WIPO Diplomatic Conference on the Design Law Treaty, 21242-21244 [2024-06390]
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Federal Register / Vol. 89, No. 60 / Wednesday, March 27, 2024 / Notices
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO–C–2024–0008]
WIPO Diplomatic Conference on the
Design Law Treaty
United States Patent and
Trademark Office, Department of
Commerce.
ACTION: Notice and request for
comments.
AGENCY:
The United States Patent and
Trademark Office (USPTO), Department
of Commerce, requests public comments
on negotiations at the World Intellectual
Property Organization (WIPO) regarding
a proposed Design Law Treaty (DLT). A
diplomatic conference to finalize the
DLT will be conducted in Riyadh, Saudi
Arabia on November 11–22, 2024.
Public comments are requested
regarding the DLT.
The negotiations at the Diplomatic
Conference will be the culmination of
years of discussions at the WIPO
Standing Committee on the Law of
Trademarks, Industrial Designs, and
Geographical Indications (SCT). The
provisions of the DLT will pertain to
formalities associated with applications
for the protection of industrial designs,
and its adoption may result in changes
to requirements associated with filing
these applications in the United States.
DATES: Written comments must be
received by June 25, 2024 to ensure
consideration.
khammond on DSKJM1Z7X2PROD with NOTICES
SUMMARY:
For reasons of government
efficiency, comments should be
submitted through the Federal
eRulemaking Portal at https://
www.regulations.gov. To submit
ADDRESSES:
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17:03 Mar 26, 2024
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comments via the portal, enter docket
number PTO–C–2024–0008 on the
homepage and select ‘‘Search.’’ The site
will provide a search results page listing
all documents associated with this
docket. Find a reference to this request
for information and select the
‘‘Comment’’ icon, complete the required
fields, and enter or attach your
comments. Attachments to electronic
comments will be accepted in ADOBE®
portable document format or
MICROSOFT WORD® format. Because
comments will be made available for
public inspection, information that the
submitter does not desire to make
public, such as an address or phone
number, should not be included.
Visit the Federal eRulemaking Portal
(https://www.regulations.gov) for
additional instructions on providing
comments via the portal. If electronic
submission of comments is not feasible
due to a lack of access to a computer
and/or the internet, please submit
comments by First-Class Mail or Priority
Mail to: Keith M. Mullervy, Patent
Attorney, Mail Stop OPIA, U.S. Patent
and Trademark Office, P.O. Box 1450,
Alexandria, VA 22313–1450.
FOR FURTHER INFORMATION CONTACT:
Keith M. Mullervy, Patent Attorney,
Office of Policy and International
Affairs (OPIA), at 571–270–7079.
SUPPLEMENTARY INFORMATION: WIPO is a
specialized United Nations agency
based in Geneva, Switzerland. The
WIPO SCT is a forum at which WIPO
Member States 1 and accredited
observers facilitate coordination and
provide guidance on the development of
international law on trademarks,
industrial designs, and geographical
indications, including the
harmonization of national laws and
procedures.
The draft DLT aims to help designers
obtain easier, faster and cheaper
protection for their industrial designs—
both in domestic and foreign markets.
The DLT would streamline the global
system for protecting industrial designs,
which are an integral part of many
brands, by simplifying and aligning
requirements associated with industrial
design filings. If approved, these
changes would benefit the community
of designers, particularly for small-scale
designers who may have limited access
to legal support for registering their
industrial designs. In particular, the
DLT would make it significantly easier
for small and medium-sized enterprises
to obtain industrial design protection
overseas as a result of simplified,
1 WIPO currently has 193 Member States.
www.wipo.int/members/en/.
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streamlined and aligned procedures and
requirements.
Work on the simplification of
procedures for the protection of
industrial designs was initially started
in the WIPO SCT in 2006 and gradually
matured into an initial set of draft
Articles (WIPO/SCT/35/2,2 the
‘‘Industrial Design Law and Practice—
Draft Articles’’) and draft Regulations
(WIPO/SCT/35/3,3 the ‘‘Industrial
Design Law and Practice—Draft
Regulations’’) for a treaty. Similar
treaties already exist in the area of
patents (Patent Law Treaty of 2000) and
trademarks (Trademark Law Treaty of
1994 and Singapore Treaty on the Law
of Trademarks of 2006).
