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2920 National Processing of International Design Applications Designating the United States [R-07.2022]

35 U.S.C. 389 Examination of international design application.

(a) IN GENERAL.—The Director shall cause an examination to be made pursuant to this title of an international design application designating the United States.
(b) APPLICABILITY OF CHAPTER 16.—All questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16.
(c) FEES.—The Director may prescribe fees for filing international design applications, for designating the United States, and for any other processing, services, or materials relating to international design applications, and may provide for later payment of such fees, including surcharges for later submission of fees.
(d) ISSUANCE OF PATENT.—The Director may issue a patent based on an international design application designating the United States, in accordance with the provisions of this title. Such patent shall have the force and effect of a patent issued on an application filed under chapter 16.

37 CFR 1.9 Definitions.

(a)
- (1) A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
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- (3) A nonprovisional application as used in this chapter means either a U.S. national application for patent which was filed in the Office under 35 U.S.C. 111(a), an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.

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Hague Article 10

International Registration, Date of the International Registration, Publication and Confidential Copies of the International Registration

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(3) [Publication]
- (a) The international registration shall be published by the International Bureau. Such publication shall be deemed in all Contracting Parties to be sufficient publicity, and no other publicity may be required of the holder.
- (b) The International Bureau shall send a copy of the publication of the international registration to each designated Office.

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Hague Article 14

Effects of the International Registration

(1) [Effect as Application Under Applicable Law] The international registration shall, from the date of the international registration, have at least the same effect in each designated Contracting Party as a regularly-filed application for the grant of protection of the industrial design under the law of that Contracting Party.

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Hague Article 12

Refusal

(1) [Right to Refuse] The Office of any designated Contracting Party may, where the conditions for the grant of protection under the law of that Contracting Party are not met in respect of any or all of the industrial designs that are the subject of an international registration, refuse the effects, in part or in whole, of the international registration in the territory of the said Contracting Party, provided that no Office may refuse the effects, in part or in whole, of any international registration on the ground that requirements relating to the form or contents of the international application that are provided for in this Act or the Regulations or are additional to, or different from, those requirements have not been satisfied under the law of the Contracting Party concerned.

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The Office will examine an international design application designating the United States pursuant to Title 35 United States Code. See 35 U.S.C. 389(a). An applicant does not need to file any submissions with the Office to initiate examination of an international design application designating the United States. Rather, published international design registrations that designate the United States will be systematically received from the International Bureau pursuant to Hague Agreement Article 10(3) and examined in due course.

Upon receipt of the publication under Article 10(3), the Office will establish an application file for examination. Where the Office was also the office of indirect filing, the application file established as the office of indirect filing will be used as the application for examination, thus retaining the same application number. The Office will send a filing receipt to the applicant shortly after receipt of the publication under Article 10(3) indicating the U.S. application number, U.S. filing date, inventorship, applicant, and other relevant application data of record.

The U.S. application file will be made available to the public via Patent Center after publication under Article 10(3) of an international registration designating the United States. The U.S. application number corresponding to the international registration may be found by searching the international registration number using Patent Center. Prior to publication, access will only be provided in accordance with 37 CFR 1.14. See 37 CFR 1.14(j).

Pursuant to 37 CFR 1.9(a)(1), the term “national application” as used in the U.S. rules includes an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10. Pursuant to 37 CFR 1.9(a)(3), the term “nonprovisional application” as used in the U.S. rules includes an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10. An international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10 is also referred to herein as a “nonprovisional international design application”.

2920.01 Inventorship [R-07.2022]

37 CFR 1.41 Inventorship.

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(f) The inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). Any correction of inventorship must be pursuant to § 1.48.

Pursuant to 37 CFR 1.41(f), the inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3).

Inventorship may be corrected in accordance with the provisions of 37 CFR 1.48(a). See MPEP § 602.01(c)et seq. for a detailed discussion of correction of inventorship, correcting or updating the name of an inventor, and adjusting the order of the names of joint inventors. Note that a request to correct the inventorship filed under 37 CFR 1.48(a) should identify the inventorship change and must be accompanied by a signed application data sheet (ADS) including the legal name, residence, and mailing address of the inventor or each actual joint inventor (see 37 CFR 1.76(b)(1)) and the processing fee set forth in 37 CFR 1.17(i). The ADS submitted with a request under 37 CFR 1.48(a) must identify the information being changed with underlining for insertions and strike-through or brackets for text removed. See MPEP § 602.01(c)(1). In addition, in accordance with 37 CFR 1.48(c), a request to correct or change the inventorship under 37 CFR 1.48(a) filed after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee set forth in 37 CFR 1.17(d).

37 CFR 1.48(b) provides that an oath or declaration as required by 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration. Accordingly, where an inventor is added pursuant to 37 CFR 1.48(a) after publication of the international registration, an executed oath or declaration from the inventor will be required. See MPEP § 2920.04(c).

The name of an inventor may be corrected or updated and the order of the names of the joint inventors may be adjusted in accordance with the provisions of 37 CFR 1.41(f). 37 CFR 1.41(f) specifically provides that any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include: (1) an ADS in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name in the desired order (identifying the information that is being changed as required by 37 CFR 1.76(c)(2)); and (2) the processing fee set forth in 37 CFR 1.17(i). In addition to the corrected ADS, the request should also identify the desired inventor name change. See MPEP § 602.01(c)(2).

Under the laws of certain foreign countries, the creator may be a legal entity. Under U.S. national law, however, the inventor cannot be a juristic entity. Where a nonprovisional international design application identifies a juristic entity as an inventor, Form Paragraph 29.04 should be used to reject the claim under 35 U.S.C. 171 and 35 U.S.C. 115 for failing to set forth the correct inventorship:

¶ 29.04 Statement of Statutory Bases, Improper Inventorship in International Design Application

Requirements applicable to design applications under 35 U.S.C. chapter 16 apply to international design applications except as otherwise provided under 35 U.S.C. chapter 38. See 35 U.S.C. 382(c), 383, and 389(b).

35 U.S.C. 171(b) reads as follows:

(b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

35 U.S.C. 115(a) reads as follows (in part):

An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.

The present application sets forth incorrect inventorship because [1].

The claim is rejected under 35 U.S.C. 171 and 35 U.S.C. 115 for failing to set forth the correct inventorship for the reasons stated above.

Applicant may correct inventorship pursuant to 37 CFR 1.48(a) by submitting to the USPTO a properly signed and marked-up application data sheet (ADS) identifying each inventor by his or her legal name and accompanied by the required processing fee (37 CFR 1.17(i)). Any request to correct or change the inventorship under 37 CFR 1.48(a) filed after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee set forth in 37 CFR 1.17(d). A corrected application data sheet in compliance with 37 CFR 1.76(c) must identify the information that is being changed, with underlining for insertions, and strike-through or brackets for text removed. In addition, an oath or declaration as required by 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration. See 37 CFR 1.48(b). The ADS, inventor's declaration, and substitute statement forms are available on the website of the USPTO at www.uspto.gov/patent/forms/forms.

Examiner Note:

In bracket 1, insert the basis for concluding that the inventorship is incorrect (e.g., "under U.S. national law, the inventor cannot be a juristic entity").

2920.02 Applicant [R-07.2022]

The rules governing the applicant for patent set forth in 37 CFR 1.42-1.46 are generally applicable to nonprovisional international design applications. See 37 CFR 1.1061; see also MPEP § 605.01 for a detailed discussion regarding the applicant for patent.

