II
112th CONGRESS
2d Session
S. 3486
IN THE SENATE OF THE UNITED STATES
August 2, 2012
Mr. Leahy (for himself and Mr. Grassley) introduced the following bill; which was read twice and referred to the Committee on the Judiciary
A BILL
To implement the provisions of the Hague Agreement and the Patent Law Treaty.
Short title
This Act may be cited as the
Patent Law Treaties Implementation Act
of 2012
.
Hague Agreement concerning international registration of industrial designs
The Hague Agreement concerning international registration of industrial designs
In general
Title 35, United States Code, is amended by adding at the end the following:
The Hague Agreement concerning international registration of industrial designs
International design 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 Withdrawn or abandoned international design application.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.
Definitions
In general
When used in this part, unless the context otherwise indicates—
the term treaty means the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva on July 2, 1999;
the term regulations—
when capitalized, means the Common Regulations under the treaty; and
when not capitalized, means the regulations established by the Director under this title;
the term designation means a request that an international registration have effect in a Contracting Party to the treaty;
the term International Bureau means the international intergovernmental organization that is recognized as the coordinating body under the treaty and the Regulations;
the term effective registration date means the date of international registration indicated by the International Bureau under the treaty;
the term international design application means an application for international registration; and
the term international registration means the international registration of an industrial design filed under the treaty.
Rule of construction
Terms and expressions not defined in this part are to be taken in the sense indicated by the treaty and the Regulations.
Filing international design applications
In general
Any person who is a national of the United States, or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States, may file an international design application by submitting to the Patent and Trademark Office an application in such form, together with such fees, as may be prescribed by the Director.
Required action
The Patent and Trademark Office shall perform all acts connected with the discharge of its duties under the treaty, including the collection of international fees and transmittal thereof to the International Bureau. Subject to chapter 17 of this title, international design applications shall be forwarded by the Patent and Trademark Office to the International Bureau, upon payment of a transmittal fee.
Applicability of chapter 16
Except as otherwise provided in this chapter, the provisions of chapter 16 of this title shall apply.
Application filed in another country
An international design application on an industrial design made in this country shall be considered to constitute the filing of an application in a foreign country within the meaning of chapter 17 of this title if the international design application is filed—
in a country other than the United States;
at the International Bureau; or
with an intergovernmental organization.
International design application
In addition to any requirements pursuant to chapter 16 of this title, the international design application shall contain—
a request for international registration under the treaty;
an indication of the designated Contracting Parties;
data concerning the applicant as prescribed in the treaty and the Regulations;
copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international application, presented in the number and manner prescribed in the treaty and the Regulations;
an indication of the product or products which constitute the industrial design or in relation to which the industrial design is to be used, as prescribed in the treaty and the Regulations;
the fees prescribed in the treaty and the Regulations; and
any other particulars prescribed in the Regulations.
Filing date
In general
Subject to subsection (b), the filing date of an international design application in the United States shall be the effective registration date. Notwithstanding the provisions of this part, any international design application designating the United States that otherwise meets the requirements of chapter 16 of this title may be treated as a design application under chapter 16 of this title.
Review
An applicant may request review by the Director of the filing date of the international design application in the United States. The Director may determine that the filing date of the international design application in the United States is a date other than the effective registration date. The Director may establish procedures, including the payment of a surcharge, to review the filing date under this section. Such review may result in a determination that the application has a filing date in the United States other than the effective registration date.
Effect of international design application
An international design application designating the United States shall have the effect, for all purposes, from its filing date determined in accordance with section 384 of this part, of an application for patent filed in the Patent and Trademark Office pursuant to chapter 16 of this title.
Right of priority
National application
In accordance with the conditions and requirements of subsections (a) through (d) of section 119 of this title and section 172 of this title, a national application shall be entitled to the right of priority based on a prior international design application which designated at least one country other than the United States.