In 2006 and 2007, the SCT requested
the WIPO Secretariat to develop a set of
questionnaires relating to the formalities
of industrial design registration and to
the differences between all types of
marks and industrial designs, with a
view to promoting a better
understanding of the different design
systems. In response, the Secretariat
developed a set of questionnaires on
industrial design law and practice and
circulated them among SCT members.
After receiving replies from the SCT
members, the Secretariat compiled a
summary of replies to the set of
questionnaires (WIPO/Strad/INF/2
Rev.2).4 In addition, in 2011 and 2012,
the SCT requested that the Secretariat
prepare a study on the impact of the
Draft Articles and Draft Regulations. In
response, the Secretariat, with the
involvement of the WIPO Chief
Economist prepared the study (WIPO/
SCT/27/4 5 and WIPO/SCT/27/4 ADD).6
In addition, at its Fifty-Fifth (30th
Extraordinary) Session, held in Geneva
on July 14–22, 2022, the WIPO General
Assembly decided to convene a
diplomatic conference (to be held no
later than 2024) to conclude and adopt
a Design Law Treaty, based on:
document WIPO/SCT/35/2; document
WIPO/SCT/35/3; the 2019 proposal
considered by the WIPO General
Assembly, on draft Articles and
Regulations on Industrial Design Law
and Practice; and any other
contributions by Member States. The
General Assembly further decided to
convene a Preparatory Committee in the
second half of 2023 to establish the
2 https://www.wipo.int/edocs/mdocs/sct/en/sct_
35/sct_35_2.pdf.
3 https://www.wipo.int/edocs/mdocs/sct/en/sct_
35/sct_35_3.pdf.
4 https://www.wipo.int/export/sites/www/sct/en/
meetings/pdf/wipo_strad_inf_2_rev_2.pdf.
5 https://www.wipo.int/edocs/mdocs/sct/en/sct_
27/sct_27_4.pdf.
6 https://www.wipo.int/edocs/mdocs/sct/en/sct_
29/sct_27_4_add.pdf.
E:\FR\FM\27MRN1.SGM
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Federal Register / Vol. 89, No. 60 / Wednesday, March 27, 2024 / Notices
necessary modalities of the diplomatic
conference. The General Assembly also
directed the SCT to meet in a special
session for five days in the second half
of 2023, preceding the Preparatory
Committee, to further close any existing
gaps to a sufficient level. Following that
session of the WIPO General Assembly,
the Secretariat prepared an updated set
of draft Articles (WIPO/SCT/S3/4,7 the
‘‘Industrial Design Law and Practice—
Draft Articles’’) (‘‘the Draft Articles’’)
and draft Regulations (WIPO/SCT/S3/
5,8 the ‘‘Industrial Design Law and
Practice—Draft Regulations’’) (‘‘the Draft
Regulations’’) for a treaty.
A special session of the SCT, held in
Geneva on October 2–6, 2023, worked to
close existing gaps in the text based on
document WIPO/SCT/S3/4; document
WIPO/SCT/S3/5; and any other
contributions by Member States. The
special session is summarized in
document WIPO/SCT/S3/9.9 In
addition, a Preparatory Committee of
the Diplomatic Conference, also held in
Geneva on October 9, 2023, established
the procedures for the diplomatic
conference. The Preparatory Committee
further determined that the diplomatic
conference to conclude and adopt a
design treaty will take place in Riyadh,
Kingdom of Saudi Arabia, from
November 11–22, 2024.10 The
Preparatory Committee meeting is
summarized in document WIPO/DLT/2/
PM/6.11
Request for Comments
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This request for comments seeks
public/stakeholder input to inform U.S.
government participation in the
diplomatic conference (scheduled from
November 11–22, 2024) to conclude and
adopt a Design Law Treaty. The
proposed Design Law Treaty is a
formalities treaty that would require
contracting parties—that is, the
countries and intergovernmental
organizations that accede to the treaty—
to adhere to certain requirements with
respect to the protection of industrial
designs. Examples of its provisions
include:
• Limits on the requirements that
contracting parties can impose as a
condition for according design
application filing dates to applicants;
7 https://www.wipo.int/edocs/mdocs/sct/en/sct_
s3/sct_s3_4.pdf.
