Request for Comments and Notice of Public Meeting on a Preliminary Draft Convention on the Recognition and Enforcement of Foreign Judgments Currently Being Negotiated at The Hague Conference on Private International Law, 81741-81744 [2016-27799]
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Federal Register / Vol. 81, No. 223 / Friday, November 18, 2016 / Notices
information security systems, facilities
and procedures in place to protect the
security of the Limited Access DMF, as
required under Section 1110.102(a)(2) of
the final rule. The AG or IG Systems
Safeguards Attestation Form collects
information based on an assessment by
the state or local government AG or IG
conducted within three years prior to
the date of the Person or Certified
Person’s submission of a completed
certification statement under Section
1110.101(a) of the final rule. This
collection includes specific
requirements of the final rule, which the
state or local government AG or IG must
certify are satisfied, and the provision of
specific information by the state or local
government AG or IG, such as the date
of the assessment.
III. Data
OMB Control Number: [0692–XXXX].
Form Number(s): NTIS FM100A and
NTIS FM100B.
Type of Review: New information
collection.
Affected Public: Accredited
Conformity Assessment Bodies and state
or local government Auditors General or
Inspectors General attesting that a
Person seeking certification or a
Certified Person seeking renewal of
certification under the final rule for the
‘‘Certification Program for Access to the
Death Master File’’ has information
security systems, facilities and
procedures in place to protect the
security of the Limited Access DMF, as
required by the final rule.
Estimated Number of Respondents
ACAB Systems Safeguards Attestation
Form: NTIS expects to receive
approximately 500 ACAB Systems
Safeguards Attestation Forms from
Persons and Certified Persons annually.
AG or IG Systems Safeguards
Attestation Form: NTIS expects to
receive approximately 60 AG or IG
Systems Safeguards Attestation Forms
from Persons and Certified Persons
annually.
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Estimated Time per Response
ACAB Systems Safeguards Attestation
Form: 3 hours.
AG or IG Systems Safeguards
Attestation Form: 3 hours.
Estimated Total Annual Burden
Hours: 1680.
ACAB Systems Safeguards Attestation
Form: 1500 (500 × 3 hours = 1500
hours).
AG or IG Systems Safeguards
Attestation Form: 180 (60 × 3 hours =
180 hours).
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Estimated Total Annual Cost to Public
ACAB Systems Safeguards Attestation
Form: NTIS expects to receive
approximately 500 ACAB Systems
Safeguards Attestation Forms annually
at a fee of $525 per form, for a total cost
of $262,500. This total annual cost
reflects the cost to the Federal
Government for the ACAB Systems
Safeguards Attestation Forms, which
consists of the expenses associated with
NTIS personnel reviewing and
processing these forms. NTIS estimates
that it will take an ACAB’s senior
auditor three hours to complete the form
at a rate of approximately $135 per
hour, for a total additional cost to the
public of $202,500 (1500 burden hours
× $135/hour = $202,500). NTIS
estimates the total annual cost to the
public for the ACAB Systems
Safeguards forms to be $465,000
($262,500 in fees + $202,500 in staff
time = $465,000).
AG or IG Systems Safeguards
Attestation Form: NTIS expects to
receive approximately 60 AG or IG
Systems Safeguards Attestation Forms
annually at a fee of $525 per form, for
a total cost of $31,500. This total annual
cost reflects the cost to the Federal
Government for the AG or IG Systems
Safeguards Attestation Forms, which
consists of the expenses associated with
NTIS personnel reviewing and
processing these forms. NTIS estimates
that it will take an AG or IG senior
auditor three hours to complete the form
at a rate of approximately $100 per
hour, for a total additional cost to the
public of $18,000 (180 burden hours ×
$100/hour = $18,000). NTIS estimates
the total annual cost to the public for
AG or IG Systems Safeguards
Attestation Forms to be $49,500
($31,500 in fees + $18,000 in staff time
= $49,500).
NTIS estimates the total annual cost
to the public for both the ACAB Systems
Safeguards Attestation Forms and the
AG or IG Systems Safeguards
Attestation Forms to be $514,500
($465,000 for ACAB Systems Safeguards
Attestation Forms + $49,500 for AG or
IG Systems Safeguards Attestation
Forms.
IV. Request for Comments
Comments are invited on: (a) Whether
the proposed collection of information
is necessary for the proper performance
of the functions of the agency, including
whether the information shall have
practical utility; (b) the accuracy of the
agency’s estimate of the burden
(including hours and cost) of the
proposed collection of information; (c)
ways to enhance the quality, utility, and
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clarity of the information to be
collected; and (d) ways to minimize the
burden of the collection of information
on respondents, including through the
use of automated collection techniques
or other forms of information
technology.
Comments submitted in response to
this notice will be summarized and/or
included in the request for OMB
approval of this information collection;
they also will become a matter of public
record.
Sheleen Dumas,
PRA Departmental Lead, Office of the Chief
Information Officer.
[FR Doc. 2016–27707 Filed 11–17–16; 8:45 am]
BILLING CODE 3510–13–P
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO–P–2016–0046]
Request for Comments and Notice of
Public Meeting on a Preliminary Draft
Convention on the Recognition and
Enforcement of Foreign Judgments
Currently Being Negotiated at The
Hague Conference on Private
International Law
United States Patent and
Trademark Office, Department of
Commerce.