Prior foreign application
In accordance with the conditions and requirements of subsections (a) through (d) of section 119 of this title and section 172 of this title and the treaty and the Regulations, an international design application designating the United States shall be entitled to the right of priority based on a prior foreign application, a prior international application as defined in section 351(c) of this title 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.
Prior national application
In accordance with the conditions and requirements of section 120 of this title, an international design application designating the United States shall be entitled to the benefit of the filing date of a prior national application, a prior international application as defined in section 351(c) of this title designating the United States, or a prior international design application designating the United States, and a national application shall be entitled to the benefit of the filing date of a prior international design application designating the United States. If any claim for the benefit of an earlier filing date is based on a prior international application as defined in section 351(c) of this title which designated but did not originate in the United States or a prior international design application which designated but did not originate in the United States, the Director may require the filing in the Patent and Trademark Office of a certified copy of such application together with a translation thereof into the English language, if it was filed in another language.
Relief from prescribed time limits
An applicant's failure to act within prescribed time limits in connection with requirements pertaining to an international design application may be excused as to the United States upon a showing satisfactory to the Director of unintentional delay and under such conditions, including a requirement for payment of the fee specified in section 41(a)(7) of this title, as may be prescribed by the Director.
Withdrawn or abandoned international design application
Subject to sections 384 and 387 of this part, if an international design application designating the United States is withdrawn, renounced or canceled or considered withdrawn or abandoned, either generally or as to the United States, under the conditions of the treaty and the Regulations, the designation of the United States shall have no effect after the date of withdrawal, renunciation, cancellation, or abandonment and shall be considered as not having been made, unless a claim for benefit of a prior filing date under section 386(c) of this part was made in a national application, or an international design application designating the United States, or a claim for benefit under section 365(c) was made in an international application designating the United States, filed before the date of such withdrawal, renunciation, cancellation, or abandonment. However, such withdrawn, renounced, canceled, or abandoned international design application may serve as the basis for a claim of priority under subsections (a) and (b) of section 386, or under subsection (a) or (b) of section 365, if it designated a country other than the United States.
Examination of international design application
In general
The Director shall cause an examination pursuant to this title of an international design application designating the United States.
Applicability of chapter 16
All questions of substance, and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16 of this title.
Fees
The Director may prescribe fees for filing international design applications, for designating the United States, and for any other processing, services, or materials relating to international design applications, and may provide for later payment of such fees, including surcharges for later submission of fees.
Issuance of patent
The Director may issue a patent based on an international design application designating the United States, in accordance with the provisions of this title. Such patent shall have the force and effect of a patent issued on an application filed under chapter 16 of this title.
Publication of international design application
The publication under the treaty defined in section 381(a)(1) of an international design application designating the United States shall be deemed a publication under section 122(b).
.
Conforming amendment
The table of parts at the beginning of title 35, United States Code, is amended by adding at the end the following:
.
Conforming amendments
Title 35, United States Code, is amended—
in section
100(i)(1)(B), by striking right of priority under section 119, 365(a),
or 365(b) or to the benefit of an earlier filing date under section 120, 121,
or 365(c)
and inserting right of priority under section 119,
365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date
under section 120, 121, 365(c), or 386(c)
;
in section
102(d)(2), by striking to claim a right of priority under section 119,
365(a), or 365(b), or to claim the benefit of an earlier filing date under
section 120, 121, or 365(c)
and inserting to claim a right of
priority under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the
benefit of an earlier filing date under section 120, 121, 365(c), or
386(c)
;
in section 111(b)(7)—
by striking
section 119 or 365(a)
and inserting section 119, 365(a),
or 386(a)
; and
by striking
section 120, 121, or 365(c)
and inserting section 120,
121, 365(c), or 386(c)
;
in section
115(g)(1), by striking section 120, 121, or 365(c)
and inserting
section 120, 121, 365(c), or 386(c)
;
in section 120,
in the first sentence, by striking section 363
and inserting
section 363 or 385
;
in section 154—
in subsection (a)—
in
paragraph (2), by striking section 120, 121, or 365(c)
and
inserting section 120, 121, 365(c), or 386(c)
; and
in
paragraph (3), by striking section 119, 365(a), or 365(b)
and
inserting section 119, 365(a), 365(b), 386(a), or 386(b)
;
and
in subsection
(d)(1), by inserting or an international design application filed under
the treaty defined in section 381(a)(1) designating the United States under
Article 5 of such treaty
after Article 21(2)(a) of such
treaty
;
in section 173,
by striking fourteen years
and inserting 15
years
;
in section 365(c)—
in the first
sentence, by striking or a prior international application designating
the United States
and inserting , a prior international
application designating the United States, or a prior international design
application as defined in section 381(a)(6) of this title designating the
United States
; and
in the second
sentence, by inserting or a prior international design application as
defined in section 381(a)(6) of this title which designated but did not
originate in the United States
after did not originate in the
United States
; and
in section 366—
in the first
sentence, by striking unless a claim
and all that follows
through withdrawl.
