II 

Calendar No. 532 

112TH CONGRESS 

2D SESSION S. 3486 

To implement the provisions of the Hague Agreement and the Patent Law 

Treaty. 

IN THE SENATE OF THE UNITED STATES 

AUGUST 2, 2012 

Mr. LEAHY (for himself, Mr. GRASSLEY, and Mr. HATCH) introduced the following bill; which was read twice and referred to the Committee on the 

Judiciary 

SEPTEMBER 20, 2012 

Reported by Mr. LEAHY, with an amendment 

[Strike out all after the enacting clause and insert the part printed in italic] 

A BILL 

To implement the provisions of the Hague Agreement and 

the Patent Law Treaty. 

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 

3 SECTION 1. SHORT TITLE. 

4 This Act may be cited as the ‘‘Patent Law Treaties 

5 Implementation Act of 2012’’. 


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1 TITLE I—HAGUE AGREEMENT 

2 CONCERNING INTER3 NATIONAL REGISTRATION OF 

4 INDUSTRIAL DESIGNS 

5 SEC. 101. THE HAGUE AGREEMENT CONCERNING INTER6 NATIONAL REGISTRATION OF INDUSTRIAL 

7 DESIGNS. 

8 (a) IN GENERAL.—Title 35, United States Code, is 

9 amended by adding at the end the following: 

10 ‘‘PART V—THE HAGUE AGREEMENT CONCERNING 

11 INTERNATIONAL REGISTRATION OF INDUS12 TRIAL DESIGNS 

‘‘CHAPTER Sec. 

‘‘38. International design applications ...................................................... 381. 

13 ‘‘CHAPTER 38—INTERNATIONAL DESIGN 

14 APPLICATIONS 

‘‘Sec. 

‘‘381. Definitions. 

‘‘382. Filing international design applications. 

‘‘383. International design application. 

‘‘384. Filing date. 

‘‘385. Effect of international design application. 

‘‘386. Right of priority. 

‘‘387. Relief from prescribed time limits. 

‘‘388. Withdrawn or abandoned international design application. 

‘‘389. Examination of international design application. 

‘‘390. Publication of international design application. 

15 ‘‘§ 381. Definitions 

16 ‘‘(a) IN GENERAL.—When used in this part, unless 

17 the context otherwise indicates— 


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1 ‘‘(1) the term ‘treaty’ means the Geneva Act of 

2 the Hague Agreement Concerning the International 

3 Registration of Industrial Designs adopted at Gene4 va on July 2, 1999; 

5 ‘‘(2) the term ‘regulations’— 

6 ‘‘(A) when capitalized, means the Common 

7 Regulations under the treaty; and 

8 ‘‘(B) when not capitalized, means the regu9 lations established by the Director under this 

10 title; 

11 ‘‘(3) the term ‘designation’ means a request 

12 that an international registration have effect in a 

13 Contracting Party to the treaty; 

14 ‘‘(4) the term ‘International Bureau’ means the 

15 international intergovernmental organization that is 

16 recognized as the coordinating body under the treaty 

17 and the Regulations; 

18 ‘‘(5) the term ‘effective registration date’ means 

19 the date of international registration indicated by 

20 the International Bureau under the treaty; 

21 ‘‘(6) the term ‘international design application’ 

22 means an application for international registration; 

23 and 


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1 ‘‘(7) the term ‘international registration’ means 

2 the international registration of an industrial design 

3 filed under the treaty. 

4 ‘‘(b) RULE OF CONSTRUCTION.—Terms and expres5 sions not defined in this part are to be taken in the sense 

6 indicated by the treaty and the Regulations. 

7 ‘‘§ 382. Filing international design applications 

8 ‘‘(a) IN GENERAL.—Any person who is a national of 

9 the United States, or has a domicile, a habitual residence, 

10 or a real and effective industrial or commercial establish11 ment in the United States, may file an international de12 sign application by submitting to the Patent and Trade13 mark Office an application in such form, together with 

14 such fees, as may be prescribed by the Director. 

15 ‘‘(b) REQUIRED ACTION.—The Patent and Trade16 mark Office shall perform all acts connected with the dis17 charge of its duties under the treaty, including the collec18 tion of international fees and transmittal thereof to the 

19 International Bureau. Subject to chapter 17 of this title, 

20 international design applications shall be forwarded by the 

21 Patent and Trademark Office to the International Bu22 reau, upon payment of a transmittal fee. 

23 ‘‘(c) APPLICABILITY OF CHAPTER 16.—Except as 

24 otherwise provided in this chapter, the provisions of chap25 ter 16 of this title shall apply. 


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1 ‘‘(d) APPLICATION FILED IN ANOTHER COUNTRY.— 

2 An international design application on an industrial design 

3 made in this country shall be considered to constitute the 

4 filing of an application in a foreign country within the 

5 meaning of chapter 17 of this title if the international de6 sign application is filed— 

7 ‘‘(1) in a country other than the United States; 

8 ‘‘(2) at the International Bureau; or 

9 ‘‘(3) with an intergovernmental organization. 

10 ‘‘§ 383. International design application 

11 ‘‘In addition to any requirements pursuant to chapter 

12 16 of this title, the international design application shall 

13 contain— 

14 ‘‘(1) a request for international registration 

15 under the treaty; 

16 ‘‘(2) an indication of the designated Con17 tracting Parties; 

18 ‘‘(3) data concerning the applicant as pre19 scribed in the treaty and the Regulations; 

20 ‘‘(4) copies of a reproduction or, at the choice 

21 of the applicant, of several different reproductions of 

22 the industrial design that is the subject of the inter23 national application, presented in the number and 

24 manner prescribed in the treaty and the Regula25 tions; 


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1 ‘‘(5) an indication of the product or products 

2 which constitute the industrial design or in relation 

3 to which the industrial design is to be used, as pre4 scribed in the treaty and the Regulations; 

5 ‘‘(6) the fees prescribed in the treaty and the 

6 Regulations; and 

7 ‘‘(7) any other particulars prescribed in the 

8 Regulations. 

9 ‘‘§ 384. Filing date 

10 ‘‘(a) IN GENERAL.—Subject to subsection (b), the fil11 ing date of an international design application in the 

12 United States shall be the effective registration date. Not13 withstanding the provisions of this part, any international 

14 design application designating the United States that oth15 erwise meets the requirements of chapter 16 of this title 

16 may be treated as a design application under chapter 16 

17 of this title. 

18 ‘‘(b) REVIEW.—An applicant may request review by 

19 the Director of the filing date of the international design 

20 application in the United States. The Director may deter21 mine that the filing date of the international design appli22 cation in the United States is a date other than the effec23 tive registration date. The Director may establish proce24 dures, including the payment of a surcharge, to review the 

25 filing date under this section. Such review may result in 


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1 a determination that the application has a filing date in 

2 the United States other than the effective registration 

3 date. 

4 ‘‘§ 385. Effect of international design application 

5 ‘‘An international design application designating the 

6 United States shall have the effect, for all purposes, from 

7 its filing date determined in accordance with section 384 

8 of this part, of an application for patent filed in the Patent 

9 and Trademark Office pursuant to chapter 16 of this title. 