8 https://www.wipo.int/edocs/mdocs/sct/en/sct_
s3/sct_s3_5.pdf.
9 https://www.wipo.int/edocs/mdocs/sct/en/sct_
s3/sct_s3_9.pdf.
10 https://www.wipo.int/diplomatic-conferences/
en/design-law/.
11 https://www.wipo.int/edocs/mdocs/sct/en/dlt_
2_pm/dlt_2_pm_6.pdf.
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• Requirements that contracting
parties provide design applicants with
certain flexibilities, including
flexibilities for applicants who miss a
time limit during the application
process or who unintentionally allow
the registration to lapse;
• Requirements that contracting
parties must allow design applicants to
correct or add a priority claim to an
application in certain circumstances;
• Requirements that contracting
parties provide for a grace period during
which public disclosure would not
affect eligibility requirements for
obtaining the right; and
• Limits on the requirements that
contracting parties may impose as to
when applicants can be required to
obtain local representation to take an
action before the local office.
In addition, certain provisions are the
subject of alternative options or
proposals supported by several
delegations, including:
• Requirements for an applicant
disclosure in design applications of the
origin or source of traditional cultural
expressions, traditional knowledge or
biological/genetic resources providing
inspiration for, tangentially associated
with, or utilized or incorporated in,
some aspect of the industrial design;
• Limits on the requirements in
requests for recording of a license or a
security interest; and
• Effects of the non-recording of a
license.
Request for Information
The USPTO welcomes any relevant
comments on the topics described in
this Request for Comments. However,
the USPTO is particularly interested in
comments responsive to the questions
below. When responding to the
questions, please identify yourself.
Commenters need not respond to every
question and may provide relevant
information even if it is not responsive
to a particular question.
Questions for Comments
Section I—Observations and
Experiences—Generally
1. Please discuss any experiences
with filing for industrial design
protection outside of the United States,
and to the extent possible, please: (a)
identify the jurisdiction(s); (b) describe
the specific formalities requirements in
these jurisdictions; and (c) describe any
experiences associated with satisfying
the specific formalities requirements in
these jurisdictions.
2. Please identify any particular
challenges encountered in relation to
requirements across jurisdictions when
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21243
pursuing protection for an industrial
design in multiple jurisdictions.
3. Please describe instances, if any, in
which particular formality requirements
associated with the submission of
design applications have resulted in any
loss of design rights, additional costs, or
other negative consequences.
Section II—Observations and
Experiences—Disclosure Requirement
Related to Genetic Resource,
Traditional Knowledge and Traditional
Cultural Expressions
4. Please discuss any experiences
with filing for industrial design
protection in a jurisdiction that requires
disclosure of the source of genetic
resources, traditional knowledge, or
traditional cultural expressions in an
industrial design application, and to the
extent possible, please: (a) identify the
jurisdiction(s) that required such
disclosure; (b) describe the
circumstances associated with satisfying
the patent disclosure requirement in
that jurisdiction; and (c) describe any
experiences associated with the ease or
difficulty in satisfying the patent
disclosure requirement in that
jurisdiction.
5. Please characterize the level of
difficulty in complying with the
aforementioned disclosure requirement.
Please describe any anticipated or
unanticipated problems that resulted or
may result from the disclosure itself or
the associated requirement for the
disclosure.
6. Please describe how experiences
with the disclosure requirement in the
aforementioned jurisdiction or other
jurisdictions affect the conduct of a
design applicant or holder’s business.