and inserting unless a claim for
benefit of a prior filing date under section 365(c) of this section was made in
a national application, or an international application designating the United
States, or a claim for benefit under section 386(c) was made in an
international design application designating the United States, filed before
the date of such withdrawal.
; and
by striking the
second sentence and inserting the following: However, such withdrawn
international application may serve as the basis for a claim of priority under
section 365 (a) and (b) of this part, or under section 386 (a) or (b), if it
designated a country other than the United States.
.
Effective date
In general
The amendments made by this title shall be effective on the later of—
the date that is 1 year after the date of enactment of this Act, or
the date of entry into force of the treaty, as defined in section 381 of title 35, as amended by this Act, with respect to the United States.
Applicability of amendments
In general
Subject to paragraph (2), the amendments made by this title shall apply only to international design applications, international applications as defined in section 351(c) of title 35, United States Code, and national applications filed on and after the effective date set forth in subsection (a), and patents issuing thereon.
Exception
Sections 100(i) and 102(d) of title 35, United States Code, as amended by this title, shall not apply to an application, or any patent issuing thereon, unless it is described in section 3(n)(1) of the Leahy-Smith America Invents Act (35 U.S.C. 100 note).
Patent Law Treaty implementation
Provisions to implement the Patent Law Treaty
Application filing date
Section 111 of title 35, United States Code, is amended—
in subsection (a), by striking paragraphs (3) and (4) and inserting the following:
Fee, oath or declaration, and claims
The application shall be accompanied by the fee required by law. The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.
Filing date
The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.
;
in subsection (b), by striking paragraphs (3) and (4) and inserting the following:
Fee
The application shall be accompanied by the fee required by law. The fee may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned.
Filing date
The filing date of a provisional application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.
; and
by adding at the end the following:
Prior filed application
The Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under subsection (a) to a previously filed application, specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director. A failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in application being regarded as abandoned and treated as having never been filed.
.
Relief in respect of time limits and reinstatement of rights
In general
Chapter 2 of title 35, United States Code, is amended by adding at the end the following:
Revival of applications; reinstatement of reexamination proceedings
In general
The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing each patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner.
.
Technical and conforming amendment
The table of sections for chapter 2 of title 35, United States Code, is amended by adding at the end the following:
27. Revival of applications; reinstatement of reexamination proceedings.
.
Restoration of priority right
Title 35, United States Code, is amended—
in section 119—
in subsection (a), by adding at the end the following: “The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application in this country within the 12-month period was unintentional.”; and
in subsection (e)—
in paragraph (1)—
by inserting after the first sentence the following: “The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application under section 111(a) or section 363 within the 12-month period was unintentional.”; and
in the last sentence—
by
striking including the payment of a surcharge
and inserting
including the payment of the fee specified in section 41(a)(7)
;
and
by
striking during the pendency of the application
; and
in paragraph (3), by adding at the end the following: “For an application for patent filed under section 363 in a foreign Receiving Office, the 12-month and additional 2 month period set forth in this subsection shall be extended as provided under the treaty and Regulations as defined in section 351.”; and
in section 365(b), by adding at the end the following: “The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim for priority under the treaty and the Regulations, and to accept a priority claim where such priority claim pertains to an application that was not filed within the priority period specified in the treaty and Regulations, but was filed within the additional 2-month period specified under section 119(a) or the treaty and Regulations.”.