10 ‘‘§ 386. Right of priority 

11 ‘‘(a) NATIONAL APPLICATION.—In accordance with 

12 the conditions and requirements of subsections (a) 

13 through (d) of section 119 of this title and section 172 

14 of this title, a national application shall be entitled to the 

15 right of priority based on a prior international design ap16 plication which designated at least one country other than 

17 the United States. 

18 ‘‘(b) PRIOR FOREIGN APPLICATION.—In accordance 

19 with the conditions and requirements of subsections (a) 

20 through (d) of section 119 of this title and section 172 

21 of this title and the treaty and the Regulations, an inter22 national design application designating the United States 

23 shall be entitled to the right of priority based on a prior 

24 foreign application, a prior international application as de25 fined in section 351(c) of this title designating at least 


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1 one country other than the United States, or a prior inter2 national design application designating at least one coun3 try other than the United States. 

4 ‘‘(c) PRIOR NATIONAL APPLICATION.—In accordance 

5 with the conditions and requirements of section 120 of this 

6 title, an international design application designating the 

7 United States shall be entitled to the benefit of the filing 

8 date of a prior national application, a prior international 

9 application as defined in section 351(c) of this title desig10 nating the United States, or a prior international design 

11 application designating the United States, and a national 

12 application shall be entitled to the benefit of the filing date 

13 of a prior international design application designating the 

14 United States. If any claim for the benefit of an earlier 

15 filing date is based on a prior international application as 

16 defined in section 351(c) of this title which designated but 

17 did not originate in the United States or a prior inter18 national design application which designated but did not 

19 originate in the United States, the Director may require 

20 the filing in the Patent and Trademark Office of a cer21 tified copy of such application together with a translation 

22 thereof into the English language, if it was filed in another 

23 language. 


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1 ‘‘§ 387. Relief from prescribed time limits 

2 ‘‘An applicant’s failure to act within prescribed time 

3 limits in connection with requirements pertaining to an 

4 international design application may be excused as to the 

5 United States upon a showing satisfactory to the Director 

6 of unintentional delay and under such conditions, includ7 ing a requirement for payment of the fee specified in sec8 tion 41(a)(7) of this title, as may be prescribed by the 

9 Director. 

10 ‘‘§ 388. Withdrawn or abandoned international design 

11 application 

12 ‘‘Subject to sections 384 and 387 of this part, if an 

13 international design application designating the United 

14 States is withdrawn, renounced or canceled or considered 

15 withdrawn or abandoned, either generally or as to the 

16 United States, under the conditions of the treaty and the 

17 Regulations, the designation of the United States shall 

18 have no effect after the date of withdrawal, renunciation, 

19 cancellation, or abandonment and shall be considered as 

20 not having been made, unless a claim for benefit of a prior 

21 filing date under section 386(c) of this part was made in 

22 a national application, or an international design applica23 tion designating the United States, or a claim for benefit 

24 under section 365(c) was made in an international appli25 cation designating the United States, filed before the date 

26 of such withdrawal, renunciation, cancellation, or abanVerDate Mar 15 2010 23:50 Sep 20, 2012 Jkt 099200 PO 00000 Frm 00009 Fmt 6652 Sfmt 6401 E:\BILLS\S3486.RS S3486

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1 donment. However, such withdrawn, renounced, canceled, 

2 or abandoned international design application may serve 

3 as the basis for a claim of priority under subsections (a) 

4 and (b) of section 386, or under subsection (a) or (b) of 

5 section 365, if it designated a country other than the 

6 United States. 

7 ‘‘§ 389. Examination of international design applica8 tion 

9 ‘‘(a) IN GENERAL.—The Director shall cause an ex10 amination pursuant to this title of an international design 

11 application designating the United States. 

12 ‘‘(b) APPLICABILITY OF CHAPTER 16.—All questions 

13 of substance, and, unless otherwise required by the treaty 

14 and Regulations, procedures regarding an international 

15 design application designating the United States shall be 

16 determined as in the case of applications filed under chap17 ter 16 of this title. 

18 ‘‘(c) FEES.—The Director may prescribe fees for fil19 ing international design applications, for designating the 

20 United States, and for any other processing, services, or 

21 materials relating to international design applications, and 

22 may provide for later payment of such fees, including sur23 charges for later submission of fees. 

24 ‘‘(d) ISSUANCE OF PATENT.—The Director may issue 

25 a patent based on an international design application desVerDate Mar 15 2010 23:50 Sep 20, 2012 Jkt 099200 PO 00000 Frm 00010 Fmt 6652 Sfmt 6401 E:\BILLS\S3486.RS S3486

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1 ignating the United States, in accordance with the provi2 sions of this title. Such patent shall have the force and 

3 effect of a patent issued on an application filed under 

4 chapter 16 of this title. 

5 ‘‘§ 390. Publication of international design applica6 tion 

7 ‘‘The publication under the treaty defined in section 

8 381(a)(1) of an international design application desig9 nating the United States shall be deemed a publication 

10 under section 122(b).’’. 

11 (b) CONFORMING AMENDMENT.—The table of parts 

12 at the beginning of title 35, United States Code, is amend13 ed by adding at the end the following: 

‘‘V. The Hague Agreement concerning international registration of industrial designs ............................................................. 401’’. 

14 SEC. 102. CONFORMING AMENDMENTS. 

15 Title 35, United States Code, is amended— 

16 (1) in section 100(i)(1)(B), by striking ‘‘right 

17 of priority under section 119, 365(a), or 365(b) or 

18 to the benefit of an earlier filing date under section 

19 120, 121, or 365(c)’’ and inserting ‘‘right of priority 

20 under section 119, 365(a), 365(b), 386(a), or 386(b) 

21 or to the benefit of an earlier filing date under sec22 tion 120, 121, 365(c), or 386(c)’’; 

23 (2) in section 102(d)(2), by striking ‘‘to claim 

24 a right of priority under section 119, 365(a), or 


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1 365(b), or to claim the benefit of an earlier filing 

2 date under section 120, 121, or 365(c)’’ and insert3 ing ‘‘to claim a right of priority under section 119, 

4 365(a), 365(b), 386(a), or 386(b), or to claim the 

5 benefit of an earlier filing date under section 120, 

6 121, 365(c), or 386(c)’’; 

7 (3) in section 111(b)(7)— 

8 (A) by striking ‘‘section 119 or 365(a)’’ 

9 and inserting ‘‘section 119, 365(a), or 386(a)’’; 

10 and 

11 (B) by striking ‘‘section 120, 121, or 

12 365(c)’’ and inserting ‘‘section 120, 121, 

13 365(c), or 386(c)’’; 

14 (4) in section 115(g)(1), by striking ‘‘section 

15 120, 121, or 365(c)’’ and inserting ‘‘section 120, 

16 121, 365(c), or 386(c)’’; 

17 (5) in section 120, in the first sentence, by 

18 striking ‘‘section 363’’ and inserting ‘‘section 363 or 

19 385’’; 

20 (6) in section 154— 

21 (A) in subsection (a)— 

22 (i) in paragraph (2), by striking ‘‘sec23 tion 120, 121, or 365(c)’’ and inserting 

24 ‘‘section 120, 121, 365(c), or 386(c)’’; and 


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1 (ii) in paragraph (3), by striking ‘‘sec2 tion 119, 365(a), or 365(b)’’ and inserting 