Where possible, please identify the
jurisdiction as well as any relevant
details of the disclosure requirement.
7. Please identify any type of
disclosure requirement associated with
the filing of an application for industrial
design protection, in particular,
requirements pertaining to the
disclosure of genetic resources,
traditional knowledge, or traditional
cultural expressions, that you believe is
necessary, and any benefits or
detriments stemming from such
disclosure requirements.
8. Please share whether the existence
of an industrial design disclosure
requirement for the source of genetic
resources, traditional knowledge, or
traditional cultural expressions in an
industrial design application was (or is
or would be) a consideration in
pursuing industrial design protection on
a design in a given jurisdiction. Please
provide details in relation to relevant
sectors, industries or technologies
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21244
Federal Register / Vol. 89, No. 60 / Wednesday, March 27, 2024 / Notices
khammond on DSKJM1Z7X2PROD with NOTICES
where this may be a consideration, as
well as alternative actions, if any, that
the public has taken or would take in
lieu of pursuing industrial design
protection in that jurisdiction.
9. Would a disclosure requirement
related to genetic resources, traditional
knowledge, and/or traditional cultural
expressions make the industrial design
application process more simplified,
consistent, straight-forward, and time
and cost efficient for applicants,
including for small and medium sized
enterprises? Please explain why or why
not.
10. Should a disclosure requirement
related to genetic resources, traditional
knowledge, and/or traditional cultural
expressions be included in the Design
Law Treaty? Please explain why or why
not.
Section III—Current Text for
Diplomatic Conference
11. Please describe your views on the
current working text for an International
Legal Instrument Relating to a Design
Law Treaty, which has been approved
for consideration by the Diplomatic
Conference. Please describe
recommendations, if any, for additions,
deletions, or changes that you would
recommend to Articles 1 through 32 of
the Articles or to the Common
Regulations, namely Rules 1 through 17.
These texts can be found at the links
below:
(a) Current working text ‘‘substantive
articles’’ (Articles 1 through 23 from the
WIPO Industrial Design Law and
Practice—Draft Articles), as revised in
the Third Special Session of the
Standing Committee on the Law of
Trademarks, Industrial Designs, and
Geographic Indicators, held in Geneva
on October 2–6, 2023, as included as
pages 3–22 of Annex I to document
WIPO/SCT/S3/9, which can be found on
the WIPO website, https://
www.wipo.int/edocs/mdocs/sct/en/sct_
s3/sct_s3_9.pdf.
(b) Current working text
‘‘administrative provisions and final
clauses’’ (Articles 24 through 32 from
the WIPO Draft Administrative
Provisions and Final Clauses for a
Design Law Treaty), as revised in the
Preparatory Committee of the
Diplomatic Conference to Conclude and
Adopt a Design Law Treaty, held in
Geneva on October 9, 2023, as included
as pages 2–6 of the Annex to document
WIPO/DLT/2/PM6, which can be found
on the WIPO website, https://
www.wipo.int/edocs/mdocs/sct/en/dlt_
2_pm/dlt_2_pm_6.pdf.
(c) Current working text ‘‘draft
regulations’’ (Rules 1 through 17 from
the WIPO Industrial Design Law and
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Practice—Draft Regulations), as revised
in the Third Special Session of the
Standing Committee on the Law of
Trademarks, Industrial Designs and
Geographic Indicators, held in Geneva
on October 2–6, 2023, as included as
pages 2–14 of Annex II to document
WIPO/SCT/S3/9, which can be found on
the WIPO website, https://
www.wipo.int/edocs/mdocs/sct/en/sct_
s3/sct_s3_9.pdf.
(d) WIPO has established a website
dedicated to the Diplomatic Conference
to Conclude and Adopt a Design Law
Treaty which can be found at https://
www.wipo.int/diplomatic-conferences/
en/design-law/ which contains the
aforementioned Articles and
Regulations and other information
regarding the Diplomatic Conference,
the Design Law Treaty being considered,
and other related information.