With respect to applicants under 37 CFR 1.46 (i.e., the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter), 37 CFR 1.46(b) provides that if a nonprovisional international design application is applied for by a person other than the inventor under 37 CFR 1.46(a) (i.e., the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter), that person must have been identified as the applicant in the publication of the international registration under Hague Agreement Article 10(3). Thus, a 37 CFR 1.46 applicant identified as the applicant in the publication of the international registration is the applicant in the nonprovisional international design application.

Any request to change the applicant under 37 CFR 1.46 after an original applicant has been specified must include a corrected application data sheet (ADS) under 37 CFR 1.76 specifying the applicant in the applicant information section in accordance with 37 CFR 1.76(c)(2) and must comply with 37 CFR 3.71 and 3.73. See 37 CFR 1.46(c)(2). Thus, if there is a change of applicant under 37 CFR 1.46 (e.g., from the inventor to the assignee, or from one assignee to another assignee), the new applicant must establish its ownership of the application under 37 CFR 3.71(b) and 3.73. See MPEP § 605.01, subsection II.

Any request to correct or update the name of the applicant under 37 CFR 1.46 must include a corrected ADS under 37 CFR 1.76 specifying the correct or updated name of the applicant in the applicant information section. See 37 CFR 1.46(c)(1). Thus, if there is no change in the applicant itself but just the applicant’s name (due to a correction or name change), the applicant need only submit a corrected ADS specifying the correct or updated name in the applicant information section. Any corrected ADS must identify the information being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2).

A change in the name of the applicant under 37 CFR 1.46 recorded pursuant to Hague Agreement Article 16(1)(ii) may also be effective to change the name of the applicant in a nonprovisional international design application. See 37 CFR 1.46(c)(1). The recording of the name change pursuant to Article 16(1)(ii) must have been made no later than payment of the issue fee. Hague Agreement Article 16(1)(ii) provides for recording in the International Register by the International Bureau of a change in the name of the holder. Under Article 16(2), such recording has the same effect as if made in the office of each of the designated Contracting Parties. Thus, where the applicant under 37 CFR 1.46 in a nonprovisional international design application is the holder of the international registration, correction or update of the applicant’s name may be made through the mechanism under Article 16(1)(ii).

2920.03 Correspondence Address [R-07.2015]

37 CFR 1.1066 Correspondence address for a nonprovisional international design application.

(a) Unless the correspondence address is changed in accordance with § 1.33(a), the Office will use as the correspondence address in a nonprovisional international design application the address according to the following order:
- (1) The correspondence address under § 1.1042;
- (2) The address of applicant’s representative identified in the publication of the international registration; and
- (3) The address of the applicant identified in the publication of the international registration.
(b) Reference in the rules to the correspondence address set forth in § 1.33(a) shall be construed to include a reference to this section for a nonprovisional international design application.

37 CFR 1.1066(a) sets forth how the Office will establish the correspondence address for a nonprovisional international design application in the absence of a communication from the applicant changing the correspondence address. Specifically, 37 CFR 1.1066(a) provides that, unless the correspondence address is changed in accordance with 37 CFR 1.33(a) the Office will use as the correspondence address in a nonprovisional international design application the address according to the following order: (i) the correspondence address under 37 CFR 1.1042; (ii) the address of the applicant’s representative identified in the publication of the international registration; and (iii) the address of the applicant identified in the publication of the international registration.

See MPEP § 601.03(a) for further information regarding changing the correspondence address in an application.

2920.04 Elements of a Nonprovisional International Design Application [R-07.2015]

2920.04(a) Specification [R-07.2022]

I. TITLE

37 CFR 1.1067 Title, description, and inventor’s oath or declaration.

(a) The title of the design must designate the particular article. Where a nonprovisional international design application does not contain a title of the design, the Office may establish a title. No description, other than a reference to the drawing, is ordinarily required in a nonprovisional international design application.

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The title of the design identifies the article in which the design is embodied by the name generally known and used by the public. In general, the practice set forth in MPEP § 1503.01 with regard to titles in design applications filed under 35 U.S.C. chapter 16 applies to nonprovisional international design applications. Thus, for example, the title may be directed to the entire article embodying the design while the claimed design, as shown in the reproductions, or as shown and described, may be directed to only a portion of the article. However, the title may not be directed to less than the claimed design.

Pursuant to 35 U.S.C. 154(a)(1), ‘‘[e]very patent shall contain a short title of the invention. . . ’’ In addition, the application’s title of the invention is indicated on the official filing receipt and the bibliographic data sheet contained in the image file wrapper (IFW). The Hague Agreement, however, does not provide for application titles for international design applications. Nevertheless, applicants may provide an application title in a nonprovisional international design application by furnishing the title in an application data sheet in accordance with 37 CFR 1.76 or by amending the specification in accordance with 37 CFR 1.121 to include the application title. In the absence of an application title furnished by the applicant, the Office will establish a title by retrieving the first listed product indication appearing on the published international registration (INID code 54). See 37 CFR 1.1067(a). The title established by the Office will appear on the official filing receipt and/or bibliographic data sheet.

Since 37 CFR 1.1067 requires that the title must designate the particular article, and since the claim must be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described, the title and claim must correspond (i.e., the article named in the title must correspond to the article named in the claim). See 37 CFR 1.1025 and MPEP § 1503.01, subsection I. When the article named in the title furnished by the applicant and the article named in the claim do not correspond, the examiner should object to the inconsistency under 37 CFR 1.1067 and require correction. Form paragraph 29.59.02 may be used if amendment of a title is necessary for consistency with the claim. When the applicant has furnished the title, applicant approval of an examiner’s amendment thereto is required. See MPEP § 1302.04. When the Office has established the title, applicant approval of an examiner’s amendment thereto is not required.

Any amendment to the language of the title should also be made at each occurrence of the language of the title throughout the application, except in the oath or declaration. If the article named in the title is not present in the original figure descriptions, it is not necessary to incorporate the article into the figure descriptions as part of any amendment to the language of the title. Product indications required under Article 5(1)(iv) of the Hague Agreement (see MPEP § 2909) set forth in the specification may differ from the article named in the title and in the claim, as product indications “shall preferably be identified by using terms” appearing in the Locarno classification. See Rule 7(3)(iv). The form paragraphs below may be used in nonprovisional international design applications as appropriate.

¶ 15.05.01 Title of Design Invention

The title of a design must designate the name of the article in which the design is embodied or applied to. In addition, the title must correspond with the claim. See MPEP § 1503.01 and 37 CFR 1.153 or MPEP § 2920.04(a) and 37 CFR 1.1067.

¶ 15.59 Amend Title

For [1], the title, and each occurrence of the language of the title, [2] amended throughout the application, original oath or declaration excepted, to read: [3]

Examiner Note:

1. In bracket 1, insert reason.
2. In bracket 2, insert --should be-- or --has been--.
3. When the applicant has furnished the application title, applicant's authorization is required to make an examiner’s amendment to the application title. See MPEP § 1302.04. Where the changes are made by examiner's amendment, this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01. If an extension of time is required, use form paragraph 13.02.02 instead of form paragraphs 13.02 and 13.02.01.