ACTION: Notice of public meeting;
request for comments.
AGENCY:
The Hague Conference on
Private International Law (‘‘The Hague
Conference’’), an international
organization in the Netherlands, is
sponsoring negotiations for a
convention on the recognition and
enforcement of foreign judgments in
civil and commercial matters. In
February 2016, the Council on General
Affairs and Policy of The Hague
Conference created a Special
Commission on the Recognition and
Enforcement of Foreign Judgments (‘‘the
Special Commission’’) to prepare a
preliminary draft text of the convention,
which is subject to a formal diplomatic
negotiation open to member States of
The Hague Conference. At its first
session in June 2016, the Special
Commission produced a Preliminary
Draft Convention that contains general
and specific provisions that would
apply to the recognition and
enforcement of judgments arising from
transnational intellectual property
disputes. The United States Patent and
Trademark Office (USPTO) seeks public
comments on the June 2016 Preliminary
Draft Convention (the ‘‘Preliminary
SUMMARY:
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Federal Register / Vol. 81, No. 223 / Friday, November 18, 2016 / Notices
Draft’’) as it relates to intellectual
property matters.
To assist the USPTO in determining
the best way to address this topic, the
USPTO will host a public meeting to
obtain public input. The meeting will be
open to the public and will provide a
forum for discussion of the questions
identified in this notice. Written
comments in response to the questions
set forth in this notice also are
requested.
DATES: The public meeting will be held
on January 12, 2017, beginning at 1:00
p.m. Eastern Standard Time (EST) and
ending at 4:00 p.m. EST.
Public Meeting Registration Deadline:
Registration to attend the public
meeting in person or via webcast is
required by January 5, 2017.
Additionally, requests to participate in
the public meeting as a speaker must be
submitted in writing no later than
December 29, 2016. See the ‘‘Event
Registration Information’’ section of this
notice for additional details on how to
register and how to request to present as
a speaker.
Written Comments: Written comments
must be received on or before January 9,
2017.
ADDRESSES:
Event Address: The public meeting
will be held in the USPTO
Headquarters, Global Intellectual
Property Academy (GIPA), Madison
Building (East), Second Floor, 600
Dulany Street, Alexandria, Virginia
22314.
Written Comments: Interested parties
are encouraged to file written comments
electronically by email to
judgmentsproject@uspto.gov. Comments
submitted by email should be machinesearchable and should not be copyprotected. Written comments also may
be submitted by mail to the Office of
Policy and International Affairs, United
States Patent and Trademark Office,
Mail Stop International Affairs, P.O. Box
1450, Alexandria, Virginia 22313–1450.
Responders should include the name of
the person or organization filing the
comment, as well as a page number, on
each page of their submissions. Paper
submissions should also include a CD or
DVD containing the submission in MS
Word®, WordPerfect®, or pdf format.
CDs or DVDs should be labeled with the
name and organizational affiliation of
the filer, and the name of the word
processing program used to create the
document. All personally identifiable
information (for example, name,
address, etc.) voluntarily submitted by
the commenter may be publicly
accessible. Do not submit confidential
business information or otherwise
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sensitive or protected information. The
USPTO will accept anonymous written
comments (enter ‘‘N/A’’ in the required
fields if you wish to remain
anonymous).
All comments received are part of the
public record and will be available for
public inspection without change via
the USPTO’s Web site at
www.uspto.gov/learning-and-resources/
ip-policy/hague-conference-privateinternational-law and at the Office of
the Director, Policy and International
Affairs, located in Madison West, Tenth
Floor, 600 Dulany Street, Alexandria,
Virginia 22314, upon request. Because
comments will be available for public
inspection, information that is not
desired to be made public, such as
name, an address or phone number, etc.,
should not be included in the written
comments.
FOR FURTHER INFORMATION CONTACT:
Requests for additional information
should be directed to the attention of
Michael Shapiro, Senior Counsel, Office
of Policy and International Affairs,
USPTO, by telephone at 571–272–9300,
or by email to judgmentsproject@
uspto.gov.
SUPPLEMENTARY INFORMATION:
Background
The Hague Conference is sponsoring
negotiations for a convention on the
recognition and enforcement of foreign
judgments. Following preparatory work
on the draft convention by a Working
Group beginning in 2012, in February
2016, the Council on General Affairs
and Policy of The Hague Conference
established a Special Commission to
prepare a preliminary draft convention
on the recognition and enforcement of
foreign judgments in civil and
commercial matters. The first meeting of
the Special Commission took place June
1–9, 2016, at The Hague, Netherlands.
The second meeting of the Special
Commission is scheduled to take place
February 16–24, 2017, at The Hague.
The text of the Preliminary Draft
produced at the first session of the
Special Commission, along with other
documents relating to the convention is
available at: https://www.hcch.net/en/
projects/legislative-projects/judgments/
special-commission1.
Brief Summary of the Draft Convention
The Preliminary Draft currently
contains 16 articles organized into two
chapters. Chapter I (Articles 1–3) sets
forth the scope and definitions for the
draft treaty. Chapter II (Articles 4–16)
sets forth the basic rules governing the
recognition and enforcement of
judgments under the treaty.