(e) Please identify any additional
issues in relation to formalities for
industrial designs that you believe
should be considered for inclusion in
the Design Law Treaty that are not
already included or any amendments
you recommend to existing provisions.
Similarly, please identify any provisions
(e.g., Article or Rules) presently
included that should not be included. In
any of these instances, please explain
the rationale for this recommendation of
an addition, amendment, or deletion of
a provision.
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2024–06390 Filed 3–26–24; 8:45 am]
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DATES: Written comments are
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You may submit comments,
identified by the title of the information
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E:\FR\FM\27MRN1.SGM
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[Federal Register Volume 89, Number 60 (Wednesday, March 27, 2024)]
[Notices]
[Pages 21242-21244]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-06390]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-C-2024-0008]
WIPO Diplomatic Conference on the Design Law Treaty
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice and request for comments.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (USPTO),
Department of Commerce, requests public comments on negotiations at the
World Intellectual Property Organization (WIPO) regarding a proposed
Design Law Treaty (DLT). A diplomatic conference to finalize the DLT
will be conducted in Riyadh, Saudi Arabia on November 11-22, 2024.
Public comments are requested regarding the DLT.
The negotiations at the Diplomatic Conference will be the
culmination of years of discussions at the WIPO Standing Committee on
the Law of Trademarks, Industrial Designs, and Geographical Indications
(SCT). The provisions of the DLT will pertain to formalities associated
with applications for the protection of industrial designs, and its
adoption may result in changes to requirements associated with filing
these applications in the United States.
DATES: Written comments must be received by June 25, 2024 to ensure
consideration.
ADDRESSES: For reasons of government efficiency, comments should be
submitted through the Federal eRulemaking Portal at https://www.regulations.gov. To submit comments via the portal, enter docket
number PTO-C-2024-0008 on the homepage and select ``Search.'' The site
will provide a search results page listing all documents associated
with this docket. Find a reference to this request for information and
select the ``Comment'' icon, complete the required fields, and enter or
attach your comments. Attachments to electronic comments will be
accepted in ADOBE[supreg] portable document format or MICROSOFT
WORD[supreg] format. Because comments will be made available for public
inspection, information that the submitter does not desire to make
public, such as an address or phone number, should not be included.
Visit the Federal eRulemaking Portal (https://www.regulations.gov)
for additional instructions on providing comments via the portal. If
electronic submission of comments is not feasible due to a lack of
access to a computer and/or the internet, please submit comments by
First-Class Mail or Priority Mail to: Keith M. Mullervy, Patent
Attorney, Mail Stop OPIA, U.S. Patent and Trademark Office, P.O. Box
1450, Alexandria, VA 22313-1450.
FOR FURTHER INFORMATION CONTACT: Keith M. Mullervy, Patent Attorney,
Office of Policy and International Affairs (OPIA), at 571-270-7079.
SUPPLEMENTARY INFORMATION: WIPO is a specialized United Nations agency
based in Geneva, Switzerland. The WIPO SCT is a forum at which WIPO
Member States \1\ and accredited observers facilitate coordination and
provide guidance on the development of international law on trademarks,
industrial designs, and geographical indications, including the
harmonization of national laws and procedures.
---------------------------------------------------------------------------
\1\ WIPO currently has 193 Member States. www.wipo.int/members/en/.
---------------------------------------------------------------------------
The draft DLT aims to help designers obtain easier, faster and
cheaper protection for their industrial designs--both in domestic and
foreign markets. The DLT would streamline the global system for
protecting industrial designs, which are an integral part of many
brands, by simplifying and aligning requirements associated with
industrial design filings. If approved, these changes would benefit the
community of designers, particularly for small-scale designers who may
have limited access to legal support for registering their industrial
designs. In particular, the DLT would make it significantly easier for
small and medium-sized enterprises to obtain industrial design
protection overseas as a result of simplified, streamlined and aligned
procedures and requirements.