¶ 29.59.01 Amend Title Except for Product Indication

For [1], the title, and each occurrence of the language of the title, [2] amended throughout the application, except for the Design No./Product(s) section and original oath or declaration, to read: [3]

Examiner Note:

1. This form paragraph is only to be used in a nonprovisional international design application.
2. This form paragraph may be used where the product indication does not correspond to the article named in the title but is identified by terms appearing in the Locarno classification. Where the title, and each occurrence of the language of the title, is to be amended through the entire application, including the product indication (e.g., when the product indication corresponds to the article named in the title), use form paragraph 15.59 instead.
3. In bracket 1, insert reason.
4. In bracket 2, insert --should be-- or --has been--.
5. When the applicant has furnished the application title, applicant's authorization is required to make an examiner's amendment to the application title. See MPEP §§ 1302.04 and 2920.04(a). Where the changes are made by examiner's amendment, this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01. If an extension of time is required, use form paragraph 13.02.02 instead of form paragraphs 13.02 and 13.02.01.

¶ 29.59.02 Amend Application Title to Correspond to the Claim

For consistency with the claim, the title of the application has been amended to read: [1]

Examiner Note:

1. This form paragraph is only to be used in a nonprovisional international design application.
2. This form paragraph may be used in an Examiner's Amendment where the application title (the title appearing in the Bib Data Sheet) is being amended to correspond to the claim (i.e., the article named in the application title is being amended to correspond to the article named in the claim).
3. When the applicant has furnished the application title, applicant's authorization is required to make an examiner's amendment to the application title, and this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01. See MPEP §§ 1302.04 and 2920.04(a). If an extension of time is required, use form paragraph 13.02.02instead of form paragraphs 13.02 and 13.02.01.
4. When the Office has established the application title, applicant's authorization is not required to make an examiner's amendment to the application title, and this form paragraph should be preceded by form paragraph 13.02.

II. DESCRIPTION

37 CFR 1.1067 Title, description, and inventor’s oath or declaration.

(a) The title of the design must designate the particular article. Where a nonprovisional international design application does not contain a title of the design, the Office may establish a title. No description, other than a reference to the drawing, is ordinarily required in a nonprovisional international design application.

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No description of the design in the specification beyond a brief description of the drawing is generally necessary, since as a rule the illustration in the drawing views is its own best description. In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). However, while not required, such a description is not prohibited and may be incorporated into the specification. Descriptions of the figures are not required to be written in any particular format, however, if they do not describe the views of the drawing clearly and accurately, the examiner should object to the unclear and/or inaccurate descriptions and suggest language which provides a clear and accurate description of the views.

Applicants are cautioned against using “reference view” as a figure description in international design applications designating the United States. While “reference view” is commonly used in some foreign countries as a figure description, this term does not have any special meaning in U.S practice. Accordingly, the reference view will be treated as another view of the design, and any inconsistencies between the reference view and the other figures of the claimed design may cause uncertainty as to the scope of the claim, resulting in a rejection under 35 U.S.C. 112(a) and (b), as nonenabling and indefinite. A reference view described in the description as not included in the claimed design may result in uncertainty as the scope of the design claimed where the reference view includes features of the claimed design shown in the other views.

In addition to the figure descriptions, statements that are permissible in the specification of a design application filed under 35 U.S.C. chapter 16 are permissible in the specification of a nonprovisional international design application. See MPEP § 1503.01, subsection II for a list of such permissible statements. This includes, for example, statements indicating the nature and environmental use of the claimed design, and statements indicating the purpose of broken lines in the drawing, for example, environmental structure or boundaries that form no part of the design to be patented. In addition, Administrative Instruction 403 permits matter shown in a reproduction for which protection is not sought to be indicated in the description and/or by means of broken or dotted lines or coloring. Accordingly, the specification may include statements explaining that protection is not sought for certain features shown in the reproduction, or that protection is not sought for matter shown in a specified color in the reproduction. When protection is not sought for portions of subject matter shown in a reproduction, applicants are strongly encouraged to indicate such subject matter by means of broken lines (or coloring) and include a statement in the specification explaining the meaning of the broken lines (or coloring). See MPEP § 2920.05(c) .

The specification of a nonprovisional international design application is not permitted to include statements describing matters that are directed to function or are unrelated to the design. In addition, the specification may not include statements that describe or suggest other embodiments of the claimed design which are not illustrated in the drawing disclosure, except one that is a mirror image of that shown or has a shape and appearance that would be evident from the one shown. However, such statements may be included in the design application as originally filed to provide antecedent basis for a future amendment. In addition, statements which attempt to broaden the scope of the claimed design beyond that which is shown in the drawings are not permitted.

The form paragraphs set forth in MPEP § 1503.01, subsection II, pertaining to the description may be used in nonprovisional international design applications. In addition, the following form paragraphs may be used to amend the specification by examiner’s amendment to include figure descriptions and/or a description of broken lines or coloring, as appropriate:

¶ 29.60.02 Objection to Specification - Missing Figure Descriptions

The specification is objected to under 37 CFR 1.1067 for failing to provide figure descriptions. The description should indicate the type of view shown in the corresponding figure, such as "front view," "perspective view," "top view," etc.

Examiner Note:

If some, but not all, figure descriptions are missing, the examiner should indicate which descriptions are missing, e.g. "Descriptions for Figures [add numbers of figures without a corresponding description] have not been provided."

¶ 29.22 Description of Broken Lines Added by Examiner's Amendment (International Design Application)

The following sentence has been added to the specification immediately preceding the claim:

--The broken line showing of [1] is for the purpose of illustrating [2] and forms no part of the claimed design.--

Examiner Note:

1. This form paragraph should only be used in an international design application in an Examiner's Amendment for explaining the meaning of the broken lines.
2. In bracket 1, insert name of structure.
3. In bracket 2, insert --portions of the "article"-- or --environmental structure--.
4. Applicant's authorization is required. This form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 where an extension of time is not necessary. If an extension of time is needed, form paragraph 13.02.02 should be used instead of form paragraphs 13.02 and 13.02.01.

¶ 29.24 Description of Broken Lines as Boundary of Design Added by Examiner's Amendment (International Design Application)

The following sentence has been added to the specification immediately preceding the claim:

--The [1] broken line(s) define the bounds of the claimed design and form no part thereof.--

Examiner Note:

1. This form paragraph should only be used in an international design application in an Examiner’s Amendment for explaining the meaning of the broken line(s).
2. In bracket 1, insert type of broken line, e.g. dashed or dot-dash or dot-dot-dash.
3. Applicant's authorization is required. This form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 where an extension of time is not necessary. If an extension of time is needed, form paragraph 13.02.02 should be used instead of form paragraphs 13.02 and 13.02.01.

¶ 29.26 Description of Coloring Added by Examiner's Amendment (International Design Application)

The following sentence has been added to the specification immediately preceding the claim:

--The portion of the design shown in the color [1] is for the purpose of illustrating [2] and forms no part of the claimed design.--

Examiner Note:

1. This form paragraph should only be used in an international design application in an Examiner’s Amendment for explaining the meaning of color used in the reproductions.
2. In bracket 1, identify the color indicating the matter excluded from the claim.
3. In bracket 2, insert --portions of the “article”-- or --environmental structure--.
4. Applicant's authorization is required. This form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 where an extension of time is not necessary. If an extension of time is needed, form paragraph 13.02.02 should be used instead of form paragraphs 13.02 and 13.02.01.

Where the application contains at least one color drawing or color photograph, the examiner should not require the applicant to amend the specification to add a reference to the color drawing or photograph. Instead, the examiner may amend the specification by Examiner’s Amendment to indicate the presence of the color drawing or photograph using the form paragraph below. The applicant’s authorization is not required.

¶ 29.61.01 At-least-one-color-drawing Statement

The application contains at least one color drawing or color photograph. The specification has been amended to include the following language as the first paragraph of the brief description of the drawings section:

-- The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee. --

Examiner Note:

This form paragraph is only for use in an Examiner's Amendment in international design applications. Authorization for this Examiner's Amendment is not required.

