# **Statement of Purpose and Need**

## Background

## 

## The Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, done at Geneva, Switzerland on July 2, 1999 ("Geneva Act"), traces its roots to, and revises, the Hague Agreement Concerning the International Deposit of Industrial Designs done at the Hague, Netherlands on November 6, 1925 ("Hague Agreement"). The most significant previous revisions of the Hague Agreement were the London Act of 1934 and the Hague Act of 1960. As of September 18, 2006, there are 43 Parties to the Hague Agreement and its revisions, of which 19 are Parties to the Geneva Act. Similarly to the original Hague Agreement and its earlier revisions, the Geneva Act facilitates intellectual property protection for industrial designs in Contracting Parties by streamlining the application process for multinational patent protection through use of a single international application procedure. 

The Hague Agreement and its previous revisions, however, did not meet
the needs of countries, such as the United States, that require a
substantive examination of designs for novelty and non-obviousness.
Accordingly, the United States never became a party to the original
Hague Agreement or its earlier revisions. Thus, the Geneva Act was
negotiated with the needs of examining offices, such as the United
States Patent and Trademark Office (USPTO), in mind. While maintaining
the U.S. substantive examination process for design applications under
the Geneva Act, it provides a streamlined design protection system for
U.S. owners of industrial designs who, by filing a single standardized
application at the USPTO in English, can apply for design protection in
each country that is Party to the Act. This system will benefit
especially small and medium-sized businesses.

## 

## Discussion

The proposed Hague Agreement Implementation Act makes no substantive
changes in United States design patent law with the exception of (i)
providing limited rights to patent applicants between the date that
their international design application is published and the date on
which they are granted a U.S. patent based on that application, (ii)
extending the patent term for designs from fourteen to fifteen years
from grant, and (iii) allowing the USPTO to use a published
international design registration as a basis for rejecting a
subsequently filed patent application that is directed at the same or
similar subject matter. The Act also specifies administrative procedures
to be followed by design patent applicants seeking multinational
registration under the Act. This legislation will allow the United
States to have the benefits of a multinational design protection system,
while protecting the U.S. substantive examination system.

The proposed bill would amend the federal patent law, in title 35 of the
United States Code, and known as the "Patent Act of 1952," by adding a
new Part V, containing a new Chapter 38 that comprises sections 381-391.
These sections set forth the qualifications needed to apply, through the
USPTO, for multinational registration of a design under the Act; provide
that the USPTO's substantive examination process will apply to
international design applications seeking patent protection in the
United States; and provide authority for the USPTO to fulfill its duties
under the treaty. The bill provides that the Act will not become
effective until the date of entry into force of the treaty with respect
to the United States. In addition to a new Part V, the legislation also
makes conforming amendments to title 35.

The proposed legislation and implementation of the Agreement will offer
significant benefits to U.S. owners of industrial designs. The
registration of industrial designs will be much easier for United States
applicants throughout the world in Contracting Parties. International
registration of a design under the Geneva Act will allow a design owner
to apply for protection in as many Parties to the Geneva Act as desired,
through a single filing.

Currently, a United States design applicant would have to file separate
applications for design protection in each country. Due to the
centralized registration procedure under the Geneva Act, cost savings to
United States industrial design owners are expected to be substantial.
In addition, the filing of a single application that is accepted by a
centralized office should lead to fewer processing mistakes and delays
on the part of both the applicant and the relevant foreign patent
offices involved. The passage of this legislation will therefore be of
great benefit to the United States.