# **[The "Hague Agreement Implementation Act"]{.underline}**

**SUMMARY:** The proposed Hague Agreement Implementation Act makes no
substantive changes in United States design patent law, with the
exception of 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,
of extending the patent term for designs from fourteen to fifteen years
from grant, and of allowing the United States Patent and Trademark
Office (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 international protection of designs. The Geneva Act of the Hague
Agreement Concerning the International Registration of Industrial
Designs, adopted at Geneva, Switzerland on July 2, 1999, ("treaty" or
"Geneva Act") provides a streamlined design protection system for United
States design applicants who, by filing one application at the USPTO in
English, can receive design protection from each country that is a Party
to the Agreement. This type of system would benefit especially small and
medium-sized businesses.

## THE HAGUE AGREEMENT

## 

## The 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, which entered into force in 1928, and was subsequently revised numerous times. The most significant of these previous revisions 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 facilitating multinational patent protection in a number of countries through use of a single international application procedure. 

The original Hague Agreement and its previous acts, 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 versions. Thus, the Geneva Act was
negotiated with the needs of examining offices, such as the USPTO, in
mind. This Act allows the United States to have the benefits of a
multinational design protection system while preserving the substantive
examination system of the United States.

## THE HAGUE AGREEMENT IMPLEMENTATION ACT

The proposed bill would amend the federal patent law, known as the
Patent Act of 1952, to add a new Part V, containing a new Chapter 38
that comprises sections 381-391. In addition, the bill makes other
conforming amendments to title 35. These amendments define the
qualifications needed to apply for an international registration for a
design; provide authority for the USPTO's substantive examination
process to apply to international design applications; 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.

**[Hague Agreement Implementation Act -- Section by Section
Analysis]{.underline}**

**SECTION 1. SHORT TITLE**: The short title is the "Hague Agreement
Implementation Act."

**SECTION 2. PROVISIONS TO IMPLEMENT THE GENEVA ACT OF THE HAGUE
AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF INDUSTRIAL
DESIGNS**. This section amends title 35 of the United States Code by
adding a new Part V with the following provisions:

Any person who is a national of the United States or has a domicile,
habitual residence or a real and effective industrial or commercial
establishment in the United States may file an international design
application through the United States Patent and Trademark Office
(USPTO). (Section 382(a)).

The USPTO shall perform all acts connected to the discharge of its
duties under the treaty, including the collection of fees. In addition,
the USPTO shall transmit the international design application to the
International Bureau upon payment of the transmittal fee subject only to
a secrecy review according to chapter 17 of title 35 of the United
States Code. (Section 382(b)).

The provisions of chapter 16 of title 35 of the United States Code will
apply to all international design applications, unless otherwise
provided in this legislation, so that all substantive and other matters
not mentioned in the treaty are governed in the same way as they are
with respect to national design applications. (Section 382(c)).

An international design application filed outside the USPTO on a design
made within the United States will constitute the filing of an
application in a foreign country within the meaning of chapter 17 for
the purposes of secrecy review and of obtaining a foreign filing
license. (Section 382(d)).

An international design application is required to contain certain items
in addition to those in a national design application. (Section 383).

Generally, the filing date of an international design application in the
United States is considered the effective registration date given by the
International Bureau under the treaty. In addition, an international
design application designating the United States that otherwise meets
the requirements of chapter 16 may be treated as a national design
application by the USPTO. (Section 384(a)).

However, an applicant may request review by the USPTO of the filing date
of the international design application in the United States. The review
may result in the applicant receiving a different filing date in the
United States than the effective registration date. (Section 384(b)).

An international design application that designates the United States
will have the same effect, from its filing date as determined in
accordance with proposed section 384, as that of a national application
for design patent regularly filed in the USPTO. (Section 385).

A national patent application shall be entitled to a right of priority
based on a prior international design application that designated at
least one country other than the United States. (Section 386(a)).

An international design application designating the United States shall
have a right of priority based on a prior foreign application, a prior
application filed under the Patent Cooperation Treaty designating at
least one country other than the United States, or a prior international
design application designating at least one country other than the
United States. (Section 386(b)).

An international design application may get the benefit of the filing
date of a prior national application, a prior application filed under
the Patent Cooperation Treaty designating the United States, or a prior
international design application designating the United States. In
addition, a national application may get the benefit of the filing date
of a prior international design application designating the United
States. (Section 386(c)).

An applicant's failure to act within prescribed time limits with respect
to an international design application may be excused upon a showing to
the USPTO of unintentional delay. (Section 387).

Generally, although made subject to the provisions of sections 384 and
387 of this part, if an international design application designating the
United States is withdrawn, renounced, cancelled or is considered
withdrawn or abandoned either generally or with respect to the United
States, the designation of the United States shall have no effect and
shall be considered as not having been made. However, the withdrawn,
renounced, cancelled, or abandoned international design application may
serve as the basis of a claim of priority, if it designated a country
other than the United States. In addition, a national application may
claim the benefit of an earlier filing date based on such an
international design application if the national application was filed
before the date of withdrawal or abandonment. (Section 388).

The Director of the USPTO shall cause examination of international
design applications designating the United States. (Section 389(a)).

All questions of substance and, to the extent consistent with the
treaty, of procedure will be determined in the same way as they are with
respect to national design applications filed under chapter 16. (Section
389(b)).

The Director of the USPTO will prescribe fees for filing international
design applications, for designations of the United States and for any
other processing, services or materials relating to international design
applications in order to recoup the expenses of these procedures.
(Section 389(c)).

The USPTO will not accept an international design application
designating the United States that was filed by anyone not entitled to
file a national application under chapter 16 of title 35. Such
application also may not serve as the basis for an earlier filing date
under 35 U.S.C. § 120, but may serve as a priority claim pursuant to 35
U.S.C. § 119 if the United States was not the sole country designated.
(Section 389(d)).

United States design patents will be issued based on international
design applications and will have the same force and effect of a United
States patent issued on a design application under chapter 16 of title
35. (Section 389(e)).

Publication of the international design registration by the
International Bureau under the treaty shall confer no rights or effect
other than as a printed publication, as prior art pursuant to 35 U.S.C.
§ 102(e)(3), which will allow such a publication to have the same prior
art effect as an eventually granted patent, or for the purpose of
provisional rights pursuant to section 154(d)(1). (Section 390).

Recordings by the International Bureau regarding change of ownership of
an international design application wherein the statements or documents
evidencing the change of ownership are publicly available in the United
States as prescribed by the Director of the USPTO in regulations shall
have the same effect as a recording by the USPTO under 35 U.S.C. § 261.
(Section 391).

## SECTION 3. CONFORMING AMENDMENTS

The prior art effect of a publication by the International Bureau of an
international design application designating the United States under the
treaty will have the same effect as that of a patent that would be
granted on such an application. (Sections 102(e)(2) and 102(e)(3)).

A patent based upon an international design application may include the
right to obtain a reasonable royalty from another who made, used, sold,
offered for sale or imported into the United States a substantially
similar invention between the date that the international design
application was published and the date that it issued into a patent,
after having actual notice of the published application. (Section
154(d)).

The patent term of design patents based on both national applications
and international design applications would be 15 years from the grant
of the patent. (Section 173).

There are additional conforming amendments made to ensure consistency
with the new part, particularly as to certain priority issues. (Sections
104(a)(1), 111(b)(7), 120, 154(a)(3), and 365(b) and (c)).

**SECTION 4. EFFECTIVE DATE**.

The effective date of the Act will be the date on which the Geneva Act
of the Hague Agreement enters into force with respect to the United
States.