3 ‘‘section 119, 365(a), 365(b), 386(a), or 

4 386(b)’’; and 

5 (B) in subsection (d)(1), by inserting ‘‘or 

6 an international design application filed under 

7 the treaty defined in section 381(a)(1) desig8 nating the United States under Article 5 of 

9 such treaty’’ after ‘‘Article 21(2)(a) of such 

10 treaty’’; 

11 (7) in section 173, by striking ‘‘fourteen years’’ 

12 and inserting ‘‘15 years’’; 

13 (8) in section 365(c)— 

14 (A) in the first sentence, by striking ‘‘or a 

15 prior international application designating the 

16 United States’’ and inserting ‘‘, a prior inter17 national application designating the United 

18 States, or a prior international design applica19 tion as defined in section 381(a)(6) of this title 

20 designating the United States’’; and 

21 (B) in the second sentence, by inserting 

22 ‘‘or a prior international design application as 

23 defined in section 381(a)(6) of this title which 

24 designated but did not originate in the United 


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1 States’’ after ‘‘did not originate in the United 

2 States’’; and 

3 (9) in section 366— 

4 (A) in the first sentence, by striking ‘‘un5 less a claim’’ and all that follows through 

6 ‘‘withdrawl.’’ and inserting ‘‘unless a claim for 

7 benefit of a prior filing date under section 

8 365(c) of this section was made in a national 

9 application, or an international application des10 ignating the United States, or a claim for ben11 efit under section 386(c) was made in an inter12 national design application designating the 

13 United States, filed before the date of such 

14 withdrawal.’’; and 

15 (B) by striking the second sentence and in16 serting the following: ‘‘However, such with17 drawn international application may serve as 

18 the basis for a claim of priority under section 

19 365 (a) and (b) of this part, or under section 

20 386 (a) or (b), if it designated a country other 

21 than the United States.’’. 

22 SEC. 103. EFFECTIVE DATE. 

23 (a) IN GENERAL.—The amendments made by this 

24 title shall be effective on the later of— 


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1 (1) the date that is 1 year after the date of en2 actment of this Act, or 

3 (2) the date of entry into force of the treaty, as 

4 defined in section 381 of title 35, as amended by 

5 this Act, with respect to the United States. 

6 (b) APPLICABILITY OF AMENDMENTS.— 

7 (1) IN GENERAL.—Subject to paragraph (2), 

8 the amendments made by this title shall apply only 

9 to international design applications, international 

10 applications as defined in section 351(c) of title 35, 

11 United States Code, and national applications filed 

12 on and after the effective date set forth in sub13 section (a), and patents issuing thereon. 

14 (2) EXCEPTION.—Sections 100(i) and 102(d) of 

15 title 35, United States Code, as amended by this 

16 title, shall not apply to an application, or any patent 

17 issuing thereon, unless it is described in section 

18 3(n)(1) of the Leahy-Smith America Invents Act (35 

19 U.S.C. 100 note). 

20 TITLE II—PATENT LAW TREATY 

21 IMPLEMENTATION 

22 SEC. 201. PROVISIONS TO IMPLEMENT THE PATENT LAW 

23 TREATY. 

24 (a) APPLICATION FILING DATE.—Section 111 of title 

25 35, United States Code, is amended— 


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1 (1) in subsection (a), by striking paragraphs 

2 (3) and (4) and inserting the following: 

3 ‘‘(3) FEE, OATH OR DECLARATION, AND

4 CLAIMS.—The application shall be accompanied by 

5 the fee required by law. The fee, oath or declaration, 

6 and 1 or more claims may be submitted after the fil7 ing date of the application, within such period and 

8 under such conditions, including the payment of a 

9 surcharge, as may be prescribed by the Director. 

10 Upon failure to submit the fee, oath or declaration, 

11 and 1 or more claims within such prescribed period, 

12 the application shall be regarded as abandoned. 

13 ‘‘(4) FILING DATE.—The filing date of an ap14 plication shall be the date on which a specification, 

15 with or without claims, is received in the United 

16 States Patent and Trademark Office.’’; 

17 (2) in subsection (b), by striking paragraphs 

18 (3) and (4) and inserting the following: 

19 ‘‘(3) FEE.—The application shall be accom20 panied by the fee required by law. The fee may be 

21 submitted after the filing date of the application, 

22 within such period and under such conditions, in23 cluding the payment of a surcharge, as may be pre24 scribed by the Director. Upon failure to submit the 


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1 fee within such prescribed period, the application 

2 shall be regarded as abandoned. 

3 ‘‘(4) FILING DATE.—The filing date of a provi4 sional application shall be the date on which a speci5 fication, with or without claims, is received in the 

6 United States Patent and Trademark Office.’’; and 

7 (3) by adding at the end the following: 

8 ‘‘(c) PRIOR FILED APPLICATION.—The Director may 

9 prescribe the conditions, including the payment of a sur10 charge, under which a reference made upon the filing of 

11 an application under subsection (a) to a previously filed 

12 application, specifying the previously filed application by 

13 application number and the intellectual property authority 

14 or country in which the application was filed, shall con15 stitute the specification and any drawings of the subse16 quent application for purposes of a filing date. A copy of 

17 the specification and any drawings of the previously filed 

18 application shall be submitted within such period and 

19 under such conditions as may be prescribed by the Direc20 tor. A failure to submit the copy of the specification and 

21 any drawings of the previously filed application within the 

22 prescribed period shall result in application being regarded 

23 as abandoned and treated as having never been filed.’’. 

24 (b) RELIEF IN RESPECT OF TIME LIMITS AND REIN25 STATEMENT OF RIGHTS.— 


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1 (1) IN GENERAL.—Chapter 2 of title 35, United 

2 States Code, is amended by adding at the end the 

3 following: 

4 ‘‘§ 27. Revival of applications; reinstatement of reex5 amination proceedings 

6 ‘‘(a) IN GENERAL.—The Director may establish pro7 cedures, including the requirement for payment of the fee 

8 specified in section 41(a)(7), to revive an unintentionally 

9 abandoned application for patent, accept an unintention10 ally delayed payment of the fee for issuing each patent, 

11 or accept an unintentionally delayed response by the pat12 ent owner in a reexamination proceeding, upon petition 

13 by the applicant for patent or patent owner.’’. 

14 (2) TECHNICAL AND CONFORMING AMEND15 MENT.—The table of sections for chapter 2 of title 

16 35, United States Code, is amended by adding at 

17 the end the following: 

‘‘27. Revival of applications; reinstatement of reexamination proceedings.’’. 

