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Notice of Hearing and Request for Comments on Draft Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters

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AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice of Hearing and Request for Comments.

SUMMARY:

The Hague Conference on Private International Law is negotiating a Convention designed to create common jurisdiction rules for international civil and commercial cases and to provide for international recognition and enforcement of judgments issued under these rules. The United States Patent and Trademark Office (USPTO) is seeking views of the public on recent developments on this effort. Interested members of the public are invited to testify at a hearing to be held September 11, 2001, and to present written comments on any of the topics outlined in the supplementary information section of this notice or otherwise related to the proposed Convention.

DATES:

A public hearing will be held on September 11, 2001, starting at 9:30 a.m. and ending no later than 5:00 p.m. Those wishing to testify must request an opportunity to do so no later than August 31, 2001. Speakers may provide a written copy of their testimony for inclusion in the record. Written comments should be submitted on or before October 19, 2001.

ADDRESSES:

The September 11 hearing will be held in the Patent Theater located on the Second Floor of Crystal Park 2, 2121 Crystal Drive, Arlington, Virginia. Persons interested in testifying should send their request to Director of the United States Patent and Trademark Office, Box 4, United States Patent and Trademark Office, Washington, DC 20231, marked to the attention of Anggie Reilly. Requests may also be submitted by facsimile transmission to (703) 305-8885 or by electronic mail through the Internet to anggie.reilly@uspto.gov.

Persons interested in submitting written comments should send their comments to Director of the United States Patent and Trademark Office, Box 4, United States Patent and Trademark Office, Washington, DC 20231, marked to the attention of Velica Steadman. Comments may also be submitted by facsimile transmission to (703) 305-8885 or by electronic mail through the Internet to velica.steadman@uspto.gov. All comments will be maintained for public inspection in Room 902 of Crystal Park 2, 2121 Crystal Drive, Arlington, Virginia. Written comments in electronic form will be made available via the USPTO's World Wide Web site at http://www.uspto.gov.

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FOR FURTHER INFORMATION CONTACT:

Jennifer Lucas by telephone at (703) 305-9300, by facsimile at (703) 305-Start Printed Page 435768885; by electronic mail at jennifer.lucas@uspto.gov; or by mail marked to the attention of Jennifer Lucas, Attorney-Advisor, addressed to Director of the United States Patent and Trademark Office, Box 4, Washington, DC 20231.

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SUPPLEMENTARY INFORMATION

Background

The Hague Conference on Private International Law is negotiating a Convention on jurisdiction and the recognition and enforcement of foreign judgments in civil and commercial matters. The proposed Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters would create jurisdictional rules governing international lawsuits and provide for recognition and enforcement of judgments by the courts of Contracting States. Contracting States would be required to recognize and enforce judgments covered by the Convention if the jurisdiction in the court rendering the judgment was founded on one of the bases of jurisdiction required by the Convention. In addition, some existing domestic bases of jurisdiction would be prohibited by the Convention for cases covered thereby.

The negotiations began in 1992, based on a proposal made by the United States. The impetus behind the request was to gain recognition and enforcement of U.S. judgments in other countries. While U.S. Federal courts generally will recognize and enforce judgments from other countries under state law (see Hilton v. Guyot, 159 U.S. 113 (1895)), U.S. judgments do not always receive the same treatment abroad. In October 1999, the Hague Conference published a draft Convention that was to be finalized at a Diplomatic Conference scheduled for October 2000, but in May 2000 that Diplomatic Conference was postponed to give member countries more time to discuss unsettled issues.

Two particular topics that the Hague Conference has singled out for further discussion are intellectual property and electronic commerce. Recognizing the importance of concerns that had been raised about the impact of the Convention on these matters, in 1999 the Conference agreed to hold informal meetings of international experts to examine the relevant issues in those categories. Two meetings of experts on electronic commerce were held to discuss the effect that electronic commerce might have on traditional jurisdictional rules. In addition, a meeting of intellectual property experts was held in February 2001 in Geneva, Switzerland.

On October 17, 2000, the USPTO published a Request for Comments seeking views on the impact that the October 1999 draft of the proposed Convention would have on intellectual property-related litigation (65 FR 61306 (2000)). The responses to the Request for Comments are available at the USPTO's Web site at http://www.uspto.gov.

The responses indicated that, while uniform rules on jurisdiction and enforcement of judgments might be welcome in the abstract, the problems with the jurisdictional provisions in the October 1999 draft outweighed any benefits that the enforcement provisions would offer. One of the primary flaws asserted about the October 1999 draft was that international developments such as the advent of the Internet and e-commerce have called into question some of the jurisdictional rules that serve as the basis for the proposed Convention.