III. CLAIM

37 CFR 1.1025 The claim.

The specific wording of the claim in an international design application designating the United States shall be in formal terms to the ornamental design for the article (specifying name of article) as shown, or as shown and described. More than one claim is neither required nor permitted for purposes of the United States.

The form and content of a claim in a nonprovisional international design application is set forth in 37 CFR 1.1025.

A design patent application may only include a single claim. The specific wording of the claim must be in formal terms to the ornamental design for the article (the article which embodies the design or to which it is applied) as shown, or as shown and described. The description of the article in the claim should be consistent in terminology with the title of the invention. See MPEP § 2920.04(a), subsection I.

When the specification includes a proper descriptive statement of the design (see MPEP § 2920.04(a), subsection II), or a proper showing of modified forms of the design or other descriptive matter has been included in the specification, the words “and described” must be added to the claim following the term “shown”; i.e., the claim must read “The ornamental design for (the article which embodies the design or to which it is applied) as shown and described.” Unless the claim was amended by the applicant pursuant to 37 CFR 1.121, the examiner should not object to the claim as to matters of form but rather should amend the claim by examiner’s amendment to include the words “and described.”

Form paragraphs 15.62, 15.63 and 15.64 may be used in international design applications as appropriate.

¶ 15.62 Amend Claim “As Shown”

For proper form (37 CFR 1.153 or 37 CFR 1.1025), the claim [1] amended to read: “[2] claim: The ornamental design for [3] as shown.”

Examiner Note:

1. In bracket 1, insert --must be-- or --has been--.
2. In bracket 2, insert --I-- or --We--.
3. In bracket 3, insert title of the article in which the design is embodied or applied.

¶ 15.63 Amend Claim “As Shown and Described”

For proper form (37 CFR 1.153 or 37 CFR 1.1025), the claim [1] amended to read: “[2] claim: The ornamental design for [3] as shown and described.”

Examiner Note:

1. In bracket 1, insert --must be-- or --has been--.
2. In bracket 2, insert --I-- or --We--.
3. In bracket 3, insert title of the article in which the design is embodied or applied.

¶ 15.64 Addition of “And Described” to Claim

Because of [1] -- and described -- [2] added to the claim after “shown.”

Examiner Note:

1. In bracket 1, insert reason.
2. In bracket 2, insert --must be-- or --has been--.

2920.04(b) Reproductions (Drawing Figures) [R-07.2022]

37 CFR 1.1026 Reproductions.

Reproductions shall comply with the requirements of Rule 9 and Part Four of the Administrative Instructions.

Every nonprovisional international design application must include a reproduction of the claimed design. A reproduction may be either a drawing, in black and white or in color, or a photograph of the industrial design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be a clear and complete depiction of the design applied to the article designated in the title, and that nothing regarding the design sought to be patented is left to conjecture.

Formal requirements for reproductions applicable to nonprovisional international design applications are set forth in Hague Agreement Rule 9 and Part Four of the Administrative Instructions. See 37 CFR 1.1026. Hague Agreement Rule 9 and the relevant provisions of the Administrative Instructions are reproduced in MPEP § 2909.02. Drawing requirements set forth in 37 CFR 1.84 do not apply to nonprovisional international design applications, except for those set forth in 37 CFR 1.84(c). See 37 CFR 1.1061(b).

Figure numbering requirements for international design applications are different from figure numbering requirements for design applications filed under 35 U.S.C. chapter 16. Pursuant to Administrative Instruction 405, “[w]hen the same industrial design is represented from different angles, the numbering shall consist of two separate figures separated by a dot (e.g., 1.1, 1.2, 1.3, etc. for the first design, 2.1, 2.2, 2.3, etc. for the second design, and so on).” The figure numbering appearing in the published international registration should be preserved during prosecution of the nonprovisional international design application before the USPTO. If designs are cancelled, for example, as a result of a restriction requirement, applicants should not renumber the figures of the remaining design(s).

Reproductions published as part of the international registration have been reviewed by the International Bureau for compliance with the formal requirements of Hague Agreement Rule 9 and Part Four of the Administrative Instructions and thus should not be objected to by the examiner on such grounds. See Hague Agreement Article 12(1). Amended reproductions that are submitted directly to the Office pursuant to 37 CFR 1.121 are not subject to review by the International Bureau and thus may be objected to under 37 CFR 1.1026 as to matters of form where appropriate. Form Paragraph 29.10 may be used to object to amended reproductions that fail to comply with the formal requirements of Hague Agreement Rule 9 and Part Four of the Administrative Instructions.

¶ 29.10 Reproductions Objected to, Amended Reproductions Do Not Comply With Formal Requirements

The amended reproductions received on [1] are objected to because [2]. See 37 CFR 1.1026.

Examiner Note:

1. Use this form paragraph in an international design application to object to amended reproductions that fail to comply with the formal requirements for reproductions set forth in Rule 9 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement and Part Four of the Administrative Instructions thereunder. Do not use this form paragraph to object to reproductions that were contained in the international registration published by the International Bureau.
2. In bracket 1, insert the date the amended reproductions were received.
3. In bracket 2, insert the reason for the objection, for example, --the reproductions are not of a quality permitting all the details of the industrial design to be clearly distinguished-- or --the reproductions contain explanatory text or legends--.
4. Follow this form paragraph with form paragraph 15.05.04.

When inconsistencies are found among the views, the examiner should object to the reproductions and request that the views be made consistent. Pursuant to Hague Agreement Rule 9(4), “[a] Contracting Party may however refuse the effects of the international registration on the ground that the reproductions contained in the international registration are not sufficient to disclose fully the industrial design.” When the inconsistencies are of such magnitude that the overall appearance of the design is unclear, the claim should be rejected under 35 U.S.C. 112(a) and (b), as nonenabling and indefinite. See MPEP § 1504.04, subsection I.

¶ 29.11 Reproductions Objected to, Design Not Fully Disclosed in Reproductions

The reproductions are objected to for failing to fully disclose the industrial design because [1]. See 37 CFR 1.1026 and Rule 9 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement.

Examiner Note:

1. Use this form paragraph in an international design application where the reproductions are not sufficient to fully disclose the industrial design, but such failure does not render the claimed invention non-enabled and/or indefinite under 35 U.S.C. 112. This may occur, for example, where there are minor inconsistencies in the illustration of the design among the different views of the design. Where the failure to fully disclose the industrial design in the reproductions renders the claimed invention non-enabled and/or indefinite under 35 U.S.C. 112, use form paragraph 15.21 or 15.22, as appropriate, instead of this form paragraph.
2. In bracket 1, explain why the reproductions are not sufficient to fully disclose the industrial design.
3. Follow this form paragraph with form paragraph 15.05.04.

The practice set forth in MPEP § 1503.02, subsections I-IV with respect to views, surface shading, broken lines, and surface treatment is generally applicable to nonprovisional international design applications.

In addition to the use of broken or dotted lines to indicate matter shown in a reproduction for which protection is not sought, Administrative Instruction 403 permits such matter to be indicated in the description and/or by coloring. See MPEP § 2920.05(c) regarding considerations under 35 U.S.C. 112 when indicating matter pursuant to Administrative Instruction 403. Form paragraph 29.20 may be used in an international design application as appropriate.