18 (c) RESTORATION OF PRIORITY RIGHT.—Title 35, 

19 United States Code, is amended— 

20 (1) in section 119— 

21 (A) in subsection (a), by adding at the end 

22 the following: ‘‘The Director may prescribe reg23 ulations, including the requirement for payment 

24 of the fee specified in section 41(a)(7), pursu25 ant to which the 12-month period set forth in 


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1 this subsection may be extended by an addi2 tional 2 months if the delay in filing the appli3 cation in this country within the 12-month pe4 riod was unintentional.’’; and 

5 (B) in subsection (e)— 

6 (i) in paragraph (1)— 

7 (I) by inserting after the first 

8 sentence the following: ‘‘The Director 

9 may prescribe regulations, including 

10 the requirement for payment of the 

11 fee specified in section 41(a)(7), pur12 suant to which the 12-month period 

13 set forth in this subsection may be ex14 tended by an additional 2 months if 

15 the delay in filing the application 

16 under section 111(a) or section 363 

17 within the 12-month period was unin18 tentional.’’; and 

19 (II) in the last sentence— 

20 (aa) by striking ‘‘including 

21 the payment of a surcharge’’ and 

22 inserting ‘‘including the payment 

23 of the fee specified in section 

24 41(a)(7)’’; and 


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1 (bb) by striking ‘‘during the 

2 pendency of the application’’; and 

3 (ii) in paragraph (3), by adding at the 

4 end the following: ‘‘For an application for 

5 patent filed under section 363 in a foreign 

6 Receiving Office, the 12-month and addi7 tional 2 month period set forth in this sub8 section shall be extended as provided under 

9 the treaty and Regulations as defined in 

10 section 351.’’; and 

11 (2) in section 365(b), by adding at the end the 

12 following: ‘‘The Director may establish procedures, 

13 including the requirement for payment of the fee 

14 specified in section 41(a)(7), to accept an uninten15 tionally delayed claim for priority under the treaty 

16 and the Regulations, and to accept a priority claim 

17 where such priority claim pertains to an application 

18 that was not filed within the priority period specified 

19 in the treaty and Regulations, but was filed within 

20 the additional 2-month period specified under sec21 tion 119(a) or the treaty and Regulations.’’. 

22 (d) RECORDATION OF OWNERSHIP INTERESTS.— 

23 Section 261 of title 35, United States Code, is amended— 

24 (1) in the first undesignated paragraph by add25 ing at the end the following: ‘‘The Patent and 


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1 Trademark Office shall maintain a register of inter2 ests in applications for patents and patents and shall 

3 record any document related thereto upon request, 

4 and may require a fee therefor.’’; and 

5 (2) in the fourth undesignated paragraph by 

6 striking ‘‘An assignment’’ and inserting ‘‘An interest 

7 that constitutes an assignment’’. 

8 SEC. 202. CONFORMING AMENDMENTS. 

9 (a) IN GENERAL.—Section 171 of title 35, United 

10 States Code, is amended by adding at the end the fol11 lowing: 

12 ‘‘The filing date of an application for patent for de13 sign shall be the date on which the specification as pre14 scribed by section 112 and any required drawings are 

15 filed.’’. 

16 (b) RELIEF IN RESPECT OF TIME LIMITS AND REIN17 STATEMENT OF RIGHT.—Title 35, United States Code, is 

18 amended— 

19 (1) in section 41— 

20 (A) in subsection (a), by striking sub21 section (7) and inserting the following: 

22 ‘‘(7) REVIVAL FEES.—On filing each petition 

23 for the revival of an abandoned application for a 

24 patent, for the delayed payment of the fee for 

25 issuing each patent, for the delayed response by the 


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1 patent owner in any reexamination proceeding, for 

2 the delayed payment of the fee for maintaining a 

3 patent in force, for the delayed submission of a pri4 ority or benefit claim, or for the extension of the 12- 

5 month period for filing a subsequent application, 

6 $1,700.00. The Director may refund any part of the 

7 fee specified in this paragraph, in exceptional cir8 cumstances as determined by the Director’’; and 

9 (B) in subsection (c), by striking para10 graph (1) and inserting the following: 

11 ‘‘(1) ACCEPTANCE.—The Director may accept 

12 the payment of any maintenance fee required by 

13 subsection (b) after the 6-month grace period if the 

14 delay is shown to the satisfaction of the Director to 

15 have been unintentional. The Director may require 

16 the payment of the fee specified in paragraph (a)(7) 

17 as a condition of accepting payment of any mainte18 nance fee after the 6-month grace period. If the Di19 rector accepts payment of a maintenance fee after 

20 the 6-month grace period, the patent shall be consid21 ered as not having expired at the end of the grace 

22 period.’’; 

23 (2) in section 119(b)(2), in the second sentence, 

24 by striking ‘‘including the payment of a surcharge’’ 


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1 and inserting ‘‘including the requirement for pay2 ment of the fee specified in section 41(a)(7)’’; 

3 (3) in section 120, in the fourth sentence, by 

4 striking ‘‘including the payment of a surcharge’’ and 

5 inserting ‘‘including the requirement for payment of 

6 the fee specified in section 41(a)(7)’’; 

7 (4) in section 122(b)(2)(B)(iii), in the second 

8 sentence, by striking ‘‘, unless it is shown’’ and all 

9 that follows through ‘‘unintentional’’; 

10 (5) in section 133, by striking ‘‘, unless it be 

11 shown’’ and all that follows through ‘‘unavoidable’’; 

12 (6) by striking section 151 and inserting the 

13 following: 

14 ‘‘§ 151. Issue of patent 

15 ‘‘If it appears that applicant is entitled to a patent 

16 under the law, a written notice of allowance of the applica17 tion shall be given or mailed to the applicant. The notice 

18 shall specify a sum, constituting the issue fee and any re19 quired publication fee, which shall be paid within 3 months 

20 thereafter. 

21 ‘‘Upon payment of this sum the patent may issue, 

22 but if payment is not timely made, the application shall 

23 be regarded as abandoned.’’; 

24 (7) in section 361, by striking subsection (c) 

25 and inserting the following: 


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1 ‘‘(c) International applications filed in the Patent and 

2 Trademark Office shall be filed in the English language, 

3 or an English translation shall be filed within such later 

4 time as may be fixed by the Director.’’; 

5 (8) in section 364, by striking subsection (b) 

6 and inserting the following: 

7 ‘‘(b) An applicant’s failure to act within prescribed 

8 time limits in connection with requirements pertaining to 

9 an international application may be excused as provided 

10 in the treaty and the Regulations.’’; and 

11 (9) in section 371(d), in the third sentence, by 

12 striking ‘‘, unless it be shown to the satisfaction of 

13 the Director that such failure to comply was un14 avoidable’’. 

15 SEC. 203. EFFECTIVE DATE. 

16 (a) IN GENERAL.—Except as provided in subsection 

17 (b), the amendments made by this title shall be effective 

18 on the date that is 1 year after the date of enactment 

19 of this Act and shall apply to all patents and to all applica20 tions for patent pending on or filed after the date that 

21 is 1 year after the date of enactment of this Act. 

22 (b) EXCEPTIONS.— 

23 (1) SECTION 201(a).—The amendments made 

24 by section 201(a) shall apply only to applications 


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1 filed on or after the date that is 1 year after the 

2 date of enactment of this Act. 

3 (2) PATENT THAT IS SUBJECT OF LITIGA4 TION.—The amendments made by this title shall 

5 have no effect with respect to any patent that is the 

6 subject of litigation in an action commenced before 

7 the date that is 1 year after the date of enactment 

8 of this Act. 