Work on the simplification of procedures for the protection of
industrial designs was initially started in the WIPO SCT in 2006 and
gradually matured into an initial set of draft Articles (WIPO/SCT/35/
2,\2\ the ``Industrial Design Law and Practice--Draft Articles'') and
draft Regulations (WIPO/SCT/35/3,\3\ the ``Industrial Design Law and
Practice--Draft Regulations'') for a treaty. Similar treaties already
exist in the area of patents (Patent Law Treaty of 2000) and trademarks
(Trademark Law Treaty of 1994 and Singapore Treaty on the Law of
Trademarks of 2006).
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\2\ https://www.wipo.int/edocs/mdocs/sct/en/sct_35/sct_35_2.pdf.
\3\ https://www.wipo.int/edocs/mdocs/sct/en/sct_35/sct_35_3.pdf.
---------------------------------------------------------------------------
In 2006 and 2007, the SCT requested the WIPO Secretariat to develop
a set of questionnaires relating to the formalities of industrial
design registration and to the differences between all types of marks
and industrial designs, with a view to promoting a better understanding
of the different design systems. In response, the Secretariat developed
a set of questionnaires on industrial design law and practice and
circulated them among SCT members. After receiving replies from the SCT
members, the Secretariat compiled a summary of replies to the set of
questionnaires (WIPO/Strad/INF/2 Rev.2).\4\ In addition, in 2011 and
2012, the SCT requested that the Secretariat prepare a study on the
impact of the Draft Articles and Draft Regulations. In response, the
Secretariat, with the involvement of the WIPO Chief Economist prepared
the study (WIPO/SCT/27/4 \5\ and WIPO/SCT/27/4 ADD).\6\
---------------------------------------------------------------------------
\4\ https://www.wipo.int/export/sites/www/sct/en/meetings/pdf/wipo_strad_inf_2_rev_2.pdf.
\5\ https://www.wipo.int/edocs/mdocs/sct/en/sct_27/sct_27_4.pdf.
\6\ https://www.wipo.int/edocs/mdocs/sct/en/sct_29/sct_27_4_add.pdf.
---------------------------------------------------------------------------
In addition, at its Fifty-Fifth (30th Extraordinary) Session, held
in Geneva on July 14-22, 2022, the WIPO General Assembly decided to
convene a diplomatic conference (to be held no later than 2024) to
conclude and adopt a Design Law Treaty, based on: document WIPO/SCT/35/
2; document WIPO/SCT/35/3; the 2019 proposal considered by the WIPO
General Assembly, on draft Articles and Regulations on Industrial
Design Law and Practice; and any other contributions by Member States.
The General Assembly further decided to convene a Preparatory Committee
in the second half of 2023 to establish the
[[Page 21243]]
necessary modalities of the diplomatic conference. The General Assembly
also directed the SCT to meet in a special session for five days in the
second half of 2023, preceding the Preparatory Committee, to further
close any existing gaps to a sufficient level. Following that session
of the WIPO General Assembly, the Secretariat prepared an updated set
of draft Articles (WIPO/SCT/S3/4,\7\ the ``Industrial Design Law and
Practice--Draft Articles'') (``the Draft Articles'') and draft
Regulations (WIPO/SCT/S3/5,\8\ the ``Industrial Design Law and
Practice--Draft Regulations'') (``the Draft Regulations'') for a
treaty.
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\7\ https://www.wipo.int/edocs/mdocs/sct/en/sct_s3/sct_s3_4.pdf.
\8\ https://www.wipo.int/edocs/mdocs/sct/en/sct_s3/sct_s3_5.pdf.
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A special session of the SCT, held in Geneva on October 2-6, 2023,
worked to close existing gaps in the text based on document WIPO/SCT/
S3/4; document WIPO/SCT/S3/5; and any other contributions by Member
States. The special session is summarized in document WIPO/SCT/S3/9.\9\
In addition, a Preparatory Committee of the Diplomatic Conference, also
held in Geneva on October 9, 2023, established the procedures for the
diplomatic conference. The Preparatory Committee further determined
that the diplomatic conference to conclude and adopt a design treaty
will take place in Riyadh, Kingdom of Saudi Arabia, from November 11-
22, 2024.\10\ The Preparatory Committee meeting is summarized in
document WIPO/DLT/2/PM/6.\11\
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\9\ https://www.wipo.int/edocs/mdocs/sct/en/sct_s3/sct_s3_9.pdf.