¶ 29.20 Matter Not Forming Part of Design (International Design Application)

Matter, such as environmental structure or portions of the "article," which is shown in a reproduction but for which protection is not sought may be indicated by statement in the description and/or by means of dotted or broken lines or coloring in the reproduction. See 37 CFR 1.1026 and Hague Agreement Administrative Instruction 403.

Examiner Note:

Use this form paragraph only in an international design application.

2920.04(c) Inventor’s Oath or Declaration [R-07.2015]

37 CFR 1.1021 Contents of the international design application.

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(d) Required contents where the United States is designated. In addition to the mandatory requirements set forth in paragraph (a) of this section, an international design application that designates the United States shall contain or be accompanied by:
- *****
- (3) The inventor’s oath or declaration (§§ 1.63 and 1.64). The requirements in §§ 1.63(b) and 1.64(b)(4) to identify each inventor by his or her legal name, mailing address, and residence, if an inventor lives at a location which is different from the mailing address, and the requirement in § 1.64(b)(2) to identify the residence and mailing address of the person signing the substitute statement will be considered satisfied by the presentation of such information in the international design application prior to international registration.

37 CFR 1.1067 Title, description, and inventor’s oath or declaration.

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(b) An international design application designating the United States must include the inventor’s oath or declaration. See § 1.1021(d). If the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)).

International design applications designating the United States are required to contain the inventor’s oath or declaration (37 CFR 1.63 and 1.64). See 37 CFR 1.1021(d)(3). The International Bureau reviews international design applications designating the United States to ensure that the required inventor’s oath or declaration is provided for the inventors identified in the international design application. The inventor’s oath or declaration is communicated by the International Bureau to the Office when the published international registration is sent to the Office pursuant to Hague Agreement Article 10(3).

Section 1.1067(b) provides for notifying the applicant in a notice of allowability of a requirement to provide the inventor’s oath or declaration. As compliance with the requirement for the inventor’s oath or declaration will have been reviewed by the International Bureau, the need to notify the applicant in a notice of allowability that an inventor’s oath or declaration is required should be rare, e.g., where an inventor is added pursuant to 37 CFR 1.48(a) after publication of the international registration and an executed oath or declaration from the inventor has not been received. See 37 CFR 1.48(b).

2920.05 Examination [R-07.2015]

35 U.S.C. 389 Examination of international design application.

(a) IN GENERAL.—The Director shall cause an examination to be made pursuant to this title of an international design application designating the United States.
(b) APPLICABILITY OF CHAPTER 16.—All questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16.
(c) FEES.—The Director may prescribe fees for filing international design applications, for designating the United States, and for any other processing, services, or materials relating to international design applications, and may provide for later payment of such fees, including surcharges for later submission of fees.
(d) ISSUANCE OF PATENT.—The Director may issue a patent based on an international design application designating the United States, in accordance with the provisions of this title. Such patent shall have the force and effect of a patent issued on an application filed under chapter 16.

37 CFR 1.1062 Examination.

(a) Examination. The Office shall make an examination pursuant to title 35, United States Code, of an international design application designating the United States.
(b) Timing. For each international design application to be examined under paragraph (a) of this section, the Office shall, subject to Rule 18(1)(c)(ii), send to the International Bureau within 12 months from the publication of the international registration under Rule 26(3) a notification of refusal (§ 1.1063) where it appears that the applicant is not entitled to a patent under the law with respect to any industrial design that is the subject of the international registration.

37 CFR 1.1063 Notification of Refusal.

(a) A notification of refusal shall contain or indicate:
- (1) The number of the international registration;
- (2) The grounds on which the refusal is based;
- (3) A copy of a reproduction of the earlier industrial design and information concerning the earlier industrial design, where the grounds of refusal refer to similarity with an industrial design that is the subject of an earlier application or registration;
- (4) Where the refusal does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate; and
- (5) A time period for reply under §§ 1.134 and 1.136, where a reply to the notification of refusal is required.
(b) Any reply to the notification of refusal must be filed directly with the Office and not through the International Bureau. The requirements of § 1.111 shall apply to a reply to a notification of refusal.

International design applications designating the United States are examined pursuant to title 35, United States Code. All questions of substance and, unless otherwise required by the Hague Agreement or Regulations thereunder, procedures regarding an international design application designating the United States shall be determined as in the case of design applications filed under 35 U.S.C. chapter 16. See 35 U.S.C. 389. Accordingly, the practices set forth in MPEP §§ 1504.01 (Statutory Subject Matter for Designs), 1504.02 (Novelty), 1504.03 (Nonobviousness), 1504.04 (Considerations Under 35 U.S.C. 112), 1504.05 (Restriction), and 1504.06 (Double Patenting) are generally applicable to international design applications designating the United States.

While there is substantial overlap in examining practices with respect to international design applications designating the United States and design applications filed under 35 U.S.C. chapter 16, there are also differences. These differences include:

(1) the Office sends a Notification of Refusal to the International Bureau for forwarding to the holder of the international registration where it is determined that the conditions for the grant of a patent are not met in respect of any or all designs that are the subject of international registration;
(2) upon issuance of a patent, the Office sends a statement of grant of protection to the International Bureau indicating that protection is granted in the United States to those designs that are the subject of the international registration and covered by the patent.

Regulations concerning international design applications are set forth in 37 CFR Part 1, subpart I.

2920.05(a) Notification of Refusal [R-07.2022]

Hague Article 12

Refusal

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(2) [Notification of Refusal]
- (a) The refusal of the effects of an international registration shall be communicated by the Office to the International Bureau in a notification of refusal within the prescribed period.
- (b) Any notification of refusal shall state all the grounds on which the refusal is based.

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Hague Rule 18

Notification of Refusal

(1) [Period for Notification of Refusal]
- (a) The prescribed period for the notification of refusal of the effects of an international registration in accordance with Article 12(2) of the 1999 Act or Article 8(1) of the 1960 Act shall be six months from the publication of the international registration as provided for by Rule 26(3).
- (b) Notwithstanding subparagraph (a), any Contracting Party whose Office is an Examining Office, or whose law provides for the possibility of opposition to the grant of protection, may, in a declaration, notify the Director General that, where it is designated under the 1999 Act, the period of six months referred to in that subparagraph shall be replaced by a period of 12 months.
- (c) The declaration referred to in subparagraph (b) may also state that the international registration shall produce the effect referred to in Article 14(2)(a) of the 1999 Act at the latest
  - (i) at a time specified in the declaration which may be later than the date referred to in that Article but which shall not be more than six months after the said date or
  - (ii) at a time at which protection is granted according to the law of the Contracting Party where a decision regarding the grant of protection was unintentionally not communicated within the period applicable under subparagraph (a) or (b); in such a case, the Office of the Contracting Party concerned shall notify the International Bureau accordingly and endeavor to communicate such decision to the holder of the international registration concerned promptly thereafter.
(2) [Notification of Refusal]
- (a) The notification of any refusal shall relate to one international registration, shall be dated and shall be signed by the Office making the notification.
- (b) The notification shall contain or indicate
  - (i) the Office making the notification,
  - (ii) the number of the international registration,
  - (iii) all the grounds on which the refusal is based together with a reference to the corresponding essential provisions of the law,
  - (iv) where the grounds on which the refusal is based refer to similarity with an industrial design which has been the subject of an earlier national, regional or international application or registration, the filing date and number, the priority date (if any), the registration date and number (if available), a copy of a reproduction of the earlier industrial design (if that reproduction is accessible to the public) and the name and address of the owner of the said industrial design, as provided for in the Administrative Instructions,
  - (v) where the refusal does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate,
  - (vi) whether the refusal may be subject to review or appeal and, if so, the time limit, reasonable under the circumstances, for any request for review of, or appeal against, the refusal and the authority to which such request for review or appeal shall lie, with the indication, where applicable, that the request for review or the appeal has to be filed through the intermediary of a representative whose address is within the territory of the Contracting Party whose Office has pronounced the refusal, and (vii) the date on which the refusal was pronounced.