9 SECTION 1. SHORT TITLE. 

10 This Act may be cited as the ‘‘Patent Law Treaties 

11 Implementation Act of 2012’’. 

12 TITLE I—HAGUE AGREEMENT 

13 CONCERNING INTER14 NATIONAL REGISTRATION OF 

15 INDUSTRIAL DESIGNS 

16 SEC. 101. THE HAGUE AGREEMENT CONCERNING INTER17 NATIONAL REGISTRATION OF INDUSTRIAL 

18 DESIGNS. 

19 (a) IN GENERAL.—Title 35, United States Code, is 

20 amended by adding at the end the following: 

21 ‘‘PART V—THE HAGUE AGREEMENT CONCERNING 

22 INTERNATIONAL REGISTRATION OF INDUS23 TRIAL DESIGNS 

‘‘CHAPTER Sec. 

‘‘38. International design applications .......................................................... 381. 


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1 ‘‘CHAPTER 38—INTERNATIONAL DESIGN 

2 APPLICATIONS 

‘‘Sec. 

‘‘381. Definitions. 

‘‘382. Filing international design applications. 

‘‘383. International design application. 

‘‘384. Filing date. 

‘‘385. Effect of international design application. 

‘‘386. Right of priority. 

‘‘387. Relief from prescribed time limits. 

‘‘388. Withdrawn or abandoned international design application. 

‘‘389. Examination of international design application. 

‘‘390. Publication of international design application. 

3 ‘‘§ 381. Definitions 

4 ‘‘(a) IN GENERAL.—When used in this part, unless the 

5 context otherwise indicates— 

6 ‘‘(1) the term ‘treaty’ means the Geneva Act of 

7 the Hague Agreement Concerning the International 

8 Registration of Industrial Designs adopted at Geneva 

9 on July 2, 1999; 

10 ‘‘(2) the term ‘regulations’— 

11 ‘‘(A) when capitalized, means the Common 

12 Regulations under the treaty; and 

13 ‘‘(B) when not capitalized, means the regu14 lations established by the Director under this 

15 title; 

16 ‘‘(3) the terms ‘designation’, ‘designating’, and 

17 ‘designate’ refer to a request that an international 

18 registration have effect in a Contracting Party to the 

19 treaty; 


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1 ‘‘(4) the term ‘International Bureau’ means the 

2 international intergovernmental organization that is 

3 recognized as the coordinating body under the treaty 

4 and the Regulations; 

5 ‘‘(5) the term ‘effective registration date’ means 

6 the date of international registration determined by 

7 the International Bureau under the treaty; 

8 ‘‘(6) the term ‘international design application’ 

9 means an application for international registration; 

10 and 

11 ‘‘(7) the term ‘international registration’ means 

12 the international registration of an industrial design 

13 filed under the treaty. 

14 ‘‘(b) RULE OF CONSTRUCTION.—Terms and expres15 sions not defined in this part are to be taken in the sense 

16 indicated by the treaty and the Regulations. 

17 ‘‘§ 382. Filing international design applications 

18 ‘‘(a) IN GENERAL.—Any person who is a national of 

19 the United States, or has a domicile, a habitual residence, 

20 or a real and effective industrial or commercial establish21 ment in the United States, may file an international design 

22 application by submitting to the Patent and Trademark Of23 fice an application in such form, together with such fees, 

24 as may be prescribed by the Director. 


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1 ‘‘(b) REQUIRED ACTION.—The Patent and Trademark 

2 Office shall perform all acts connected with the discharge 

3 of its duties under the treaty, including the collection of 

4 international fees and transmittal thereof to the Inter5 national Bureau. Subject to chapter 17, international de6 sign applications shall be forwarded by the Patent and 

7 Trademark Office to the International Bureau, upon pay8 ment of a transmittal fee. 

9 ‘‘(c) APPLICABILITY OF CHAPTER 16.—Except as oth10 erwise provided in this chapter, the provisions of chapter 

11 16 shall apply. 

12 ‘‘(d) APPLICATION FILED IN ANOTHER COUNTRY.—An 

13 international design application on an industrial design 

14 made in this country shall be considered to constitute the 

15 filing of an application in a foreign country within the 

16 meaning of chapter 17 if the international design applica17 tion is filed— 

18 ‘‘(1) in a country other than the United States; 

19 ‘‘(2) at the International Bureau; or 

20 ‘‘(3) with an intergovernmental organization. 

21 ‘‘§ 383. International design application 

22 ‘‘In addition to any requirements pursuant to chapter 

23 16, the international design application shall contain— 

24 ‘‘(1) a request for international registration 

25 under the treaty; 


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1 ‘‘(2) an indication of the designated Contracting 

2 Parties; 

3 ‘‘(3) data concerning the applicant as prescribed 

4 in the treaty and the Regulations; 

5 ‘‘(4) copies of a reproduction or, at the choice of 

6 the applicant, of several different reproductions of the 

7 industrial design that is the subject of the inter8 national design application, presented in the number 

9 and manner prescribed in the treaty and the Regula10 tions; 

11 ‘‘(5) an indication of the product or products 

12 that constitute the industrial design or in relation to 

13 which the industrial design is to be used, as pre14 scribed in the treaty and the Regulations; 

15 ‘‘(6) the fees prescribed in the treaty and the 

16 Regulations; and 

17 ‘‘(7) any other particulars prescribed in the Reg18 ulations. 

19 ‘‘§ 384. Filing date 

20 ‘‘(a) IN GENERAL.—Subject to subsection (b), the filing 

21 date of an international design application in the United 

22 States shall be the effective registration date. Notwith23 standing the provisions of this part, any international de24 sign application designating the United States that otherVerDate Mar 15 2010 23:50 Sep 20, 2012 Jkt 099200 PO 00000 Frm 00029 Fmt 6652 Sfmt 6203 E:\BILLS\S3486.RS S3486

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1 wise meets the requirements of chapter 16 may be treated 

2 as a design application under chapter 16. 

3 ‘‘(b) REVIEW.—An applicant may request review by 

4 the Director of the filing date of the international design 

5 application in the United States. The Director may deter6 mine that the filing date of the international design appli7 cation in the United States is a date other than the effective 

8 registration date. The Director may establish procedures, 

9 including the payment of a surcharge, to review the filing 

10 date under this section. Such review may result in a deter11 mination that the application has a filing date in the 

12 United States other than the effective registration date. 

13 ‘‘§ 385. Effect of international design application 

14 ‘‘An international design application designating the 

15 United States shall have the effect, for all purposes, from 

16 its filing date determined in accordance with section 384, 

17 of an application for patent filed in the Patent and Trade18 mark Office pursuant to chapter 16. 

19 ‘‘§ 386. Right of priority 

20 ‘‘(a) NATIONAL APPLICATION.—In accordance with the 

21 conditions and requirements of subsections (a) through (d) 

22 of section 119 and section 172, a national application shall 

23 be entitled to the right of priority based on a prior inter24 national design application that designated at least 1 coun25 try other than the United States. 


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1 ‘‘(b) PRIOR FOREIGN APPLICATION.—In accordance 

2 with the conditions and requirements of subsections (a) 

3 through (d) of section 119 and section 172 and the treaty 

4 and the Regulations, an international design application 

5 designating the United States shall be entitled to the right 

6 of priority based on a prior foreign application, a prior 

7 international application as defined in section 351(c) desig8 nating at least 1 country other than the United States, or 

9 a prior international design application designating at 

10 least 1 country other than the United States. 