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Scope, Exclusions From Scope, and
Definitions
The Preliminary Draft applies to the
recognition and enforcement of
judgments in a Contracting State of
judgments relating to civil or
commercial matters in another
Contracting State (Article 1). The term
‘‘judgment’’ means any decision on the
merits, including determinations of
costs or expenses related to such
decisions (Article 3). Judgments related
to revenue, customs, and administrative
matters are excluded from the scope of
the Convention (Article 1) as well as
more specific subject matter such as
family law matters, wills and
succession, and insolvency, but
judgments related to intellectual
property matters (Article 2) are not
excluded.
Bases for Recognition and Enforcement
The Preliminary Draft requires that a
judgment of a court in a Contracting
State (the ‘‘State of origin’’) be
recognized and enforced in another
Contracting State (the ‘‘requested State’’)
without reviewing its merits (Article 4).
Recognition and enforcement, however,
may be refused but only under the
grounds set forth in the treaty. The
Preliminary Draft sets forth the bases for
recognition and enforcement of
judgments (Article 5).
Of particular importance to the
intellectual property community are
paragraphs 5(1)(k) and 5(1)(l), which set
forth the bases for the recognition and
enforcement of judgments for
infringements of a patent, trademark,
design, or other similar right, and
judgments on the validity or
infringement of a copyright or a related
right, respectively. It should also be
noted (subject to Article 6, discussed
below), a judgment in such an
infringement case might also be
enforceable if one of the other bases for
recognition and enforcement of the
judgment set forth in Article 5 exists (for
example, the person against whom
recognition or enforcement is sought
brought the claim on which the
judgment is based) applies.
Exclusive Bases for Recognition and
Enforcement
Notwithstanding Article 5, a judgment
on the registration or validity of patents,
trademarks, designs, or other similar
rights that are required to be deposited
or registered is eligible for recognition
and enforcement in a requested State ‘‘if
and only if’’ the State of origin is the
State where the deposit or registration
took place, or is deemed to have taken
place under an international or regional
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instrument (Article 6). Judgments on the
validity of copyrights or related rights,
however, are not subject to the exclusive
jurisdiction rule in Article 6. The
Preliminary Draft also lists several bases
on which a court of a Contracting State
may refuse to recognize and enforce
foreign judgments (Article 7).
Preliminary Questions
The Preliminary Draft bars the
recognition and enforcement of rulings
on the registration or validity of patents,
trademarks, and designs, or other
similar rights that arose as a preliminary
question in courts other than those with
exclusive jurisdiction under Article 6
(Article 8(1)). The Explanatory Note
Providing Background on the Proposed
Draft Text and Identifying Outstanding
Issues (Prel. Doc. No. 2) provides the
following example of a preliminary
question: a ruling on the validity of a
patent raised as a defense to an
infringement claim (Prel. Doc. No. 2,
para. 111). In such instances, however,
a court may refuse or postpone the
recognition or enforcement of a ruling
on validity only (1) where the ruling is
inconsistent with a judgment or a
decision of a competent authority on the
matter or (2) where the proceedings on
validity took place in the State with
exclusive jurisdiction under Article 6
(Article 8(3)). A court may refuse to
recognize a judgment ‘‘if, and to the
extent that, it was based on’’ a ruling on
registration or validity as a preliminary
question by in courts other than those
with exclusive jurisdiction under
Article 6.
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Damages and Other Remedies
The Preliminary Draft allows the
court of the requested State to refuse
recognition and enforcement of
judgment awarding damages if and to
the extent that those damages (including
exemplary or punitive damages) do not
compensate a party for actual loss or
harm suffered (Article 9). The
Preliminary Draft does not expressly
address enforcement of judgments for
injunctive relief. However, the
Explanatory on the Preliminary Draft
notes, without expressly mentioning
injunctive relief, that ‘‘non-money
judgments have been included in the
scope of the Proposed Draft Text’’ (Prel.
Doc. No 2, para. 52).
Questions Posed
The USPTO is seeking comments on
the Preliminary Draft as it relates to
intellectual property. Interested
members of the public are invited to
present written comments on any issues
they believe to be relevant to protection
of intellectual property or any aspect of
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the proposed Convention as it relates to
intellectual property. Comments also are
invited on any or all of the questions
listed below.
As used in the Preliminary Draft, the
term ‘‘intellectual property rights’’
includes patents, trademarks, designs,
and copyrights or related rights. If your
response does not apply to all of these
intellectual property rights, please state
the specific intellectual property right,
or rights, to which your response
applies. Other intellectual property
rights that are outside the scope of the
current text of the Preliminary Draft,
such as trade secrets, are identified
separately in this notice where
appropriate.
With respect to these and any other
issues raised by the Preliminary Draft,
in your responses, please: (1) Clearly
identify the matter being addressed; (2)
provide examples where appropriate; (3)
identify any relevant legal authorities to
support your comment; (4) indicate
approaches and provisions that are
unacceptable; and (5) express
preferences for approaches, effective
solutions to specific challenges, and
drafting recommendations to address
the matter being addressed.
1. What are your experiences in
having U.S. judgments involving
intellectual property matters recognized
and enforced in foreign courts?
2. What are the benefits, if any, of
increasing the recognition and
enforcement of U.S. judgments
involving intellectual property matters
in foreign courts through joining a
multilateral treaty?
3. What are your experiences in
having foreign judgments recognized in
U.S. courts, including on the basis of
comity or under state statutes?