*****

37 CFR 1.1063 Notification of Refusal.

(a) A notification of refusal shall contain or indicate:
- (1) The number of the international registration;
- (2) The grounds on which the refusal is based;
- (3) A copy of a reproduction of the earlier industrial design and information concerning the earlier industrial design, where the grounds of refusal refer to similarity with an industrial design that is the subject of an earlier application or registration;
- (4) Where the refusal does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate; and
- (5) A time period for reply under §§ 1.134 and 1.136, where a reply to the notification of refusal is required.
(b) Any reply to the notification of refusal must be filed directly with the Office and not through the International Bureau. The requirements of § 1.111 shall apply to a reply to a notification of refusal.

Under Article 12 of the Hague Agreement, “[t]he Office of any designated Contracting Party may, where the conditions for the grant of protection under the law of that Contracting Party are not met in respect of any or all of the industrial designs that are the subject of an international registration, refuse the effects, in part or in whole, of the international registration in the territory of the said Contracting Party, provided that no Office may refuse the effects, in part or in whole, of any international registration on the ground that requirements relating to the form or contents of the international design application that are provided for in this Act or the Regulations or are additional to, or different from, those requirements have not been satisfied under the law of the Contracting Party concerned.” This refusal of the effects of an international registration is called a “notification of refusal.” See Article 12(2). The notification of refusal is transmitted to the International Bureau who, without delay, transmits a copy of the notification to the holder of the international registration. Hague Agreement Rule 18 prescribes a time period for sending of the notification of refusal and the content of the notification.

In accordance with 37 CFR 1.1062(b), a notification of refusal is to be sent to the International Bureau within 12 months from the publication of the international registration where it appears that the applicant is not entitled to a patent under the law of the United States with respect to any industrial design that is the subject of the international registration. The notification of refusal may be sent after this 12-month period where the failure to send the notification within the 12-month period was unintentional.

The notification of refusal contains or indicates: (1) the number of the international registration; (2) the grounds on which the refusal is based; (3) a copy of a reproduction of the earlier industrial design and information concerning the earlier industrial design, where the grounds of refusal refer to similarity with an industrial design that is the subject of an earlier application or registration; (4) where the refusal does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate; and (5) a time period for reply under 37 CFR 1.134 and 1.136 where a reply to the notification of refusal is required. See 37 CFR 1.1063(a).

The grounds of refusal may be in the form of a rejection based on a condition for patentability under title 35, United States Code (e.g., 35 U.S.C. 171, 102, 103, or 112), a requirement for restriction (where more than one independent and distinct design is presented in the application), and/or an objection (where not prohibited by Article 12(1) of the Hague Agreement). The grounds of refusal may also be based on applicant’s action taken prior to examination, including cancellation of industrial designs in the international design application by amendment, or by an express abandonment of the application pursuant to 37 CFR 1.138 or the renunciation of the designation of the United States (see MPEP § 2930).

Objections based on requirements relating to the form or content of the application provided for in the Hague Agreement and Regulations thereunder are not prohibited by Article 12(1) where the International Bureau is not responsible for verifying compliance with such requirements. Such may arise, for example, where the applicant submits amended drawings directly to the Office in the course of examination that fail to comply with the formal requirements applicable to reproductions under Hague Agreement Rule 9 and Part Four of the Administrative Instructions. Nor does Article 12(1) prohibit objections based on inconsistencies among the views of the reproductions or incorrect or inaccurate statements contained in the description.

As in the case of Office actions in design applications filed under 35 U.S.C. chapter 16, copies of references cited by the examiner should be included with the notification of refusal. In addition, because Hague Agreement Rule 18(2)(b)(iv) does not distinguish references used in a ground of refusal based on where the reference originated from, the examiner should also include any U.S. patent or U.S. patent application publication used in a grounds of refusal (e.g., a rejection under 35 U.S.C. 102 or 103). See 37 CFR 1.1063(a)(3). Copies of references cited by the applicant in an information disclosure statement do not need to be included with the notification of refusal.

The notification of refusal should include a time period for reply under 37 CFR 1.134 and 1.136 to avoid abandonment where a reply to the notification of refusal is required. This time period will normally be made in the Office Action Summary, Form PTOL-326, accompanying a Notification of Refusal cover sheet, Form PTO-2319. Not all notifications of refusal will require a reply. For example, where the international registration contains multiple industrial designs and all but one design is cancelled by preliminary amendment prior to examination, and the remaining design is determined by the examiner to be allowable, then a notice of allowance will be sent concurrently with a notification of refusal, refusing the effects of the international registration in the United States with respect to the industrial design or designs that have been cancelled. Such a notification of refusal, otherwise known as a “Notification of Partial Refusal,” (Form PTO-2321) will be communicated to the International Bureau but will not set a time period for reply to the notification of refusal, as no reply to the refusal is required.

The Hague system does not require any submission from the applicant to the USPTO to initiate examination of a nonprovisional international design application. In many cases the applicant will not have retained the services of an attorney or agent registered to practice before the USPTO (“patent practitioner”) prior to receipt of the notification of refusal. Where there is no patent practitioner of record, the examiner should include the following form paragraph in the refusal to remind applicants of the signature requirements applicable to a reply to a notification of refusal:

¶ 29.100 Reply Reminder

Applicant is reminded that any reply to this communication must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).

Examiner Note:

Add this paragraph at the end of a notification of refusal or other Office action where a patent attorney or agent registered to practice before the United States Patent and Trademark Office has not been appointed as applicant's representative. If this paragraph was included in a prior Office action, it may be, but is not required to be, included in a subsequent Office action.

In addition, the following form paragraph may be included in the notification of refusal to provide information to applicants regarding who may discuss the merits of the application with the examiner:

¶ 29.101 Discussion of the Merits of the Application

All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP § 713. The examiner will not discuss the merits of the application with applicant's representative if the representative is not registered to practice before the USPTO. Appointment as applicant’s representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below.

Telephonic or in person interviews

A telephonic or in person interview may only be conducted with an attorney or agent registered to practice before the USPTO ("registered practitioner") or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner).

The registered practitioner may either be of record or not of record. To become "of record," a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA/80 "Power of Attorney to Prosecute Applications Before the USPTO," available at www.uspto.gov/ patent/forms/forms-patent-applications-filed-or-after-september-16-2012, may be used for this purpose. See MPEP § 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing and filing an "Applicant Initiated Interview Request Form" (PTOL-413A) (available at the USPTO web page indicated above). See MPEP § 405. For acceptable ways to submit forms to the USPTO, see "When Responding to Official USPTO Correspondence" below.

Examiner Note:

Add this paragraph at the end of the Refusal where a patent attorney or agent registered to practice before the United States Patent and Trademark Office has not been appointed as applicant's representative.

Any reply to the notification of refusal must be filed directly with the Office and not through the International Bureau. See 37 CFR 1.1063(b). A reply to the notification of refusal is subject to the requirements of 37 CFR 1.111.

Any further Office action following the notification of refusal, such as a Final Rejection, will normally be sent directly to the applicant.