11 ‘‘(c) PRIOR NATIONAL APPLICATION.—In accordance 

12 with the conditions and requirements of section 120, an 

13 international design application designating the United 

14 States shall be entitled to the benefit of the filing date of 

15 a prior national application, a prior international applica16 tion as defined in section 351(c) designating the United 

17 States, or a prior international design application desig18 nating the United States, and a national application shall 

19 be entitled to the benefit of the filing date of a prior inter20 national design application designating the United States. 

21 If any claim for the benefit of an earlier filing date is based 

22 on a prior international application as defined in section 

23 351(c) which designated but did not originate in the United 

24 States or a prior international design application which 

25 designated but did not originate in the United States, the 


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1 Director may require the filing in the Patent and Trade2 mark Office of a certified copy of such application together 

3 with a translation thereof into the English language, if it 

4 was filed in another language. 

5 ‘‘§ 387. Relief from prescribed time limits 

6 ‘‘An applicant’s failure to act within prescribed time 

7 limits in connection with requirements pertaining to an 

8 international design application may be excused as to the 

9 United States upon a showing satisfactory to the Director 

10 of unintentional delay and under such conditions, includ11 ing a requirement for payment of the fee specified in section 

12 41(a)(7), as may be prescribed by the Director. 

13 ‘‘§ 388. Withdrawn or abandoned international design 

14 application 

15 ‘‘Subject to sections 384 and 387, if an international 

16 design application designating the United States is with17 drawn, renounced or canceled or considered withdrawn or 

18 abandoned, either generally or as to the United States, 

19 under the conditions of the treaty and the Regulations, the 

20 designation of the United States shall have no effect after 

21 the date of withdrawal, renunciation, cancellation, or aban22 donment and shall be considered as not having been made, 

23 unless a claim for benefit of a prior filing date under sec24 tion 386(c) was made in a national application, or an 

25 international design application designating the United 


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1 States, or a claim for benefit under section 365(c) was made 

2 in an international application designating the United 

3 States, filed before the date of such withdrawal, renunci4 ation, cancellation, or abandonment. However, such with5 drawn, renounced, canceled, or abandoned international de6 sign application may serve as the basis for a claim of pri7 ority under subsections (a) and (b) of section 386, or under 

8 subsection (a) or (b) of section 365, if it designated a coun9 try other than the United States. 

10 ‘‘§ 389. Examination of international design applica11 tion 

12 ‘‘(a) IN GENERAL.—The Director shall cause an exam13 ination to be made pursuant to this title of an international 

14 design application designating the United States. 

15 ‘‘(b) APPLICABILITY OF CHAPTER 16.—All questions 

16 of substance and, unless otherwise required by the treaty 

17 and Regulations, procedures regarding an international de18 sign application designating the United States shall be de19 termined as in the case of applications filed under chapter 

20 16. 

21 ‘‘(c) FEES.—The Director may prescribe fees for filing 

22 international design applications, for designating the 

23 United States, and for any other processing, services, or 

24 materials relating to international design applications, and 


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1 may provide for later payment of such fees, including sur2 charges for later submission of fees. 

3 ‘‘(d) ISSUANCE OF PATENT.—The Director may issue 

4 a patent based on an international design application des5 ignating the United States, in accordance with the provi6 sions of this title. Such patent shall have the force and effect 

7 of a patent issued on an application filed under chapter 

8 16. 

9 ‘‘§ 390. Publication of international design applica10 tion 

11 ‘‘The publication under the treaty of an international 

12 design application designating the United States shall be 

13 deemed a publication under section 122(b).’’. 

14 (b) CONFORMING AMENDMENT.—The table of parts at 

15 the beginning of title 35, United States Code, is amended 

16 by adding at the end the following: 

‘‘V. The Hague Agreement concerning international registration of industrial designs ........................................................................ 401’’. 

17 SEC. 102. CONFORMING AMENDMENTS. 

18 Title 35, United States Code, is amended— 

19 (1) in section 100(i)(1)(B) (as amended by the 

20 Leahy-Smith America Invents Act (Public Law 112– 

21 29; 125 Stat. 284)), by striking ‘‘right of priority 

22 under section 119, 365(a), or 365(b) or to the benefit 

23 of an earlier filing date under section 120, 121, or 

24 365(c)’’ and inserting ‘‘right of priority under section 


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1 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit 

2 of an earlier filing date under section 120, 121, 

3 365(c), or 386(c)’’; 

4 (2) in section 102(d)(2) (as amended by the 

5 Leahy-Smith America Invents Act (Public Law 112– 

6 29; 125 Stat. 284)), by striking ‘‘to claim a right of 

7 priority under section 119, 365(a), or 365(b), or to 

8 claim the benefit of an earlier filing date under sec9 tion 120, 121, or 365(c)’’ and inserting ‘‘to claim a 

10 right of priority under section 119, 365(a), 365(b), 

11 386(a), or 386(b), or to claim the benefit of an earlier 

12 filing date under section 120, 121, 365(c), or 386(c)’’; 

13 (3) in section 111(b)(7)— 

14 (A) by striking ‘‘section 119 or 365(a)’’ and 

15 inserting ‘‘section 119, 365(a), or 386(a)’’; and 

16 (B) by striking ‘‘section 120, 121, or 

17 365(c)’’ and inserting ‘‘section 120, 121, 365(c), 

18 or 386(c)’’; 

19 (4) in section 115(g)(1) (as amended by the 

20 Leahy-Smith America Invents Act (Public Law 112– 

21 29; 125 Stat. 284)), by striking ‘‘section 120, 121, or 

22 365(c)’’ and inserting ‘‘section 120, 121, 365(c), or 

23 386(c)’’; 

24 (5) in section 120, in the first sentence, by strik25 ing ‘‘section 363’’ and inserting ‘‘section 363 or 385’’; 


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1 (6) in section 154— 

2 (A) in subsection (a)— 

3 (i) in paragraph (2), by striking ‘‘sec4 tion 120, 121, or 365(c)’’ and inserting 

5 ‘‘section 120, 121, 365(c), or 386(c)’’; and 

6 (ii) in paragraph (3), by striking ‘‘sec7 tion 119, 365(a), or 365(b)’’ and inserting 

8 ‘‘section 119, 365(a), 365(b), 386(a), or 

9 386(b)’’; and 

10 (B) in subsection (d)(1), by inserting ‘‘or 

11 an international design application filed under 

12 the treaty defined in section 381(a)(1) desig13 nating the United States under Article 5 of such 

14 treaty’’ after ‘‘Article 21(2)(a) of such treaty’’; 

15 (7) in section 173, by striking ‘‘fourteen years’’ 

16 and inserting ‘‘15 years’’; 

17 (8) in section 365(c)— 

18 (A) in the first sentence, by striking ‘‘or a 

19 prior international application designating the 

20 United States’’ and inserting ‘‘, a prior inter21 national application designating the United 

22 States, or a prior international design applica23 tion as defined in section 381(a)(6) designating 

24 the United States’’; and 


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1 (B) in the second sentence, by inserting ‘‘or 

2 a prior international design application as de3 fined in section 381(a)(6) which designated but 

4 did not originate in the United States’’ after 

5 ‘‘did not originate in the United States’’; and 

6 (9) in section 366— 

7 (A) in the first sentence, by striking ‘‘unless 

8 a claim’’ and all that follows through ‘‘with9 drawal.’’ and inserting ‘‘unless a claim for ben10 efit of a prior filing date under section 365(c) of 

11 this section was made in a national application, 

12 or an international application designating the 

13 United States, or a claim for benefit under sec14 tion 386(c) was made in an international design 

15 application designating the United States, filed 

16 before the date of such withdrawal.’’; and 

17 (B) by striking the second sentence and in18 serting the following: ‘‘However, such withdrawn 

19 international application may serve as the basis 

20 for a claim of priority under section 365 (a) and 

21 (b), or under section 386 (a) or (b), if it des22 ignated a country other than the United 

23 States.’’. 


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1 SEC. 103. EFFECTIVE DATE. 