\10\ https://www.wipo.int/diplomatic-conferences/en/design-law/.
\11\ https://www.wipo.int/edocs/mdocs/sct/en/dlt_2_pm/dlt_2_pm_6.pdf.
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Request for Comments
This request for comments seeks public/stakeholder input to inform
U.S. government participation in the diplomatic conference (scheduled
from November 11-22, 2024) to conclude and adopt a Design Law Treaty.
The proposed Design Law Treaty is a formalities treaty that would
require contracting parties--that is, the countries and
intergovernmental organizations that accede to the treaty--to adhere to
certain requirements with respect to the protection of industrial
designs. Examples of its provisions include:
Limits on the requirements that contracting parties can
impose as a condition for according design application filing dates to
applicants;
Requirements that contracting parties provide design
applicants with certain flexibilities, including flexibilities for
applicants who miss a time limit during the application process or who
unintentionally allow the registration to lapse;
Requirements that contracting parties must allow design
applicants to correct or add a priority claim to an application in
certain circumstances;
Requirements that contracting parties provide for a grace
period during which public disclosure would not affect eligibility
requirements for obtaining the right; and
Limits on the requirements that contracting parties may
impose as to when applicants can be required to obtain local
representation to take an action before the local office.
In addition, certain provisions are the subject of alternative
options or proposals supported by several delegations, including:
Requirements for an applicant disclosure in design
applications of the origin or source of traditional cultural
expressions, traditional knowledge or biological/genetic resources
providing inspiration for, tangentially associated with, or utilized or
incorporated in, some aspect of the industrial design;
Limits on the requirements in requests for recording of a
license or a security interest; and
Effects of the non-recording of a license.
Request for Information
The USPTO welcomes any relevant comments on the topics described in
this Request for Comments. However, the USPTO is particularly
interested in comments responsive to the questions below. When
responding to the questions, please identify yourself. Commenters need
not respond to every question and may provide relevant information even
if it is not responsive to a particular question.
Questions for Comments
Section I--Observations and Experiences--Generally
1. Please discuss any experiences with filing for industrial design
protection outside of the United States, and to the extent possible,
please: (a) identify the jurisdiction(s); (b) describe the specific
formalities requirements in these jurisdictions; and (c) describe any
experiences associated with satisfying the specific formalities
requirements in these jurisdictions.
2. Please identify any particular challenges encountered in
relation to requirements across jurisdictions when pursuing protection
for an industrial design in multiple jurisdictions.
3. Please describe instances, if any, in which particular formality
requirements associated with the submission of design applications have
resulted in any loss of design rights, additional costs, or other
negative consequences.
Section II--Observations and Experiences--Disclosure Requirement
Related to Genetic Resource, Traditional Knowledge and Traditional
Cultural Expressions
4. Please discuss any experiences with filing for industrial design
protection in a jurisdiction that requires disclosure of the source of
genetic resources, traditional knowledge, or traditional cultural
expressions in an industrial design application, and to the extent
possible, please: (a) identify the jurisdiction(s) that required such
disclosure; (b) describe the circumstances associated with satisfying
the patent disclosure requirement in that jurisdiction; and (c)
describe any experiences associated with the ease or difficulty in
satisfying the patent disclosure requirement in that jurisdiction.
5. Please characterize the level of difficulty in complying with
the aforementioned disclosure requirement. Please describe any
anticipated or unanticipated problems that resulted or may result from
the disclosure itself or the associated requirement for the disclosure.
6. Please describe how experiences with the disclosure requirement
in the aforementioned jurisdiction or other jurisdictions affect the
conduct of a design applicant or holder's business. Where possible,
please identify the jurisdiction as well as any relevant details of the
disclosure requirement.
