides that the IB must record 
changes of ownership and other matters regarding international 
registrations and that such changes are to have the same effect 
as if the recording had been made in the Office of the 
concerned Contracting Party.
    Pursuant to Article 17, an international registration shall 
be effected for a term of five years from the date of 
international registration. Registrations may be renewed for 
additional terms of five years. As long as they are renewed 
according to Article 17(2), Article 17(3) provides that 
protection shall not terminate before 15 years from the date of 
international registration. Renewal requires the payment of 
fees as specified in Rule 24.
    Article 19 sets forth provisions regarding a common patent 
office being substituted for national offices when a group of 
member states agrees to unify domestic legislation on designs.
    Article 20 of the Agreement provides that the Contracting 
Parties shall be members of the ``same Union as the States 
party to the 1934 Act or the 1960 Act,'' and Article 21(1) of 
the Act provides that the Contracting Parties shall be members 
``of the same Assembly as the States bound by Article 2 of the 
Complementary Act of 1967.''
    Article 21(2) sets forth the tasks to be performed by the 
Assembly. These tasks include: dealing with all matters 
concerning maintenance and development of the Union and the 
implementation of the Agreement; exercising rights and 
performing such tasks as are specifically conferred upon it or 
assigned to it under this Agreement or the Complementary Act of 
1967; giving directions to the Director General concerning 
preparations for conferences of revision and deciding on the 
convocation of any such conference; amending the Regulations; 
giving the Director General all necessary instructions 
concerning matters within the competence of the Union; adopting 
the biennial budget and financial regulations of the Union; 
establishing committees and working groups as appropriate; and 
determining which States and organizations shall be admitted to 
its meetings as observers.
    Article 21(4) sets forth the general voting procedures in 
the Assembly. Each Contracting Party that is a state shall have 
one vote and shall vote only in its own name. Any Contracting 
Party that is an intergovernmental organization may vote in 
place of its member states, with a number of votes equal to the 
number of its member states that are party to the Agreement, 
but no such organization may participate in the vote if anyone 
of its member states exercises its right to vote, and vice 
versa.
    Article 21(5) provides that subject to Articles 24(2) and 
26(2), the decisions of the Assembly require two-thirds of the 
votes cast (abstentions do not count as votes). However, as is 
common practice in multilateral intellectual property treaties 
that include provisions for an assembly to facilitate treaty 
implementation, certain provisions of the Agreement may be 
amended by a super-majority of the Assembly, without the need 
for a revision conference. In particular, proposals for the 
adoption of any amendment to Articles 21, 22, 23, and 26 may be 
submitted by any Contracting Party or the Director General. 
Adoption of amendments to those Articles requires a three-
fourths majority, except that amendments to Articles 21 and 
26(2) shall require a four-fifths majority. Pursuant to Article 
26(3), any such amendment enters into force one month after the 
Director General receives written notifications of acceptance 
from three-fourths of those Contracting Parties, which, at the 
time the amendment was adopted, were members of the Assembly 
and had the right to vote on the amendment.Pursuant to Article 
26(3)(c), any such amendment that enters into force will bind all the 
States and intergovernmental organizations that are Contracting Parties 
to the Agreement.
    Article 22 details the duties of the International Bureau 
of WIPO as they relate to the Agreement. Pursuant to Article 
22(5)(c), the Director General and persons designated by the 
Director General shall take part, without the right to vote, in 
discussions at any revision conference.
    Pursuant to Article 23 of the Agreement, the budget of the 
Union will include income and expenses proper to the Union and 
its contribution to the budget of expenses to the Unions 
administered by WIPO. Its budget will be established with due 
regard to the requirements of coordination with the budgets of 
the other WIPO Unions. The finances of the Union include a 
working capital fund, established pursuant to Article 23(5), 
which will be constituted by the excess receipts and, if such 
excess does not suffice, by a single payment made by each 
member of the Union.
    The USPTO is expected to incur some initial costs for items 
such as new forms and other updates of procedures in order to 
allow for appropriate processing of international design 
applications under the Agreement. However, the Agreement 
authorizes the United States to set an individual designation 
fee payable in two parts that will be equivalent to the filing 
and issue fees currently charged with respect to a regular 
United States design application. The substantive requirements 
of chapter 16 of title 35 of the United States Code, which 
currently defines the substantive requirements for the 
patenting of designs, will also apply to international design 
applications. Therefore, these fees should cover the cost of 
processing applications filed under the Agreement. Much of the 
examination of an international design application will be the 
same as that of a regular national application for design 
patent.