2 (a) IN GENERAL.—The amendments made by this title 

3 shall take effect on the later of— 

4 (1) the date that is 1 year after the date of the 

5 enactment of this Act; or 

6 (2) the date of entry into force of the treaty with 

7 respect to the United States. 

8 (b) APPLICABILITY OF AMENDMENTS.— 

9 (1) IN GENERAL.—Subject to paragraph (2), the 

10 amendments made by this title shall apply only to 

11 international design applications, international ap12 plications, and national applications filed on and 

13 after the effective date set forth in subsection (a), and 

14 patents issuing thereon. 

15 (2) EXCEPTION.—Sections 100(i) and 102(d) of 

16 title 35, United States Code, as amended by this title, 

17 shall not apply to an application, or any patent 

18 issuing thereon, unless it is described in section 

19 3(n)(1) of the Leahy-Smith America Invents Act (35 

20 U.S.C. 100 note). 

21 (c) DEFINITIONS.—For purposes of this section— 

22 (1) the terms ‘‘treaty’’ and ‘‘international design 

23 application’’ have the meanings given those terms in 

24 section 381 of title 35, United States Code, as added 

25 by this title; 


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1 (2) the term ‘‘international application’’ has the 

2 meaning given that term in section 351(c) of title 35, 

3 United States Code; and 

4 (3) the term ‘‘national application’’ means ‘‘na5 tional application’’ within the meaning of chapter 38 

6 of title 35, United States Code, as added by this title. 

7 TITLE II—PATENT LAW TREATY 

8 IMPLEMENTATION 

9 SEC. 201. PROVISIONS TO IMPLEMENT THE PATENT LAW 

10 TREATY. 

11 (a) APPLICATION FILING DATE.—Section 111 of title 

12 35, United States Code, is amended— 

13 (1) in subsection (a), by striking paragraphs (3) 

14 and (4) and inserting the following: 

15 ‘‘(3) FEE, OATH OR DECLARATION, AND

16 CLAIMS.—The application shall be accompanied by 

17 the fee required by law. The fee, oath or declaration, 

18 and 1 or more claims may be submitted after the fil19 ing date of the application, within such period and 

20 under such conditions, including the payment of a 

21 surcharge, as may be prescribed by the Director. 

22 Upon failure to submit the fee, oath or declaration, 

23 and 1 or more claims within such prescribed period, 

24 the application shall be regarded as abandoned. 


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1 ‘‘(4) FILING DATE.—The filing date of an appli2 cation shall be the date on which a specification, with 

3 or without claims, is received in the United States 

4 Patent and Trademark Office.’’; 

5 (2) in subsection (b), by striking paragraphs (3) 

6 and (4) and inserting the following: 

7 ‘‘(3) FEE.—The application shall be accom8 panied by the fee required by law. The fee may be 

9 submitted after the filing date of the application, 

10 within such period and under such conditions, in11 cluding the payment of a surcharge, as may be pre12 scribed by the Director. Upon failure to submit the fee 

13 within such prescribed period, the application shall be 

14 regarded as abandoned. 

15 ‘‘(4) FILING DATE.—The filing date of a provi16 sional application shall be the date on which a speci17 fication, with or without claims, is received in the 

18 United States Patent and Trademark Office.’’; and 

19 (3) by adding at the end the following: 

20 ‘‘(c) PRIOR FILED APPLICATION.—Notwithstanding 

21 the provisions of subsection (a), the Director may prescribe 

22 the conditions, including the payment of a surcharge, under 

23 which a reference made upon the filing of an application 

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1 ber and the intellectual property authority or country in 

2 which the application was filed, shall constitute the speci3 fication and any drawings of the subsequent application 

4 for purposes of a filing date. A copy of the specification 

5 and any drawings of the previously filed application shall 

6 be submitted within such period and under such conditions 

7 as may be prescribed by the Director. A failure to submit 

8 the copy of the specification and any drawings of the pre9 viously filed application within the prescribed period shall 

10 result in the application being regarded as abandoned. Such 

11 application shall be treated as having never been filed, un12 less— 

13 ‘‘(1) the application is revived under section 27; 

14 and 

15 ‘‘(2) a copy of the specification and any draw16 ings of the previously filed application are submitted 

17 to the Director.’’. 

18 (b) RELIEF IN RESPECT OF TIME LIMITS AND REIN19 STATEMENT OF RIGHTS.— 

20 (1) IN GENERAL.—Chapter 2 of title 35, United 

21 States Code, is amended by adding at the end the fol22 lowing: 


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1 ‘‘§ 27. Revival of applications; reinstatement of reex2 amination proceedings 

3 ‘‘The Director may establish procedures, including the 

4 requirement for payment of the fee specified in section 

5 41(a)(7), to revive an unintentionally abandoned applica6 tion for patent, accept an unintentionally delayed payment 

7 of the fee for issuing each patent, or accept an unintention8 ally delayed response by the patent owner in a reexamina9 tion proceeding, upon petition by the applicant for patent 

10 or patent owner.’’. 

11 (2) CONFORMING AMENDMENT.—The table of sec12 tions for chapter 2 of title 35, United States Code, is 

13 amended by adding at the end the following: 

‘‘27. Revival of applications; reinstatement of reexamination proceedings.’’. 

14 (c) RESTORATION OF PRIORITY RIGHT.—Title 35, 

15 United States Code, is amended— 

16 (1) in section 119— 

17 (A) in subsection (a)— 

18 (i) by striking ‘‘twelve’’ and inserting 

19 ‘‘12’’; and 

20 (ii) by adding at the end the following: 

21 ‘‘The Director may prescribe regulations, 

22 including the requirement for payment of 

23 the fee specified in section 41(a)(7), pursu24 ant to which the 12-month period set forth 

25 in this subsection may be extended by an 


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1 additional 2 months if the delay in filing 

2 the application in this country within the 

3 12-month period was unintentional.’’; and 

4 (B) in subsection (e)— 

5 (i) in paragraph (1)— 

6 (I) by inserting after the first sen7 tence the following: ‘‘The Director may 

8 prescribe regulations, including the re9 quirement for payment of the fee speci10 fied in section 41(a)(7), pursuant to 

11 which the 12-month period set forth in 

12 this subsection may be extended by an 

13 additional 2 months if the delay in fil14 ing the application under section 

15 111(a) or section 363 within the 12- 

16 month period was unintentional.’’; and 

17 (II) in the last sentence— 

18 (aa) by striking ‘‘including 

19 the payment of a surcharge’’ and 

20 inserting ‘‘including the payment 

21 of the fee specified in section 

22 41(a)(7)’’; and 

23 (bb) by striking ‘‘during the 

24 pendency of the application’’; and 


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1 (ii) in paragraph (3), by adding at the 