4. What are the risks, if any, of
increasing the recognition and
enforcement of foreign judgments
involving intellectual property matters
by U.S. courts through joining a
multilateral treaty?
5. Are uniform rules for international
enforcement of intellectual property
judgments desirable?
6. What impact, if any, would the
territorial nature of intellectual property
rights have on enforcing rights across
borders?
7. What impact, if any, would
differences in procedural practices
across borders have on enforcing
intellectual property rights across
borders?
8. What impact, if any, would
differences in substantive law have on
enforcing intellectual property rights
across borders?
9. Would this convention have any
disproportionate effects on a particular
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81743
technology sector? If so, which ones and
how?
10. Please identity problems that
could occur from recognizing or
enforcing judgments rendered on
intellectual property matters in other
Contracting States that have policies or
laws that are inconsistent with U.S.
intellectual property laws and policies.
11. Please identify any challenges
with respect to enforcement in foreign
courts of U.S. judgments, or in U.S.
courts of foreign judgments, involving
intellectual property matters.
12. How often are U.S. nationals also
foreign intellectual property owners
who would then be able to use this
Convention to have judgments they
obtain in foreign courts enforced by U.S.
courts? Would that be useful for U.S.
nationals?
13. What changes, if any, to U.S. law
would be needed to implement the
proposed convention? Please identify
any drawbacks and/or advantages to
such changes.
14. What effect, if any, would the
Preliminary Draft have on the
enforcement of intellectual property
rights in the digital environment? In
particular, should the language in the
Preliminary Draft be revised to take into
account issues that arise in connection
with infringement and enforcement of
intellectual property rights on the
Internet?
Exclusions From Scope
15. Should judgments on the validity
and/or the infringements of intellectual
property rights, other than copyright
and related rights, be excluded from the
scope of the treaty under Article 2(2)?
Please identify the specific intellectual
property right at issue and the specific
concerns, if any, raised by including it
within the scope of this convention?
16. Should judgments on the validity,
ownership, subsistence, and/or the
infringement of copyright and related
rights be excluded from the scope of the
treaty under Article 2(2)? Please state
the specific concerns, if any, raised by
including copyrights or related rights
within the scope of this convention.
17. Should judgments on the validity
or misappropriation and/or theft of
trade secrets be excluded from the scope
of the treaty under Article 2(2)? Please
state the specific concerns, if any, raised
by including judgments on the validity
or misappropriation and/or theft of
trade secrets within the scope of this
convention.
Bases for Recognition and Enforcement
18. Should judgments on the
infringement of intellectual property
rights, other than copyright and related
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Federal Register / Vol. 81, No. 223 / Friday, November 18, 2016 / Notices
rights, be included as bases for
recognition and enforcement in Article
5(1)(k)?
19. Should judgments on the
infringements of plant breeders’ rights
be included in Article 5(1)(k)?
20. Should judgments on the
infringements of service marks, trade
dress, and geographical indications
rights be expressly included in Article
5(1)(k)?
21. Should judgments on the validity
or infringement of unregistered designs
and trademarks be included in Article
5(1)(l)?
22. Should judgments on the validity
or the misappropriation and/or theft of
trade secrets be included in Article
5(1)(l)?
23. Should the bracketed language in
Article 5(1)(l) be included?
24. Should judgments on the validity,
ownership, subsistence or infringement
of copyright or related rights be
included in Article 5(1)(l) in cases
where the right arose under the law of
the State of origin?
25. Should such judgments be
included in Article 5(1)(l) where the
right did not arise under the law of the
State of origin but where another basis
for jurisdiction set forth in Article 5 is
satisfied?
Exclusive Jurisdiction
26. With respect to a judgment on the
registration or validity of patents,
trademarks, designs, or other similar
rights that are required to be deposited,
registered, or issued, the Preliminary
Draft provides for exclusive jurisdiction
of the court in the State of origin where
the right issued or registration took
place, or is deemed to have taken place
under an international or regional
instrument (Article 6). Please comment
on the appropriateness of this rule.
27. Should a judgment on the
registration or validity of mask works or
vessel designs that are required to be
deposited, registered, or issued be
included in Article 6?
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Preliminary Matters
28. What are your experiences in
having U.S. rulings on preliminary
questions, or judgments based on such
rulings, involving the registration or
validity of patents, trademarks, and
designs, or other similar rights, by
courts other than those with exclusive
jurisdiction recognized and enforced by
a foreign court?
29. Should a judgment on the
registration or validity of mask works or
vessel designs that are required to be
deposited, registered, or issued be
included in Article 8?
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30. Does Article 8 provide an
appropriate framework for resolving
problems, if any, related to recognition
and enforcement of rulings on
preliminary questions and judgments
based on such rulings?
31. How much discretion should a
court in the requested State have to
refuse or postpone the recognition or
enforcement of a ruling on the validity
of a patent, trademark, design, and other
similar rights raised as preliminary
matter in a court in the State of origin?
Remedies
32. Article 9 provides that recognition
or enforcement of a judgment may be
refused if, and to the extent that, the
judgment awards damages, including
exemplary or punitive damages, that do
not compensate a party for actual loss or
harm suffered. Should the court in a
requested State be allowed to recognize
and enforce non-compensatory damages
in judgments involving intellectual
property matters?