2920.05(b) One Independent and Distinct Design [R-07.2022]

Hague Article 13

Special Requirements Concerning Unity of Design

(1) [Notification of Special Requirements] Any Contracting Party whose law, at the time it becomes party to this Act, requires that designs that are the subject of the same application conform to a requirement of unity of design, unity of production or unity of use, or belong to the same set or composition of items, or that only one independent and distinct design may be claimed in a single application, may, in a declaration, notify the Director General accordingly. However, no such declaration shall affect the right of an applicant to include two or more industrial designs in an international application in accordance with Article 5(4), even if the application designates the Contracting Party that has made the declaration.
(2) [Effect of Declaration]Any such declaration shall enable the Office of the Contracting Party that has made it to refuse the effects of the international registration pursuant to Article 12(1) pending compliance with the requirement notified by that Contracting Party.

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37 CFR 1.1064 One independent and distinct design.

(a) Only one independent and distinct design may be claimed in a nonprovisional international design application.
(b) If the requirements under paragraph (a) of this section are not satisfied, the examiner shall in the notification of refusal or other Office action require the applicant in the reply to that action to elect one independent and distinct design for which prosecution on the merits shall be restricted. Such requirement will normally be made before any action on the merits but may be made at any time before the final action. Review of any such requirement is provided under §§ 1.143 and 1.144.

Only one independent and distinct design may be claimed in a nonprovisional international design application. See 37 CFR 1.1064. Under Article 13 of the Hague Agreement, a Contracting Party whose law at the time it becomes party to the Hague Agreement requires, inter alia, that only one independent and distinct design may be claimed in a single application, can refuse the effects of the international registration on grounds of noncompliance with such requirement. U.S. law requires that only one independent and distinct design may be claimed in a single application. See In re Rubinfield, 270 F.2d 391 (CCPA 1959); In re Platner, 155 USPQ 222 (Comm’r Pat. 1967); MPEP § 1504.05. The practice set forth in MPEP § 1504.05 is generally applicable to nonprovisional international design applications. If more than one independent and distinct design is claimed in the nonprovisional international design application, the examiner should in the notification of refusal or other Office action require the applicant in the reply to that action to elect one independent and distinct design for which prosecution on the merits shall be restricted. The requirement should normally be made before any action on the merits but may be made at any time before the final action. Review of any such requirement is provided under 37 CFR 1.143 and 1.144.

Renumbering of the figures following cancellation of non-elected embodiments is not required. See MPEP § 2920.04(b). In addition, applicants should consider the need to correct inventorship under 37 CFR 1.48 as a result of a restriction requirement and further note that correction of inventorship after an Office action on the merits is subject to an additional fee under 37 CFR 1.48(c). See MPEP § 602.01(c)(1). Examiners should use FP 29.102 to remind applicants that renumbering of the drawing figures following cancellation of non-elected embodiments is not required and to consider the need to correct inventorship due to the cancellation of non-elected designs.

¶ 29.102 Reply Reminder for Restriction Requirements Concerning Figure Numbering

In replying to this Refusal electing a Group for prosecution, applicant should also consider amending the application to cancel the drawing figures and remove the description corresponding to the nonelected Group(s), and to correct inventorship, as appropriate, resulting from such amendment pursuant to 37 CFR 1.48. See MPEP § 602.01(c)(1). Applicant should note that correcting inventorship after an Office action on the merits has been given or mailed in the application will require an additional fee pursuant to 37 CFR 1.48(c).

Renumbering of the drawing figures is not required. To maintain consistency with the published International Registration, it is recommended that the numbering of the drawing figures included in the elected Group not be changed even if non-elected embodiments are cancelled. Any amendment to the drawing figures should comply with 37 CFR 1.1026 and Part Four of the Administrative Instructions (in particular, see Section 405 of the Administrative Instructions with respect to numbering of reproductions).

Examiner Note:

Add this paragraph at the end of a restriction requirement in a nonprovisional international design application. If there is no patent practitioner of record, also include form paragraph 29.100 Reply Reminder.

Protection of designs cancelled from a nonprovisional international design application as a result of a restriction requirement may be pursued through the filing of a divisional application(s). Such a divisional application may be filed either as a design application under 35 U.S.C. chapter 16 or as an international design application designating the United States. For further information regarding divisional applications, see MPEP § 2920.05(e).

2920.05(c) Considerations Under 35 U.S.C. 112 [R-07.2015]

The requirements of 35 U.S.C. 112(a) and (b) apply to nonprovisional international design applications. See 35 U.S.C. 389. Accordingly, the practice set forth in MPEP § 1504.04 regarding considerations under 35 U.S.C. 112 is generally applicable to nonprovisional international design applications. This section addresses certain additional considerations relevant to international design applications.

As discussed in MPEP § 2920.04(b), Administrative Instruction 403 allows matter shown in a reproduction for which protection is not sought to be indicated “(i) in the description referred to in Rule 7(5)(a) and/or (ii) by means of dotted or broken lines or coloring.” When using broken or dotted lines or coloring in a reproduction to indicate matter shown in a reproduction for which protection is not sought, applicants are encouraged to include an explanation of the purpose of the broken or dotted lines or coloring in the description. This may help to avoid uncertainty as to the scope of the claimed design. Similarly, applicants are encouraged not to simply rely on a description to indicate matter shown in a reproduction for which protection is not sought, but rather to also identify the matter for which protection is not sought through the use of broken or dotted lines or coloring.

The following form paragraphs may be used where the presence of undescribed broken lines or color renders the scope of the claimed design unclear.

¶ 29.21 Rejection, 35 U.S.C. 112(b) - Undescribed Broken Lines (International Design Application)

The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b). The claim is indefinite because the reproductions include, in figure(s) [1], broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.

If the broken line(s) represent portions of the article or environmental structure for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132):

--The broken line showing of [2] is for the purpose of illustrating [3] and forms no part of the claimed design.--

Examiner Note:

1. Use this form paragraph in an international design application where the reproductions include broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
2. In bracket 1, insert the number(s) of the figure(s) containing the broken lines.
3. In bracket 2, insert name of structure.
4. In bracket 3, insert --portions of the “article”-- or --environmental structure--.

¶ 29.23 Rejection, 35 U.S.C. 112(b) - Undescribed Broken Lines as Boundary of Design (International Design Application)

If the broken lines represent a boundary line for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132):

--The [2] broken line(s) define the bounds of the claimed design and form no part thereof.--

Examiner Note:

1. Use this form paragraph in an international design application where the reproductions include broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
2. In bracket 1, insert the number(s) of the figure(s) containing the broken lines.
3. In bracket 2, insert type of broken line, e.g. dashed or dot-dash or dot-dot-dash.

¶ 29.25 Rejection, 35 U.S.C. 112(b) - Unclear Use of Coloring (International Design Application)

The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b). The claim is indefinite because the reproductions include coloring, in figure(s) [1], that is not described in the specification, and the scope of the claimed design cannot be determined.

If the coloring identifies matter for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132 ):

--The portion of the design shown in the color [2] is for the purpose of illustrating [3] and forms no part of the claimed design.--

Examiner Note:

1. Use this form paragraph in an international design application where the reproductions include coloring that is not described in the specification, and the scope of the claimed design cannot be determined.
2. In bracket 1, insert the number(s) of the figure(s) containing the coloring.
3. In bracket 2, identify the color indicating the matter excluded from the claim.
4. In bracket 3, insert --portions of the “article”-- or --environmental structure--.

