2910 International Design Application Fees [R-07.2022]

37 CFR 1.1031 International design application fees.

(a) International design applications filed through the Office as an office of indirect filing are subject to payment of a transmittal fee (35 U.S.C. 382(b) and Article 4(2)) in the amount of:
- By a micro entity (§ 1.29)...........$30.00
- By a small entity (§ 1.27(a))...........60.00
- By other than a small or micro entity...........120.00
(b) The Schedule of Fees annexed to the Regulations (Rule 27(1)), a list of individual designation fee amounts, and a fee calculator may be viewed on the Web site of the World Intellectual Property Organization, currently available at http://www.wipo.int/hague.
(c) The following fees required by the International Bureau may be paid either directly to the International Bureau or through the Office as an office of indirect filing in the amounts specified on the World Intellectual Property Organization Web site described in paragraph (b) of this section:
- (1) International application fees (Rule 12(1)); and
- (2) Fee for descriptions exceeding 100 words (Rule 11(2)).
(d) The fees referred to in paragraph (c) of this section may be paid as follows:
- (1) Directly to the International Bureau in Swiss currency (see Administrative Instruction 801); or
- (2) Through the Office as an office of indirect filing, provided such fees are paid no later than the date of payment of the transmittal fee required under paragraph (a) of this section. Any payment through the Office must be in U.S. dollars. Applicants paying the fees in paragraph (c) of this section through the Office may be subject to a requirement by the International Bureau to pay additional amounts where the conversion from U.S. dollars to Swiss currency results in the International Bureau receiving less than the prescribed amounts.
(e) Payment of the fees referred to in Article 17 and Rule 24 for renewing an international registration (“renewal fees”) is not required to maintain a U.S. patent issuing on an international design application in force. Renewal fees, if required, must be submitted directly to the International Bureau. Any renewal fee submitted to the Office will not be transmitted to the International Bureau.
(f) The designation fee for the United States shall consist of:
- (1) A first part established in Swiss currency pursuant to Hague Rule 28 based on the combined amounts of the basic filing fee (§ 1.16(b) ), search fee (§ 1.16(l) ), and examination fee (§ 1.16(p) ) for a design application. The first part is payable at the time of filing the international design application; and
- (2) A second part (issue fee) as provided in § 1.18(b). The second part is payable within the period specified in a notice of allowance (§ 1.311 ).

Hague Rule 12

Fees Concerning the International Application

(1) [Prescribed Fees]
- (a) The international application shall be subject to the payment of the following fees:
  - (i) a basic fee;
  - (ii) a standard designation fee in respect of each designated Contracting Party that has not made a declaration under Article 7(2) of the 1999 Act or under Rule 36(1), the level of which will depend on a declaration made under subparagraph (c);
  - (iii) an individual designation fee in respect of each designated Contracting Party that has made a declaration under Article 7(2) of the 1999 Act or under Rule 36(1);
  - (iv) a publication fee.
- (b) The level of the standard designation fee referred to in subparagraph (a)(ii) shall be as follows:
  - (i) for Contracting Parties whose office does not carry out any examination on substantive ground:………………………………….one
  - (ii) for Contracting Parties whose office carries out examination on substantive grounds, other than as to novelty: ………………….two
  - (iii) for Contracting Parties whose office carries out examination on substantive grounds, including examination as to novelty either ex officio or following opposition by third parties: ……………………………three
- (c)
  - (i) Any Contracting Party whose legislation entitles it to the application of level two or three under subparagraph (b) may, in a declaration, notify the Director General accordingly. A Contracting Party may also, in its declaration, specify that it opts for the application of level two, even if its legislation entitles it to the application of level three.
  - (ii) Any declaration made under item (i) shall take effect three months after its receipt by the Director General or at any later date indicated in the declaration. It may also be withdrawn at any time by notification addressed to the Director General, in which case such withdrawal shall take effect one month after its receipt by the Director General or at any later date indicated in the notification. In the absence of such a declaration, or where a declaration has been withdrawn, level one will be deemed to be the level applicable to the standard designation fee in respect of that Contracting Party.
(2) [When Fees to Be Paid] The fees referred to in paragraph (1) are, subject to paragraph (3), payable at the time of filing the international application, except that, where the international application contains a request for deferment of publication, the publication fee may be paid later, in accordance with Rule 16(3)(a).
(3) [Individual Designation Fee Payable in Two Parts]
- (a) A declaration under Article 7(2) of the 1999 Act or under Rule 36(1) may also specify that the individual designation fee to be paid in respect of the Contracting Party concerned comprises two parts, the first part to be paid at the time of filing the international application and the second part to be paid at a later date which is determined in accordance with the law of the Contracting Party concerned.

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Pursuant to Hague Agreement Rule 12, an international design application is subject to the following fees: (1) basic fee; (2) publication fee(s); (3) designation fee(s); and (4) an additional word fee where the description exceeds 100 words. In addition, a transmittal fee is required for an international design application filed through the USPTO as an office of indirect filing.

The International Bureau provides an online fee calculator tool (“Hague System Fee Calculator") to help applicants quickly determine the amount of application fees that will be due (excluding any required transmittal fee). The calculator tool takes into account such factors as the number of designs and reproductions contained in the application and the Contracting Parties designated to determine the amount of the application fees that will be due in Swiss currency. The calculator tool is available at www.wipo.int/hague/en/fees/calculator.jsp.

I. TRANSMITTAL FEE

International design applications filed through the USPTO as an office of indirect filing are subject to payment of a transmittal fee. See 37 CFR 1.1031(a). Payment of the transmittal fee must be in U.S. dollars. The USPTO will not transmit the international design application to the International Bureau if the transmittal fee has not been paid. See 37 CFR 1.1045. Applicants are cautioned that an international design application not received by the International Bureau within six months from the date the international design application is received by the USPTO will not be entitled to a filing date as of the date of receipt of the application by the USPTO. See Hague Agreement Rule 13.