After postponing the October 2000 Diplomatic Conference, the Hague Conference scheduled a two-part Diplomatic Conference, with meetings to be held in June 2001 and early 2002.

The first session was held June 6-22, 2001, in The Hague, Netherlands. The goal of the Diplomatic Conference was to draft a new, consensus-based text to replace the October 1999 draft. The result was a long compilation text that captures consensus where it exists, and presents proposals, variants, and options on issues where there was no consensus. The text also is heavily footnoted to illuminate additional points. This text is lengthy and makes it clear that there are a considerable number of large and small issues, including those involving intellectual property, on which Members are not in agreement and on which much work is still necessary. The text of the proposed Convention and other documents relating to the proposal are available via the Hague Conference's Web site at http://www.hcch.net/​e/​workprog/​jdgm.html.

At the end of the Diplomatic Conference, the delegates were unable to decide how to move the negotiations forward. They agreed to reconvene, probably in late January 2002, to decide the scope of future negotiations—whether to continue the full project, refocus or scale it back in some way, or suspend it—and the schedule for any future negotiations based on the decision made.

Brief Summary of Draft Convention

As it stands, the draft Convention would create three categories of jurisdiction for cases covered by the Convention: (1) Required bases for jurisdiction, or, as they are referred to by the Hague Conference, the “white list”; (2) prohibited bases for jurisdiction, or the “black list”; and (3) everything else not covered by the white or black lists, or the “gray list.” The draft Convention would, with some exceptions, apply whenever any one party to litigation is not habitually resident in the country where the litigation is brought (see Article 2 of the draft).

The “white list” sets out jurisdictional rules for specific types of actions, such as contract and tort actions or disputes filed in the court of the defendant's “habitual residence.” If a court exercises jurisdiction in accordance with the rules set out in the white list, courts in other Contracting States must recognize and enforce the resulting judgment, with limited exceptions.

Another example of a white list ground of jurisdiction is found in proposed Article 12, which would create exclusive jurisdiction over specified patent and trademark disputes. The draft presents two options for how to treat patents, trademarks, and potentially other types of industrial property. The main difference between the two is the fact that the first option provides for exclusive jurisdiction over patent and trademark infringement actions while the second option does not.

The first option creates exclusive jurisdiction for disputes over the grant, registration, validity, abandonment, revocation, or infringement of a patent or trademark in the country of registration or, for unregistered marks, the country in which the rights arose. The second option would create exclusive jurisdiction for disputes over the grant, registration, validity, abandonment, or revocation of a patent or trademark; however, it would allow courts referred to in any of the other white list provisions also to exercise jurisdiction over patent or trademark infringement actions.

Three additional provisions in Article 12 related to patent or trademark disputes are in brackets with footnotes for further consideration. First, the draft provides for an exception to exclusive jurisdiction for incidental questions, which are defined as when “the court is not requested to give a judgment on that matter, even if a ruling on it is a necessary step in the reasoning that leads to the judgment.” For example, in some court proceedings, such as a breach of contract or a legal malpractice proceeding, the grant, registration, validity, abandonment, revocation or infringement of a patent or mark might Start Printed Page 43577arise as an incidental question to the main complaint. Proposed Article 12(6) would allow a court that otherwise would have no jurisdiction over an industrial property question to decide that question as a factual determination in the underlying case. Such a ruling would have no binding effect in subsequent proceedings regarding the subject patent or trademark, even between the same parties.

Second, it has been suggested in proposed Article 12(7) that other intellectual property rights, such as plant breeders rights and industrial designs but excluding copyrights or neighboring rights, be covered. Finally, as seen in proposed Article 12(8), the draft questions whether the term “court” should include a Patent Office or similar agency for the purpose of recognizing their judgments.

Proceedings related to copyrights could fall under any of the white list grounds of jurisdiction. For instance, copyright infringement proceedings could be covered by the jurisdiction rules for tort actions found in Article 10. Article 10 provides for jurisdiction either in the State in which the act or omission occurred, or the State in which the injury arose so long as the injury in that State was reasonably foreseeable. A proposal, however, was made at the Diplomatic Conference that would have included copyright infringement in the exclusive jurisdiction provision. That issue is still open for discussion.

