Patent Law Treaties Implementation Act of 2012 [S. 3486]

Posts navigation

---

An entity is entitled to file through the Hague System not only if it is a national of a contracting party or a national of a member state or intergovernmental organization that is a contracting party namely, the EU or OAPI but also if it:. Both claim an Establishment in Switzerland, a contracting party. Establishment, however, is a tricky basis for entitlement because it is much less black and white than, e. The Establishment phrase derives from Article Three of the Paris Convention for the Protection of Intellectual Property , which originally used the term "establishment" alone in an analogous context.

According to WIPO, the treaty was amended to narrow the scope of establishment, with "real" being added to exclude "fraudulent or fictitious" establishments and "effective" being added to exclude minor establishments such as a "mere warehouse. From a physical standpoint, entitlement by Establishment thus seems to arise when an applicant has more than a "mere warehouse" but less than a principal place of business in the territory of a contracting party, but exactly where the line is drawn is unclear.

Additional uncertainty may arise from whether, e. We are unaware of any judicial opinions or other materials that provide clear guidance on these issues.

Get instant access to the one-stop news source for business lawyers

To make matters worse, the ultimate determination of whether entitlement is proper, and thus whether protection is valid, is left to the law of each contracting party. Consequently, Establishment might mean different things in different jurisdictions, especially if international comity is disregarded. Even if the U. Numerous contracting party design application requirements relating to, e. Accordingly, national-and regional-level prosecution should still be anticipated, especially in novelty-examining jurisdictions and jurisdictions with relatively stringent figure and other application requirements.

Efforts are in progress to harmonize national- and regional-level design application requirements. For example, WIPO's Standing Committee on the Law of Trademarks, Industrial Designs and Geographic Indications SCT is formulating draft articles and regulations that would harmonize shading and other design application requirements across all conforming jurisdictions. Adoption would reduce drafting fees and the cost and hassle of responding to technical contracting party refusals.

SCT's draft articles and regulations also seek to set minimum grace and non-publication periods, and to calibrate technical requirements to Hague System and other international norms, again to standardize overall prosecution and make Hague System adoption easier and more attractive. Meaningful international consensus on these requirements is likely a long way off, however, and there has been little to no discussion regarding topics such as multi-jurisdictional search and examination for novelty.

A Plan for America

Thus, a certain amount of national- and regional-level prosecution, with concomitant fees and delays, seems inevitable in at least the near future for Hague applications. Hague applications may also not be preferred if design protection is needed immediately or for other strategic reasons. Early versions of the Hague Agreement, which originated in , were oriented toward design registration regimes that did not examine applications beyond formalities.

This orientation made the Hague System an imperfect fit for the U. The latest version of the Hague Agreement, known as the Geneva Act, addressed this deficiency, and the U. Senate, which must approve treaties, didn't "advise and consent" until December 7, by operation of its own terms, the Geneva Act didn't become effective internationally until December 23, Around the same time, the U.

Patent and Trademark Office USPTO prepared draft implementing language — which needed to become law before formal ascension to the Hague Agreement could occur — and sent it to Congress on July 20, The draft language included everything needed to implement the Hague System, including extending U. At the start of the second session of the th Congress on January 21, , Hague implementation was identified as one of five non-controversial USPTO legislative objectives along with, e. On the other side of the aisle, Sen. It passed the Senate by unanimous consent on September The Senate Judiciary Committee and its staffs on both sides of the aisle were reportedly very helpful with moving S.

On September 19, the House of Representatives introduced a bill with substantively identical language, H. Under commonly understood House legislative practice, typically a House bill next must be reported favorably out of the committee with legislative jurisdiction here, the House Judiciary Committee , further referred to the House Rules Committee to set rules for debate and finally considered by the entire House in order to be passed.

Here, however, on December 5 the House actually passed S.

Suspension is a fast-track procedure typically reserved for non-controversial bills. In a typical week, the House considers approximately 20 bills on suspension, passing at least 18 by voice votes passage requires a two-thirds majority. Being recognized to make a motion to suspend the rules and pass a bill as was made here by Chairman Smith is not a matter of right for a member of the House, and required the tacit approval or at least the acquiescence of the House Majority Leader, Rep. Going by the official record, the House only needed seven minutes to introduce, debate and pass S.

As both Houses have now passed the same bill, convening a House-Senate conference committee to resolve legislative discrepancies is unnecessary. This process is known as "enrollment" and culminates with transmission of the enrolled bill to the president.

Enrollment typically takes at least seven days and depends on legislative and presidential schedules. Upon receiving the enrolled bill, President Obama has ten days excluding Sundays to sign it into law.

You are here

The enrolled bill could also move forward without President Obama taking any action if Congress postpones its December 14 adjournment a distinct possibility in view of the impending "fiscal cliff" and the ten-day period ends when Congress is still in session. If so, the law will at the earliest become effective one year after enactment i. In the interim, the U.

Department of State is expected to deposit its instrument of ratification to the Hague Agreement, which formally triggers the ascension process, and the USPTO will draft corresponding administrative regulations and commence the rulemaking process. The implementing legislation contemplates that the USPTO will be a "receiving office" of sorts for Hague Applications, which would then be forwarded to the International Bureau. The USPTO as a receiving office under the Hague System opens up some interesting possibilities for "one-stop shopping" for international design protection. Although the USPTO has yet to adopt a particular filing methodology, one implementation might be to offer filers of U.

A Hague application could then be automatically prepared and electronically forwarded to the International Bureau.

In that scenario, strategy decisions would need to made regarding, for example, whether to first file a multiple embodiment U. An alternative might be to file multiple single-embodiment U. The United States is on the verge of enacting Hague System-implementing legislation, which will make the Hague System more attractive for U. However, even with U. For example, in the seven minutes of House debate over passage of S. Bobby Scott D-Virigina stated that S.

Statement by the Press Secretary on H.R. 3187, H.R. 6582 and S. 3486

The provisions of Ch. Both House and Senate bills have bi-partisan support. Statute and Treaty leave important aspects of the application process up to the USPTO, so rule- making process will be key. Where will they be able to gain protection?

Industry News

Intellectual Property Office is an operating name of the Patent Officewww. The information provided by the USPTO is meant as an educational resource only and should not be construed as legal advice or written law. What is a rule? A "rule" is the whole or any part of a state agency statement of general applicability that: Promotion and Tenure Workshop 1. Evaluation Procedure There is only one evaluation procedure leading to recommendations regarding promotion, tenure and.

Only Members of Congress can introduce a proposed law to the House or Senate. My presentations Profile Feedback Log out. Auth with social network: Registration Forgot your password?

• Con Krisantem ad Atene (Segretissimo SAS) (Italian Edition)
• Wolves in Sheeps Clothing
• Heiß auf Kaltakquise: So vervielfachen Sie Ihre Erfolgsquote am Telefon (Haufe Fachbuch) (German Edition)
• Vampyr Verse (Popcorn Horror Book 1)
• Washington, D.C. (Geschichten aus dem Liebesleben 8) (German Edition)
• Corporate Management Strategy - Keeping It Very Simple