33. Does Article 9 include the types
of damages that would provide effective
relief for intellectual property right
owners? If not, what other types of
damages or other remedies ought to be
included? Why?
34. How should statutory damages for
copyright infringement be treated under
this Article, and should Article 9 be
amended to address statutory damages
expressly?
35. When a judgment for infringement
of an intellectual property covered by
the convention includes injunctive
relief, should a court in the requested
State be required to recognize and
enforce the award of injunctive relief?
36. If so, should there be any
limitation on the circumstances under
which such awards should be
recognized and enforced (for example,
by specifying the limitation in Article
5)? If not, should a judgment for
infringement of an intellectual property
right covered by the convention that
includes injunctive relief be excluded as
a basis for recognition and enforcement,
or whole or in part, under Article 5?
Event Registration Information: To
register to attend or to request to present
as a speaker, please send an email
message to judgmentsproject@uspto.gov
and provide the following information:
(1) Your name, title, company or
organization (if applicable), address,
phone number, and email address; (2)
whether you wish to attend in person or
via webcast; and (3) whether you wish
to make an oral presentation at the
meeting and, if so, which question(s)
identified in the supplementary
information section of this notice will
be addressed and the approximate
desired length of your presentation.
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Each attendee, even if from the same
organization, must register separately. In
order to give all speakers a meaningful
opportunity to speak, the USPTO may
not be able to accommodate all persons
who wish to make a presentation.
However, the USPTO will attempt to
accommodate as many persons as
possible who wish to make a
presentation. After reviewing the
speaker requests and the information
regarding the presentations provided in
the requests, the USPTO will contact
each speaker prior to the event with the
amount of time available and the
approximate time that the speaker’s
presentation is scheduled to begin. The
amount of time available for each
speaker presentation and selected
speakers without a formal presentation
may be limited to ensure that all
persons selected to speak will have a
meaningful opportunity to do so.
Speakers who opt to employ slides as
part of their presentation must send
final electronic copies of the slides in
Microsoft PowerPoint® to
judgmentsproject@uspto.gov by January
5, 2017, so that the slides can be
displayed at the meeting. Additionally,
and only if time allows, the USPTO will
provide an opportunity for persons in
the audience, who did not register as
speakers or were not selected as
speakers, to speak at the meeting
without a formal presentation. For more
information on the meeting, including
webcast access instructions, agenda, and
a list of speakers, please visit USPTO’s
Web site at www.uspto.gov/learningand-resources/ip-policy/hagueconference-private-international-law. If
special accommodations due to a
disability are needed, please inform the
contact person(s) identified under the
heading FOR FURTHER
INFORMATION CONTACT.
Dated: November 14, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2016–27799 Filed 11–17–16; 8:45 am]
BILLING CODE 3510–16–P
COMMITTEE FOR PURCHASE FROM
PEOPLE WHO ARE BLIND OR
SEVERELY; DISABLED
Procurement List; Proposed Deletions
Committee for Purchase From
People Who Are Blind or Severely
Disabled.
ACTION: Proposed Deletions from the
Procurement List.
AGENCY:
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]]>Agencies
[Federal Register Volume 81, Number 223 (Friday, November 18, 2016)]
[Notices]
[Pages 81741-81744]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-27799]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2016-0046]
Request for Comments and Notice of Public Meeting on a
Preliminary Draft Convention on the Recognition and Enforcement of
Foreign Judgments Currently Being Negotiated at The Hague Conference on
Private International Law
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice of public meeting; request for comments.
-----------------------------------------------------------------------
SUMMARY: The Hague Conference on Private International Law (``The Hague
Conference''), an international organization in the Netherlands, is
sponsoring negotiations for a convention on the recognition and
enforcement of foreign judgments in civil and commercial matters. In
February 2016, the Council on General Affairs and Policy of The Hague
Conference created a Special Commission on the Recognition and
Enforcement of Foreign Judgments (``the Special Commission'') to
prepare a preliminary draft text of the convention, which is subject to
a formal diplomatic negotiation open to member States of The Hague
Conference. At its first session in June 2016, the Special Commission
produced a Preliminary Draft Convention that contains general and
specific provisions that would apply to the recognition and enforcement
of judgments arising from transnational intellectual property disputes.
The United States Patent and Trademark Office (USPTO) seeks public
comments on the June 2016 Preliminary Draft Convention (the
``Preliminary
[[Page 81742]]
Draft'') as it relates to intellectual property matters.
To assist the USPTO in determining the best way to address this
topic, the USPTO will host a public meeting to obtain public input. The
meeting will be open to the public and will provide a forum for
discussion of the questions identified in this notice. Written comments
in response to the questions set forth in this notice also are
requested.
DATES: The public meeting will be held on January 12, 2017, beginning
at 1:00 p.m. Eastern Standard Time (EST) and ending at 4:00 p.m. EST.
Public Meeting Registration Deadline: Registration to attend the
public meeting in person or via webcast is required by January 5, 2017.
Additionally, requests to participate in the public meeting as a
speaker must be submitted in writing no later than December 29, 2016.
See the ``Event Registration Information'' section of this notice for
additional details on how to register and how to request to present as
a speaker.
Written Comments: Written comments must be received on or before
January 9, 2017.