Proposed Article 13 consists of two alternatives that would create a white list ground of jurisdiction for provisional and protective measure orders under enumerated circumstances. It has been proposed, however, that provisional and protective measures either be excluded from the scope of the proposal (Article 1) or be included in the gray area (Article 17).

Other areas of particular interest to intellectual property holders and users are proposed provisions that would create white list jurisdiction for choice of court clauses in contracts (Article 4), contracts (Article 6), consumer contracts (Article 7) and employment contracts (Article 8).

The “black list,” currently Article 18, defines grounds of jurisdiction that are prohibited in Contracting States for cases covered by the Convention. Article 18(1) would place a general limitation on the exercise of jurisdiction based on the absence of a “substantial connection between that State and the dispute.” Article 18(2)(e) is of particular interest to U.S. litigants. It states that jurisdiction cannot be based solely on the fact that a defendant carries on commercial or other activities in that State, except where the dispute is directly related to those activities. This provision would prohibit the exercise of general “doing business” jurisdiction as currently recognized under U.S. law. Article 18(2) also would prohibit the exercise of “tag” jurisdiction in a court based on service upon the defendant in the State.

Everything that does not fall under either of these categories is included in the “gray area” as defined in Article 17. Countries can continue to act as they normally do under their respective national laws; however, judgments resulting from actions covered by this provision would not get the benefits of recognition and enforcement under the Convention.

The second half of the Convention provides rules governing the recognition and enforcement of judgments based on a ground of jurisdiction provided for in the white list (Articles 3-16). This includes provisions on topics such as dismissal in favor of a previously filed action in another court (known as “lis pendens”) (Article 21), forum non conveniens (Article 22), types of judgments to be recognized or enforced (Article 25), grounds for refusal of recognition (Article 28), and damages (Article 33).

Issues for Public Comment

The USPTO wants to assess support for or opposition to the effort to negotiate a convention on jurisdiction and enforcement of judgments and to obtain comments and suggestions on the proposed Convention as it relates to intellectual property. Interested members of the public are invited to present oral or 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. The USPTO reserves the right to limit the number of oral comments presented if necessary due to time constraints at the hearing, but will accept and consider all written comments submitted. Comments also are welcome on the following specific issues:

1. What are your experiences in having judgments involving intellectual property from one jurisdiction recognized in a foreign court? Have you had different experiences in having those judgments recognized in U.S. courts? In your response, please identify whether you generally represent intellectual property owners, licensees, users, or others.

2. Are uniform rules for international enforcement of judgments desirable?

3. Would the elimination of “tag” or general “doing business” jurisdiction have any impact on intellectual property owners' ability to protect their rights either domestically or internationally?

4. What effect, if any, could this Convention have on an owner's ability to enforce its intellectual property rights for uses over the Internet?

5. Is exclusive white list jurisdiction needed for infringement actions involving patents, trademarks, and/or copyrights?

6. Should non-exclusive white list jurisdiction apply, per proposed Article 12(6), to matters that otherwise would be covered by Article 12 when they arise as incidental questions in proceedings that do not have as their object the grant, registration, abandonment, revocation or infringement of a patent or trademark?

7. If you responded yes to Question 6, should the court's decision regarding the incidental question have preclusive effect in a court of other Contracting States? What about courts in the same Contracting State?

8. What other registered intellectual property, if any, should be subject to the exclusive jurisdiction provisions?

9. What other unregistered intellectual property, if any, should be subject to the exclusive jurisdiction provisions?

10. How should other intellectual property or related actions, such as passing off, unfair competition, cybersquatting and dilution complaints, be treated under the Convention?

11. Should provisional and protective measures be covered by the Convention, specifically excluded from the Convention, or left to current national law?

12. Does the draft Convention affect in any way the substantive law that applies to an activity of any party with respect to intellectual property?

13. How will the draft Convention provisions affect traditional contractual freedom for parties to enter into agreements that typically designate choice of forum and law?

14. Should jurisdiction over actions involving intellectual property be included within the scope of the Convention? If no, please explain which types of intellectual property should be excluded and why.

15. Please identify any other potential concerns or advantages raised by the draft Convention and ways it might be modified to achieve an identified objective.

In your response, please include the following: (1) Clearly identify the matter being addressed; (2) Provide examples, where appropriate, of the matter being addressed; (3) Identify any relevant legal Start Printed Page 43578authorities applicable to the matter being addressed; and (4) Provide suggestions regarding how the matter should be addressed by the United States.

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Dated: August 14, 2001.

Nicholas P. Godici,

Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office.

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[FR Doc. 01-20916 Filed 8-17-01; 8:45 am]

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