                        implementing legislation


    In the event that the Senate provides its advice and 
consent to ratify this Agreement, the United States would not 
deposit its instrument of ratification until the necessary 
implementing legal structure had been established domestically, 
so as to ensure that the United States was capable of complying 
with the provisions of this Agreement. Such implementation 
requirements include the enactment of legislation, and the 
promulgation of new regulations by the USPTO.


          declarations to accompany united states ratification


    The Agreement contemplates that Contracting Parties may 
make declarations with respect to certain articles. The 
Department of State recommends that the United States 
ratification to the Agreement be accompanied by nine 
declarations, pursuant to Agreement Articles 5(2)(a), 7(2), 
11(1)(b), 13(1), 16(2), and 17(3)(c), and Agreement Rules 8(1), 
13(4) and 18(1)(b).
    The first listed declaration, authorized under Article 
5(2)(a), permits the USPTO, as an Examining Office under the 
Agreement, to declare those additional elements listed in 
Article 5(2)(b), which it requires be included in an 
application for grant of protection of the design. Current 
United States statutes and regulations governing the protection 
of design patents require: indications concerning the identity 
of the creator of the industrial design that is the subject of 
the application (35 U.S.C. 114, 37 CFR 1.63(a)(3)); a brief 
description of the reproduction or of the characteristic 
features of the industrial design (35 U.S.C. 112, 1st 
paragraph; 37 CFR 1.154(b)(5)); and a claim (35 USC 111). In 
addition, Rule 11(3) of the Agreement requires that a Party 
making a declaration under Article 5(2)(a) to the effect that a 
claim is required must specify in its declaration the exact 
wording of the required claim (as found in 37 CFR 1.153(a)).
    The USPTO has ascertained that a declaration is necessary 
to ensure that its substantive examination of industrial 
designs is maintained. Accordingly, the Department of State 
recommends that the following declaration be included in the 
U.S. instrument of ratification:

          Pursuant to Article 5(2)(a) and Rule 11(3) of the 
        Agreement, the United States declares that it 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.

    The second declaration, authorized under Article 7(2), 
authorizes a Party whose office is an Examining Office (such as 
USPTO) to declare that its individual designation fee, whose 
amount is to be indicated in the declaration and can be changed 
in future declarations, shall replace the designation fee 
prescribed in the Regulations of the Agreement. In addition, 
Rule 12(3) provides that a declaration made pursuant to Article 
7(2) may also specify that the individual designation fee be 
payable in two parts. The first part would be paid at the time 
of filing and the second part would be paid at a later date 
determined by the law of the Contracting Party.
    The USPTO has determined that such a declaration is 
necessary in order to keep its fees for processing 
international design applications filed under the Agreement the 
same as those for regularly filed national design applications. 
Further, it is necessary to have the fee payable in two parts 
in order to maintain USPTO's current fee practice that 
comprises a filing fee, due at the time of filing of the 
application, and an issue fee, due before the patent is to be 
granted. Accordingly, the Department of State recommends that 
the following declaration be included in the U.S. instrument of 
ratification:

          Pursuant to Article 7(2) and Rule 12(3) of the 
        Agreement, the United States 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$790, payable in a first part of US$330 at filing 
        and a second part of US$460 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$395, payable in a 
        first part of US$165 and a second part of US$230. 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.

    The third declaration, authorized by Article 11(1)(b) of 
the Agreement, allows the USPTO to notify the Director General 
that its law does not provide for deferment of publications 
under the Agreement. The USPTO has ascertained that such a 
declaration is necessary in order to prohibit deferments of 
publication of international design registrations designating 
the United States under the Agreement. Accordingly, the 
Department of State recommends that the U.S. instrument of 
ratification be accompanied by the following declaration:

          Pursuant to Article 11(1)(b) of the Agreement, the 
        United States declares that the law of the United 
        States does not provide for the deferment of the 
        publication of an industrial design.