ADDRESSES:
Event Address: The public meeting will be held in the USPTO
Headquarters, Global Intellectual Property Academy (GIPA), Madison
Building (East), Second Floor, 600 Dulany Street, Alexandria, Virginia
22314.
Written Comments: Interested parties are encouraged to file written
comments electronically by email to judgmentsproject@uspto.gov.
Comments submitted by email should be machine-searchable and should not
be copy-protected. Written comments also may be submitted by mail to
the Office of Policy and International Affairs, United States Patent
and Trademark Office, Mail Stop International Affairs, P.O. Box 1450,
Alexandria, Virginia 22313-1450. Responders should include the name of
the person or organization filing the comment, as well as a page
number, on each page of their submissions. Paper submissions should
also include a CD or DVD containing the submission in MS Word[supreg],
WordPerfect[supreg], or pdf format. CDs or DVDs should be labeled with
the name and organizational affiliation of the filer, and the name of
the word processing program used to create the document. All personally
identifiable information (for example, name, address, etc.) voluntarily
submitted by the commenter may be publicly accessible. Do not submit
confidential business information or otherwise sensitive or protected
information. The USPTO will accept anonymous written comments (enter
``N/A'' in the required fields if you wish to remain anonymous).
All comments received are part of the public record and will be
available for public inspection without change via the USPTO's Web site
at www.uspto.gov/learning-and-resources/ip-policy/hague-conference-private-international-law and at the Office of the Director, Policy and
International Affairs, located in Madison West, Tenth Floor, 600 Dulany
Street, Alexandria, Virginia 22314, upon request. Because comments will
be available for public inspection, information that is not desired to
be made public, such as name, an address or phone number, etc., should
not be included in the written comments.
FOR FURTHER INFORMATION CONTACT: Requests for additional information
should be directed to the attention of Michael Shapiro, Senior Counsel,
Office of Policy and International Affairs, USPTO, by telephone at 571-
272-9300, or by email to judgmentsproject@uspto.gov.
SUPPLEMENTARY INFORMATION:
Background
The Hague Conference is sponsoring negotiations for a convention on
the recognition and enforcement of foreign judgments. Following
preparatory work on the draft convention by a Working Group beginning
in 2012, in February 2016, the Council on General Affairs and Policy of
The Hague Conference established a Special Commission to prepare a
preliminary draft convention on the recognition and enforcement of
foreign judgments in civil and commercial matters. The first meeting of
the Special Commission took place June 1-9, 2016, at The Hague,
Netherlands. The second meeting of the Special Commission is scheduled
to take place February 16-24, 2017, at The Hague. The text of the
Preliminary Draft produced at the first session of the Special
Commission, along with other documents relating to the convention is
available at: https://www.hcch.net/en/projects/legislative-projects/judgments/special-commission1.
Brief Summary of the Draft Convention
The Preliminary Draft currently contains 16 articles organized into
two chapters. Chapter I (Articles 1-3) sets forth the scope and
definitions for the draft treaty. Chapter II (Articles 4-16) sets forth
the basic rules governing the recognition and enforcement of judgments
under the treaty.
Scope, Exclusions From Scope, and Definitions
The Preliminary Draft applies to the recognition and enforcement of
judgments in a Contracting State of judgments relating to civil or
commercial matters in another Contracting State (Article 1). The term
``judgment'' means any decision on the merits, including determinations
of costs or expenses related to such decisions (Article 3). Judgments
related to revenue, customs, and administrative matters are excluded
from the scope of the Convention (Article 1) as well as more specific
subject matter such as family law matters, wills and succession, and
insolvency, but judgments related to intellectual property matters
(Article 2) are not excluded.
Bases for Recognition and Enforcement
The Preliminary Draft requires that a judgment of a court in a
Contracting State (the ``State of origin'') be recognized and enforced
in another Contracting State (the ``requested State'') without
reviewing its merits (Article 4). Recognition and enforcement, however,
may be refused but only under the grounds set forth in the treaty. The
Preliminary Draft sets forth the bases for recognition and enforcement
of judgments (Article 5).
Of particular importance to the intellectual property community are
paragraphs 5(1)(k) and 5(1)(l), which set forth the bases for the
recognition and enforcement of judgments for infringements of a patent,
trademark, design, or other similar right, and judgments on the
validity or infringement of a copyright or a related right,
respectively. It should also be noted (subject to Article 6, discussed
below), a judgment in such an infringement case might also be
enforceable if one of the other bases for recognition and enforcement
of the judgment set forth in Article 5 exists (for example, the person
against whom recognition or enforcement is sought brought the claim on
which the judgment is based) applies.
Exclusive Bases for Recognition and Enforcement
Notwithstanding Article 5, a judgment on the registration or
validity of patents, trademarks, designs, or other similar rights that
are required to be deposited or registered is eligible for recognition
and enforcement in a requested State ``if and only if'' the State of
origin is the State where the deposit or registration took place, or is
deemed to have taken place under an international or regional
[[Page 81743]]
instrument (Article 6). Judgments on the validity of copyrights or
related rights, however, are not subject to the exclusive jurisdiction
rule in Article 6. The Preliminary Draft also lists several bases on
which a court of a Contracting State may refuse to recognize and
enforce foreign judgments (Article 7).