The transmittal fee is discounted for small and micro entities. Payment, by any party, of the exact amount of the small entity transmittal fee set forth in 37 CFR 1.1031(a) will be treated as a written assertion of entitlement to small entity status. See 37 CFR 1.27 and MPEP §§ 509.02 and 509.03 for requirements for establishing small entity status, and 37 CFR 1.29 and MPEP § 509.04 for requirements for establishing micro entity status.

II. BASIC FEE, PUBLICATION FEE(S), DESIGNATION FEE(S) AND ADDITIONAL WORD FEE

The amount of the basic fee (Rule 12(1)(i)) is set forth in the Schedule of Fees and is dependent upon the number of designs included in the international design application. The amount of the publication fee (Rule 12(1)(iv)) is also set forth in the Schedule of Fees and is dependent upon the number of reproductions to be published and the form in which the reproductions are submitted. The Schedule of Fees is currently available on the website of the International Bureau at www.wipo.int/hague/ en/fees/sched.html.

A standard or individual designation fee applies with respect to each Contracting Party designated in an international design application. The standard designation fee (Rule 12(1)(ii)) applies with respect to the designation of any Contracting Party that has not specifically set an individual designation fee. The standard designation fee varies between levels 1-3, depending on the form of examination performed by each designated Contracting Party and on any specific agreement between such Contracting Party and the International Bureau. The standard designation fees are set forth in the Schedule of Fees.

The individual designation fee (Rule 12(1)(iii)) applies where an application designates a Contracting Parties that has made a declaration under Article 7(2) of the Hague Agreement setting an individual designation fee. Individual designation fees established pursuant to Article 7(2) are set forth on the website of the International Bureau at www.wipo.int/hague/en/fees/individ-fee.html.

The United States has made a declaration under Article 7(2) and requires an individual designation fee that is payable in a first part at filing and second part payable upon allowance of the application by the USPTO. See MPEP § 2903. The first part of the United States designation fee consists of the combined amounts of the basic filing fee (37 CFR 1.16(b)), search fee (37 CFR 1.16(l)), and examination fee (37 CFR 1.16(p)) for a design application, established in Swiss currency pursuant to Hague Agreement Rule 28. See 37 CFR 1.1031(f)(1). The second part of the United States designation fee is the issue fee (37 CFR 1.18(b)), which is payable within the period specified in a notice of allowance. See 37 CFR 1.1031(f)(2) and MPEP § 2920.06. The first and second parts of the individual designation fee for the United States are discounted for small and micro entities. See 37 CFR 1.27 and MPEP §§ 509.02 and 509.03 for requirements for establishing small entity status, and 37 CFR 1.29 and MPEP § 509.04 for requirements for establishing micro entity status. With respect to international design applications, the payment by any party of the small entity first part of the individual designation fee for the United States to the International Bureau will be treated as a written assertion of entitlement to small entity status. See 37 CFR 1.27(c)(3). In addition, a micro entity certification may be signed by a person authorized to represent the applicant in the international design application under 37 CFR 1.1041 before the International Bureau where the micro entity certification is filed with the International Bureau. See 37 CFR 1.29(e).

An additional per word fee is also required where the description exceeds 100 words. This fee is based on the description set forth in Item 9 (“Description”) of the DM/1 form.

The Fee Calculation Sheet included with the DM/1 form also specifies the amounts of the basic fees, publication fees, designation fees, and the additional word fee where the description exceeds 100 words. Also included is a listing of the level of the standard designation fee applicable to respective Contracting Parties.

III. PAYMENT OF FEES THROUGH THE USPTO WHEN APPLICATION FILED THROUGH USPTO AS AN OFFICE OF INDIRECT FILING

Certain international fees payable to the International Bureau may be paid through the USPTO as an office of indirect filing, provided such fees are paid no later than the date of payment of the transmittal fee. See 37 CFR 1.1031(c). Applicants are not required to pay such fees through the USPTO but rather may pay such fees directly to the International Bureau. Furthermore, any payment of such fees through the USPTO must be in U.S. dollars. As all payments made to the International Bureau must be in Swiss currency, the U.S. dollar amount collected may, when converted to Swiss currency, be different than the required Swiss currency amount. Accordingly, applicants are cautioned that paying such international fees through the USPTO may still result in a requirement by the International Bureau to pay additional amounts where the conversion from U.S. dollars to Swiss currency results in the International Bureau receiving less than the prescribed amounts. Any payment in response to an invitation from the International Bureau requiring additional fees must be made directly to the International Bureau within the period set in the invitation to avoid abandonment of the application pursuant to Article 8 of the Hague Agreement. To avoid receiving an invitation from the International Bureau requiring additional fees, applicants may wish to consider including authorization in the fee payment section of the DM/1 form to allow the International Bureau to debit the required fees to a current account established with the International Bureau. See Administrative Instruction 801 and MPEP § 2909.01.

Applicant may charge international design application fees to a USPTO deposit account when filing an international design application through the USPTO as an office of indirect filing. However, a general authorization to charge such fees will only be effective with respect to the transmittal fee required under 37 CFR 1.1031(a). See 37 CFR 1.25. In addition, international design application fees may not be paid through the USPTO after the date of payment of the transmittal fee. See 37 CFR 1.1031(c). Nor may any renewal fees referred to in Hague Agreement Rule 24 for renewing an international registration be paid through the USPTO. See 37 CFR 1.1031(e).

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Last Modified: 02/16/2023 12:58:27