    The fourth declaration, authorized under Article 13(1) of 
the Agreement, authorizes the USPTO to maintain its restriction 
of allowing only one independent and distinct design to be 
claimed in a single application. The USPTO has ascertained that 
such a declaration is necessary so that the USPTO may maintain 
its practice of issuing one patent for one design, which is 
defined by a single claim. Accordingly, the Department of State 
recommends that the following declaration be included in the 
U.S. instrument of ratification:

          Pursuant to Article 13(1) of the Agreement, the 
        United States declares that its laws require that only 
        one independent and distinct design may be claimed in a 
        single application.

    The fifth declaration, authorized by Article 16(2) of the 
Agreement, allows the USPTO to refuse the effect of recordings 
regarding change of ownership in the international registration 
until the USPTO receives assignment statements or documents. 
This would allow the USPTO to maintain its current practice of 
requiring that a statement to the effect that a conveyance has 
been made be submitted to the USPTO and be made available to 
the public. Under U.S. patent law, if such an assignment is not 
recorded within three months, the transfer is void against 
subsequent bona fide purchasers or mortgagees. This protects 
subsequent purchasers by allowing them to view the contents of 
any agreement that purports to transfer ownership.
    The USPTO has ascertained that such a declaration is 
necessary in order to maintain its current practice of 
requiring that assignment documents be provided to the USPTO 
before they are given effect. Accordingly, the Department of 
State recommends that the United States instrument of 
ratification be accompanied by the following declaration:

          Pursuant to Article 16(2) of the Agreement, the 
        United States declares that a recording by the 
        International Bureau under Article 16(1)(i) of the 
        Agreement shall not have effect in the United States 
        until the USPTO has received the statements or 
        documents recorded thereby.

    The sixth declaration is mandated by Article 17(3)(c) of 
the Agreement. That Article requires that each Contracting 
Party notify the Director General as to the maximum duration of 
protection provided for by its law. Accordingly, the Department 
of State recommends that the U.S. instrument of ratification be 
accompanied by the following declaration:

          Pursuant to Article 17(3)(c) of the Agreement, the 
        United States declares that the maximum duration of 
        protection for designs provided for by its law is 15 
        years from grant.

    The seventh declaration, authorized by Rule 8(1)(a) of the 
Agreement, allows the USPTO to 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. In addition, Rule 8(1)(b) states that any declaration 
pursuant to Rule 8(1)(a) specify the form and mandatory 
contents of any statement or document required for the purposes 
of that rule.
    The USPTO has determined that such a declaration is 
necessary in order to maintain its current examination practice 
of requiring that the applicant for protection of an industrial 
design be the creator of that design. Accordingly, the 
Department of State recommends that the United States 
instrument of ratification be accompanied by the following 
declaration:

          Pursuant to Rule 8(1) of the Agreement, the United 
        States declares that the law of the United States 
        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.

    The eighth declaration, authorized by Rule 13(4) of the 
Agreement, allows the USPTO to notify the Director General that 
the law of the United States requires a security clearance and 
that the period of one month identified in Rule 13(3) for the 
Office of a Contracting Party to forward an application to the 
IB, shall be replaced by a period of six months. This will 
allow for time to complete the security review of the 
applications currently required by 35 U.S.C. 181, et seq.
    The USPTO has ascertained that a declaration is necessary 
in order to ensure that international design applications can 
be reviewed for secrecy and security purposes. Accordingly, the 
Department of State recommends that the following declaration 
be included in the U.S. instrument of ratification:

          Pursuant to Rule 13(4) of the Agreement, the United 
        States 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 in light 
        of the security clearance required by United States 
        law.

    The ninth declaration, authorized by Rule 18(1)(b), allows 
the USPTO, as an Examining Office, to notify the Director 
General that the period of six months for notification of 
refusal referred to in Rule 18(1)(a) shall be replaced by a 
period of 12 months as to the United States. The USPTO has 
ascertained that such a declaration is necessary in order to 
maintain the integrity of its substantive examination 
procedures for applications filed under the Agreement. 
Accordingly, the Department of State recommends that the 
following declaration be included in the U.S. instrument of 
ratification:

          Pursuant to Rule 18(1)(b), the United States 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, as 
        the Office of the United States is an Examining Office 
        under the Agreement.''