Preliminary Questions
The Preliminary Draft bars the recognition and enforcement of
rulings on the registration or validity of patents, trademarks, and
designs, or other similar rights that arose as a preliminary question
in courts other than those with exclusive jurisdiction under Article 6
(Article 8(1)). The Explanatory Note Providing Background on the
Proposed Draft Text and Identifying Outstanding Issues (Prel. Doc. No.
2) provides the following example of a preliminary question: a ruling
on the validity of a patent raised as a defense to an infringement
claim (Prel. Doc. No. 2, para. 111). In such instances, however, a
court may refuse or postpone the recognition or enforcement of a ruling
on validity only (1) where the ruling is inconsistent with a judgment
or a decision of a competent authority on the matter or (2) where the
proceedings on validity took place in the State with exclusive
jurisdiction under Article 6 (Article 8(3)). A court may refuse to
recognize a judgment ``if, and to the extent that, it was based on'' a
ruling on registration or validity as a preliminary question by in
courts other than those with exclusive jurisdiction under Article 6.
Damages and Other Remedies
The Preliminary Draft allows the court of the requested State to
refuse recognition and enforcement of judgment awarding damages if and
to the extent that those damages (including exemplary or punitive
damages) do not compensate a party for actual loss or harm suffered
(Article 9). The Preliminary Draft does not expressly address
enforcement of judgments for injunctive relief. However, the
Explanatory on the Preliminary Draft notes, without expressly
mentioning injunctive relief, that ``non-money judgments have been
included in the scope of the Proposed Draft Text'' (Prel. Doc. No 2,
para. 52).
Questions Posed
The USPTO is seeking comments on the Preliminary Draft as it
relates to intellectual property. Interested members of the public are
invited to present written comments on any issues they believe to be
relevant to protection of intellectual property or any aspect of the
proposed Convention as it relates to intellectual property. Comments
also are invited on any or all of the questions listed below.
As used in the Preliminary Draft, the term ``intellectual property
rights'' includes patents, trademarks, designs, and copyrights or
related rights. If your response does not apply to all of these
intellectual property rights, please state the specific intellectual
property right, or rights, to which your response applies. Other
intellectual property rights that are outside the scope of the current
text of the Preliminary Draft, such as trade secrets, are identified
separately in this notice where appropriate.
With respect to these and any other issues raised by the
Preliminary Draft, in your responses, please: (1) Clearly identify the
matter being addressed; (2) provide examples where appropriate; (3)
identify any relevant legal authorities to support your comment; (4)
indicate approaches and provisions that are unacceptable; and (5)
express preferences for approaches, effective solutions to specific
challenges, and drafting recommendations to address the matter being
addressed.
1. What are your experiences in having U.S. judgments involving
intellectual property matters recognized and enforced in foreign
courts?
2. What are the benefits, if any, of increasing the recognition and
enforcement of U.S. judgments involving intellectual property matters
in foreign courts through joining a multilateral treaty?
3. What are your experiences in having foreign judgments recognized
in U.S. courts, including on the basis of comity or under state
statutes?
4. What are the risks, if any, of increasing the recognition and
enforcement of foreign judgments involving intellectual property
matters by U.S. courts through joining a multilateral treaty?
5. Are uniform rules for international enforcement of intellectual
property judgments desirable?
6. What impact, if any, would the territorial nature of
intellectual property rights have on enforcing rights across borders?
7. What impact, if any, would differences in procedural practices
across borders have on enforcing intellectual property rights across
borders?
8. What impact, if any, would differences in substantive law have
on enforcing intellectual property rights across borders?
9. Would this convention have any disproportionate effects on a
particular technology sector? If so, which ones and how?
10. Please identity problems that could occur from recognizing or
enforcing judgments rendered on intellectual property matters in other
Contracting States that have policies or laws that are inconsistent
with U.S. intellectual property laws and policies.
11. Please identify any challenges with respect to enforcement in
foreign courts of U.S. judgments, or in U.S. courts of foreign
judgments, involving intellectual property matters.
12. How often are U.S. nationals also foreign intellectual property
owners who would then be able to use this Convention to have judgments
they obtain in foreign courts enforced by U.S. courts? Would that be
useful for U.S. nationals?
13. What changes, if any, to U.S. law would be needed to implement
the proposed convention? Please identify any drawbacks and/or
advantages to such changes.
14. What effect, if any, would the Preliminary Draft have on the
enforcement of intellectual property rights in the digital environment?
In particular, should the language in the Preliminary Draft be revised
to take into account issues that arise in connection with infringement
and enforcement of intellectual property rights on the Internet?
Exclusions From Scope
15. Should judgments on the validity and/or the infringements of
intellectual property rights, other than copyright and related rights,
be excluded from the scope of the treaty under Article 2(2)? Please
identify the specific intellectual property right at issue and the
specific concerns, if any, raised by including it within the scope of
this convention?
16. Should judgments on the validity, ownership, subsistence, and/
or the infringement of copyright and related rights be excluded from
the scope of the treaty under Article 2(2)? Please state the specific
concerns, if any, raised by including copyrights or related rights
within the scope of this convention.
17. Should judgments on the validity or misappropriation and/or
theft of trade secrets be excluded from the scope of the treaty under
Article 2(2)? Please state the specific concerns, if any, raised by
including judgments on the validity or misappropriation and/or theft of
trade secrets within the scope of this convention.