2 end the following: ‘‘For an application for 

3 patent filed under section 363 in a Receiv4 ing Office other than the Patent and Trade5 mark Office, the 12-month and additional 

6 2-month period set forth in this subsection 

7 shall be extended as provided under the 

8 treaty and Regulations as defined in section 

9 351.’’; and 

10 (2) in section 365(b), by adding at the end the 

11 following: ‘‘The Director may establish procedures, in12 cluding the requirement for payment of the fee speci13 fied in section 41(a)(7), to accept an unintentionally 

14 delayed claim for priority under the treaty and the 

15 Regulations, and to accept a priority claim that per16 tains to an application that was not filed within the 

17 priority period specified in the treaty and Regula18 tions, but was filed within the additional 2-month pe19 riod specified under section 119(a) or the treaty and 

20 Regulations.’’. 

21 (d) RECORDATION OF OWNERSHIP INTERESTS.—Sec22 tion 261 of title 35, United States Code, is amended— 

23 (1) in the first undesignated paragraph by add24 ing at the end the following: ‘‘The Patent and Trade25 mark Office shall maintain a register of interests in 


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1 patents and applications for patents and shall record 

2 any document related thereto upon request, and may 

3 require a fee therefor.’’; and 

4 (2) in the fourth undesignated paragraph by 

5 striking ‘‘An assignment’’ and inserting ‘‘An interest 

6 that constitutes an assignment’’. 

7 SEC. 202. CONFORMING AMENDMENTS. 

8 (a) IN GENERAL.—Section 171 of title 35, United 

9 States Code, is amended— 

10 (1) by striking ‘‘Whoever’’ and inserting ‘‘(a) IN

11 GENERAL.—Whoever’’; 

12 (2) by striking ‘‘The provisions’’ and inserting 

13 ‘‘(b) APPLICABILITY OF THIS TITLE.—The provi14 sions’’; and 

15 (3) by adding at the end the following: 

16 ‘‘(c) FILING DATE.—The filing date of an application 

17 for patent for design shall be the date on which the specifica18 tion as prescribed by section 112 and any required draw19 ings are filed.’’. 

20 (b) RELIEF IN RESPECT OF TIME LIMITS AND REIN21 STATEMENT OF RIGHT.—Title 35, United States Code, is 

22 amended— 

23 (1) in section 41— 

24 (A) in subsection (a), by striking paragraph 

25 (7) and inserting the following: 


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1 ‘‘(7) REVIVAL FEES.—On filing each petition for 

2 the revival of an abandoned application for a patent, 

3 for the delayed payment of the fee for issuing each 

4 patent, for the delayed response by the patent owner 

5 in any reexamination proceeding, for the delayed 

6 payment of the fee for maintaining a patent in force, 

7 for the delayed submission of a priority or benefit 

8 claim, or for the extension of the 12-month period for 

9 filing a subsequent application, $1,700.00. The Direc10 tor may refund any part of the fee specified in this 

11 paragraph, in exceptional circumstances as deter12 mined by the Director’’; and 

13 (B) in subsection (c), by striking paragraph 

14 (1) and inserting the following: 

15 ‘‘(1) ACCEPTANCE.—The Director may accept the 

16 payment of any maintenance fee required by sub17 section (b) after the 6-month grace period if the delay 

18 is shown to the satisfaction of the Director to have 

19 been unintentional. The Director may require the 

20 payment of the fee specified in subsection (a)(7) as a 

21 condition of accepting payment of any maintenance 

22 fee after the 6-month grace period. If the Director ac23 cepts payment of a maintenance fee after the 6-month 

24 grace period, the patent shall be considered as not 

25 having expired at the end of the grace period.’’; 


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•S 3486 RS

1 (2) in section 119(b)(2), in the second sentence, 

2 by striking ‘‘including the payment of a surcharge’’ 

3 and inserting ‘‘including the requirement for pay4 ment of the fee specified in section 41(a)(7)’’; 

5 (3) in section 120, in the fourth sentence, by 

6 striking ‘‘including the payment of a surcharge’’ and 

7 inserting ‘‘including the requirement for payment of 

8 the fee specified in section 41(a)(7)’’; 

9 (4) in section 122(b)(2)(B)(iii), in the second 

10 sentence, by striking ‘‘, unless it is shown’’ and all 

11 that follows through ‘‘unintentional’’; 

12 (5) in section 133, by striking ‘‘, unless it be 

13 shown’’ and all that follows through ‘‘unavoidable’’; 

14 (6) by striking section 151 and inserting the fol15 lowing: 

16 ‘‘§ 151. Issue of patent 

17 ‘‘(a) IN GENERAL.—If it appears that an applicant 

18 is entitled to a patent under the law, a written notice of 

19 allowance of the application shall be given or mailed to the 

20 applicant. The notice shall specify a sum, constituting the 

21 issue fee and any required publication fee, which shall be 

22 paid within 3 months thereafter. 

23 ‘‘(b) EFFECT OF PAYMENT.—Upon payment of this 

24 sum the patent may issue, but if payment is not timely 

25 made, the application shall be regarded as abandoned.’’; 


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48 

•S 3486 RS

1 (7) in section 361, by striking subsection (c) and 

2 inserting the following: 

3 ‘‘(c) International applications filed in the Patent and 

4 Trademark Office shall be filed in the English language, 

5 or an English translation shall be filed within such later 

6 time as may be fixed by the Director.’’; 

7 (8) in section 364, by striking subsection (b) and 

8 inserting the following: 

9 ‘‘(b) An applicant’s failure to act within prescribed 

10 time limits in connection with requirements pertaining to 

11 an international application may be excused as provided 

12 in the treaty and the Regulations.’’; and 

13 (9) in section 371(d), in the third sentence, by 

14 striking ‘‘, unless it be shown to the satisfaction of the 

15 Director that such failure to comply was unavoid16 able’’. 

17 SEC. 203. EFFECTIVE DATE. 

18 (a) IN GENERAL.—The amendments made by this 

19 title— 

20 (1) shall take effect on the date that is 1 year 

21 after the date of the enactment of this Act; and 

22 (2) shall apply to— 

23 (A) any patent issued before, on, or after 

24 the effective date set forth in paragraph (1); and 


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49 

•S 3486 RS

1 (B) any application for patent that is 

2 pending on or filed after the effective date set 

3 forth in paragraph (1). 

4 (b) EXCEPTIONS.— 

5 (1) SECTION 201(a).—The amendments made by 

6 section 201(a) shall apply only to applications that 

7 are filed on or after the effective date set forth in sub8 section (a)(1). 

9 (2) PATENTS IN LITIGATION.—The amendments 

10 made by this title shall have no effect with respect to 

11 any patent that is the subject of litigation in an ac12 tion commenced before the effective date set forth in 

13 subsection (a)(1). 


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Calendar No. 532 

112TH CONGRESS 

2D SESSION S. 3486 

A BILL 

To implement the provisions of the Hague 

Agreement and the Patent Law Treaty. 

SEPTEMBER 20, 2012 

Reported with an amendment 


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