Recordation of ownership interests
Section 261 of title 35, United States Code, is amended—
in the first undesignated paragraph by adding at the end the following: “The Patent and Trademark Office shall maintain a register of interests in applications for patents and patents and shall record any document related thereto upon request, and may require a fee therefor.”; and
in the fourth
undesignated paragraph by striking An assignment
and inserting
An interest that constitutes an assignment
.
Conforming amendments
In general
Section 171 of title 35, United States Code, is amended by adding at the end the following:
The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.
.
Relief in respect of time limits and reinstatement of right
Title 35, United States Code, is amended—
in section 41—
in subsection (a), by striking subsection (7) and inserting the following:
Revival fees
On filing each petition for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, for the delayed response by the patent owner in any reexamination proceeding, for the delayed payment of the fee for maintaining a patent in force, for the delayed submission of a priority or benefit claim, or for the extension of the 12-month period for filing a subsequent application, $1,700.00. The Director may refund any part of the fee specified in this paragraph, in exceptional circumstances as determined by the Director
; and
in subsection (c), by striking paragraph (1) and inserting the following:
Acceptance
The Director may accept the payment of any maintenance fee required by subsection (b) after the 6-month grace period if the delay is shown to the satisfaction of the Director to have been unintentional. The Director may require the payment of the fee specified in paragraph (a)(7) as a condition of accepting payment of any maintenance fee after the 6-month grace period. If the Director accepts payment of a maintenance fee after the 6-month grace period, the patent shall be considered as not having expired at the end of the grace period.
;
in section
119(b)(2), in the second sentence, by striking including the payment of
a surcharge
and inserting including the requirement for payment
of the fee specified in section 41(a)(7)
;
in section 120,
in the fourth sentence, by striking including the payment of a
surcharge
and inserting including the requirement for payment of
the fee specified in section 41(a)(7)
;
in section
122(b)(2)(B)(iii), in the second sentence, by striking , unless it is
shown
and all that follows through unintentional
;
in section 133,
by striking , unless it be shown
and all that follows through
unavoidable
;
by striking section 151 and inserting the following:
Issue of patent
If it appears that applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant. The notice shall specify a sum, constituting the issue fee and any required publication fee, which shall be paid within 3 months thereafter.
Upon payment of this sum the patent may issue, but if payment is not timely made, the application shall be regarded as abandoned.
;
in section 361, by striking subsection (c) and inserting the following:
International applications filed in the Patent and Trademark Office shall be filed in the English language, or an English translation shall be filed within such later time as may be fixed by the Director.
;
in section 364, by striking subsection (b) and inserting the following:
An applicant's failure to act within prescribed time limits in connection with requirements pertaining to an international application may be excused as provided in the treaty and the Regulations.
; and
in section
371(d), in the third sentence, by striking , unless it be shown to the
satisfaction of the Director that such failure to comply was
unavoidable
.
Effective date
In general
Except as provided in subsection (b), the amendments made by this title shall be effective on the date that is 1 year after the date of enactment of this Act and shall apply to all patents and to all applications for patent pending on or filed after the date that is 1 year after the date of enactment of this Act.
Exceptions
Section 201(a)
The amendments made by section 201(a) shall apply only to applications filed on or after the date that is 1 year after the date of enactment of this Act.
Patent that is subject of litigation
The amendments made by this title shall have no effect with respect to any patent that is the subject of litigation in an action commenced before the date that is 1 year after the date of enactment of this Act.