Bases for Recognition and Enforcement
18. Should judgments on the infringement of intellectual property
rights, other than copyright and related
[[Page 81744]]
rights, be included as bases for recognition and enforcement in Article
5(1)(k)?
19. Should judgments on the infringements of plant breeders' rights
be included in Article 5(1)(k)?
20. Should judgments on the infringements of service marks, trade
dress, and geographical indications rights be expressly included in
Article 5(1)(k)?
21. Should judgments on the validity or infringement of
unregistered designs and trademarks be included in Article 5(1)(l)?
22. Should judgments on the validity or the misappropriation and/or
theft of trade secrets be included in Article 5(1)(l)?
23. Should the bracketed language in Article 5(1)(l) be included?
24. Should judgments on the validity, ownership, subsistence or
infringement of copyright or related rights be included in Article
5(1)(l) in cases where the right arose under the law of the State of
origin?
25. Should such judgments be included in Article 5(1)(l) where the
right did not arise under the law of the State of origin but where
another basis for jurisdiction set forth in Article 5 is satisfied?
Exclusive Jurisdiction
26. With respect to a judgment on the registration or validity of
patents, trademarks, designs, or other similar rights that are required
to be deposited, registered, or issued, the Preliminary Draft provides
for exclusive jurisdiction of the court in the State of origin where
the right issued or registration took place, or is deemed to have taken
place under an international or regional instrument (Article 6). Please
comment on the appropriateness of this rule.
27. Should a judgment on the registration or validity of mask works
or vessel designs that are required to be deposited, registered, or
issued be included in Article 6?
Preliminary Matters
28. What are your experiences in having U.S. rulings on preliminary
questions, or judgments based on such rulings, involving the
registration or validity of patents, trademarks, and designs, or other
similar rights, by courts other than those with exclusive jurisdiction
recognized and enforced by a foreign court?
29. Should a judgment on the registration or validity of mask works
or vessel designs that are required to be deposited, registered, or
issued be included in Article 8?
30. Does Article 8 provide an appropriate framework for resolving
problems, if any, related to recognition and enforcement of rulings on
preliminary questions and judgments based on such rulings?
31. How much discretion should a court in the requested State have
to refuse or postpone the recognition or enforcement of a ruling on the
validity of a patent, trademark, design, and other similar rights
raised as preliminary matter in a court in the State of origin?
Remedies
32. Article 9 provides that recognition or enforcement of a
judgment may be refused if, and to the extent that, the judgment awards
damages, including exemplary or punitive damages, that do not
compensate a party for actual loss or harm suffered. Should the court
in a requested State be allowed to recognize and enforce non-
compensatory damages in judgments involving intellectual property
matters?
33. Does Article 9 include the types of damages that would provide
effective relief for intellectual property right owners? If not, what
other types of damages or other remedies ought to be included? Why?
34. How should statutory damages for copyright infringement be
treated under this Article, and should Article 9 be amended to address
statutory damages expressly?
35. When a judgment for infringement of an intellectual property
covered by the convention includes injunctive relief, should a court in
the requested State be required to recognize and enforce the award of
injunctive relief?
36. If so, should there be any limitation on the circumstances
under which such awards should be recognized and enforced (for example,
by specifying the limitation in Article 5)? If not, should a judgment
for infringement of an intellectual property right covered by the
convention that includes injunctive relief be excluded as a basis for
recognition and enforcement, or whole or in part, under Article 5?
Event Registration Information: To register to attend or to request
to present as a speaker, please send an email message to
judgmentsproject@uspto.gov and provide the following information: (1)
Your name, title, company or organization (if applicable), address,
phone number, and email address; (2) whether you wish to attend in
person or via webcast; and (3) whether you wish to make an oral
presentation at the meeting and, if so, which question(s) identified in
the supplementary information section of this notice will be addressed
and the approximate desired length of your presentation. Each attendee,
even if from the same organization, must register separately. In order
to give all speakers a meaningful opportunity to speak, the USPTO may
not be able to accommodate all persons who wish to make a presentation.
However, the USPTO will attempt to accommodate as many persons as
possible who wish to make a presentation. After reviewing the speaker
requests and the information regarding the presentations provided in
the requests, the USPTO will contact each speaker prior to the event
with the amount of time available and the approximate time that the
speaker's presentation is scheduled to begin. The amount of time
available for each speaker presentation and selected speakers without a
formal presentation may be limited to ensure that all persons selected
to speak will have a meaningful opportunity to do so. Speakers who opt
to employ slides as part of their presentation must send final
electronic copies of the slides in Microsoft PowerPoint[supreg] to
judgmentsproject@uspto.gov by January 5, 2017, so that the slides can
be displayed at the meeting. Additionally, and only if time allows, the
USPTO will provide an opportunity for persons in the audience, who did
not register as speakers or were not selected as speakers, to speak at
the meeting without a formal presentation. For more information on the
meeting, including webcast access instructions, agenda, and a list of
speakers, please visit USPTO's Web site at www.uspto.gov/learning-and-resources/ip-policy/hague-conference-private-international-law. If
special accommodations due to a disability are needed, please inform
the contact person(s) identified under the heading FOR FURTHER
INFORMATION CONTACT.
Dated: November 14, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2016-27799 Filed 11-17-16; 8:45 am]
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