7. Please identify any type of disclosure requirement associated
with the filing of an application for industrial design protection, in
particular, requirements pertaining to the disclosure of genetic
resources, traditional knowledge, or traditional cultural expressions,
that you believe is necessary, and any benefits or detriments stemming
from such disclosure requirements.
8. Please share whether the existence of an industrial design
disclosure requirement for the source of genetic resources, traditional
knowledge, or traditional cultural expressions in an industrial design
application was (or is or would be) a consideration in pursuing
industrial design protection on a design in a given jurisdiction.
Please provide details in relation to relevant sectors, industries or
technologies
[[Page 21244]]
where this may be a consideration, as well as alternative actions, if
any, that the public has taken or would take in lieu of pursuing
industrial design protection in that jurisdiction.
9. Would a disclosure requirement related to genetic resources,
traditional knowledge, and/or traditional cultural expressions make the
industrial design application process more simplified, consistent,
straight-forward, and time and cost efficient for applicants, including
for small and medium sized enterprises? Please explain why or why not.
10. Should a disclosure requirement related to genetic resources,
traditional knowledge, and/or traditional cultural expressions be
included in the Design Law Treaty? Please explain why or why not.
Section III--Current Text for Diplomatic Conference
11. Please describe your views on the current working text for an
International Legal Instrument Relating to a Design Law Treaty, which
has been approved for consideration by the Diplomatic Conference.
Please describe recommendations, if any, for additions, deletions, or
changes that you would recommend to Articles 1 through 32 of the
Articles or to the Common Regulations, namely Rules 1 through 17. These
texts can be found at the links below:
(a) Current working text ``substantive articles'' (Articles 1
through 23 from the WIPO Industrial Design Law and Practice--Draft
Articles), as revised in the Third Special Session of the Standing
Committee on the Law of Trademarks, Industrial Designs, and Geographic
Indicators, held in Geneva on October 2-6, 2023, as included as pages
3-22 of Annex I to document WIPO/SCT/S3/9, which can be found on the
WIPO website, https://www.wipo.int/edocs/mdocs/sct/en/sct_s3/sct_s3_9.pdf.
(b) Current working text ``administrative provisions and final
clauses'' (Articles 24 through 32 from the WIPO Draft Administrative
Provisions and Final Clauses for a Design Law Treaty), as revised in
the Preparatory Committee of the Diplomatic Conference to Conclude and
Adopt a Design Law Treaty, held in Geneva on October 9, 2023, as
included as pages 2-6 of the Annex to document WIPO/DLT/2/PM6, which
can be found on the WIPO website, https://www.wipo.int/edocs/mdocs/sct/en/dlt_2_pm/dlt_2_pm_6.pdf.
(c) Current working text ``draft regulations'' (Rules 1 through 17
from the WIPO Industrial Design Law and Practice--Draft Regulations),
as revised in the Third Special Session of the Standing Committee on
the Law of Trademarks, Industrial Designs and Geographic Indicators,
held in Geneva on October 2-6, 2023, as included as pages 2-14 of Annex
II to document WIPO/SCT/S3/9, which can be found on the WIPO website,
https://www.wipo.int/edocs/mdocs/sct/en/sct_s3/sct_s3_9.pdf.
(d) WIPO has established a website dedicated to the Diplomatic
Conference to Conclude and Adopt a Design Law Treaty which can be found
at https://www.wipo.int/diplomatic-conferences/en/design-law/ which
contains the aforementioned Articles and Regulations and other
information regarding the Diplomatic Conference, the Design Law Treaty
being considered, and other related information.
(e) Please identify any additional issues in relation to
formalities for industrial designs that you believe should be
considered for inclusion in the Design Law Treaty that are not already
included or any amendments you recommend to existing provisions.
Similarly, please identify any provisions (e.g., Article or Rules)
presently included that should not be included. In any of these
instances, please explain the rationale for this recommendation of an
addition, amendment, or deletion of a provision.
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2024-06390 Filed 3-26-24; 8:45 am]
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