Similar to the use of form paragraph 15.20.02 in design applications filed under 35 U.S.C. chapter 16, form paragraph 29.27 may be used in an international design application to suggest how a rejection under 35 U.S.C. 112(a) and (b) as nonenabling and indefinite due to an insufficient drawing disclosure may be overcome.

¶ 29.27 Suggestion To Overcome Rejection Under 35 U.S.C. 112(a) and (b) (International Design Application)

Applicant may indicate that protection is not sought for those portions of the reproductions which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by amending the reproductions to color those portions or convert those portions to broken lines and by amending the specification to include a statement that the portions of the [1] shown in broken lines form no part of the claimed design or a statement that the portions of the [1] shown by coloring form no part of the claimed design provided such amendments do not introduce new matter (see 35 U.S.C. 132 , 37 CFR 1.121 ).

Examiner Note:

Use this form paragraph only in an international design application.
2. In bracket 1, insert title of the article.

2920.05(d) Foreign Priority [R-07.2022]

35 U.S.C. 386 Right of priority.

(a) NATIONAL APPLICATION.—In accordance with the conditions and requirements of subsections (a) through (d) of section 119 and section 172, a national application shall be entitled to the right of priority based on a prior international design application that designated at least 1 country other than the United States.
(b) PRIOR FOREIGN APPLICATION.—In accordance with the conditions and requirements of subsections (a) through (d) of section 119 and section 172 and the treaty and the Regulations, an international design application designating the United States shall be entitled to the right of priority based on a prior foreign application, a prior international application as defined in section 351(c) designating at least 1 country other than the United States, or a prior international design application designating at least 1 country other than the United States.

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37 CFR 1.55 Claim for foreign priority.

(a) In general. An applicant in a nonprovisional application may claim priority to one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 35 U.S.C. 386(a) or (b) and this section.
(b) Time for filing subsequent application. The nonprovisional application must be:
- (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or
- (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.
(c) Delayed filing of subsequent application. If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional. A petition to restore the right of priority under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. Any petition to restore the right of priority under this paragraph must include:
- (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
- (2) The petition fee as set forth in § 1.17(m); and
- (3) A statement that the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(d) Time for filing priority claim—
- (1) Application under 35 U.S.C. 111(a). The claim for priority must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application in an original application filed under 35 U.S.C. 111(a), except as provided in paragraph (e) of this section. The claim for priority must be presented in an application data sheet (§ 1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply if the later-filed application is:
  - (i) An application for a design patent; or
  - (ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.
- (2) Application under 35 U.S.C. 371. The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.
(e) Delayed priority claim. Unless such claim is accepted in accordance with the provisions of this paragraph, any claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 35 U.S.C. 386(a) or (b) not presented in the manner required by paragraph (d) or (m) of this section during pendency and within the time period provided by paragraph (d) of this section (if applicable) is considered to have been waived. If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed. A petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) must be accompanied by:
- (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
- (2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies;
- (3) The petition fee as set forth in § 1.17(m); and
- (4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(f) Time for filing certified copy of foreign application—
- (1) Application under 35 U.S.C. 111(a). A certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application, or sixteen months from the filing date of the prior foreign application, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section. The time period in this paragraph does not apply in a design application.
- (2) Application under 35 U.S.C. 371. A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371. If a certified copy of the foreign application is not filed during the international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
- (3) If a certified copy of the foreign application is not filed within the time period specified [in] paragraph (f)(1) of this section in an application under 35 U.S.C. 111(a) or within the period specified in paragraph (f)(2) of this section in an international application entering the national stage under 35 U.S.C. 371, and an exception in paragraph (h), (i), or (j) of this section is not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g).
(g) Requirement for filing priority claim, certified copy of foreign application, and translation in any application.
- (1) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.
- (2) The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in this section:
  - (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
  - (ii) When necessary to overcome the date of a reference relied upon by the examiner; or
  - (iii) When deemed necessary by the examiner.
- (3) An English language translation of a non-English language foreign application is not required except:
  - (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
  - (ii) When necessary to overcome the date of a reference relied upon by the examiner; or
  - (iii) When specifically required by the examiner.
- (4) If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.
(h) Certified copy in another U.S. patent or application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will be considered satisfied in a reissue application if the patent for which reissue is sought satisfies the requirement of this section for a certified copy of the foreign application and such patent is identified as containing a certified copy of the foreign application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will also be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and such prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.
(i) Foreign intellectual property office participating in a priority document exchange agreement. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
- (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office), or a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy;
- (2) The claim for priority is presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and the applicant provides the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application;
- (3) The copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the period specified in paragraph (g)(1) of this section; and
- (4) The applicant files in a separate document a request that the Office obtain a copy of the foreign application from a participating intellectual property office that permits the Office to obtain such a copy where, although the foreign application was not filed in a participating foreign intellectual property office, a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy. The request must identify the participating intellectual property office and the subsequent application by the application number, day, month, and year of its filing in which a copy of the foreign application was filed. The request must be filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), or four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or the request must be accompanied by a petition under paragraph (e) or (f) of this section.
(j) Interim copy. The requirement in paragraph (f) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
- (1) A copy of the original foreign application clearly labeled as "Interim Copy," including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority);
- (2) The copy of the foreign application and separate cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or with a petition under paragraph (e) or (f) of this section; and
- (3) A certified copy of the foreign application is filed within the period specified in paragraph (g)(1) of this section.
(k) Requirements for certain applications filed on or after March 16, 2013. If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior foreign application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
(l) Inventor's certificates. An applicant in a nonprovisional application may under certain circumstances claim priority on the basis of one or more applications for an inventor's certificate in a country granting both inventor's certificates and patents. To claim the right of priority on the basis of an application for an inventor's certificate in such a country under 35 U.S.C. 119(d), the applicant, when submitting a claim for such right as specified in this section, must include an affidavit or declaration. The affidavit or declaration must include a specific statement that, upon an investigation, he or she is satisfied that to the best of his or her knowledge, the applicant, when filing the application for the inventor’s certificate, had the option to file an application for either a patent or an inventor’s certificate as to the subject matter of the identified claim or claims forming the basis for the claim of priority.
(m) Time for filing priority claim and certified copy of foreign application in an international design application designating the United States. In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations. In a nonprovisional international design application, the priority claim, unless made in accordance with the Hague Agreement and the Hague Agreement Regulations, must be presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g) of this section.
(n) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section that any priority claim be presented in an application data sheet (§ 1.76§), this requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section will be satisfied by the presentation of such priority claim in the oath or declaration under § 1.63 in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any priority claim submitted for a petition under paragraph (c) of this section to restore the right of priority to a foreign application.
(o) Priority under 35 U.S.C. 386(a) or (b). The right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
(p) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).

Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States. Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States. The provisions of 35 U.S.C. 386(a) and (b) apply to nonprovisional applications, international applications (PCT) and international design applications filed on or after May 13, 2015, and patents issued therefrom. See 37 CFR 1.55(o) and MPEP §§ 213et seq. and 1504.10.

In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations. See 37 CFR 1.55(m). Alternatively, in a nonprovisional international design application, the foreign priority claim may be presented in a corrected application data sheet (37 CFR 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. See MPEP § 601.05(a), subsection II. The priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in 37 CFR 1.55(g).

Pursuant to Administrative Instruction 408, a priority claim made in accordance with Hague Agreement Rule 7(5)(c) may be accompanied by a WIPO Digital Access Service (DAS) access code, if available. The official form for the application for international registration (the DM/1 form or the electronic interface of the International Bureau’s electronic filing system having the same contents and format as the DM/1 form) includes a field in the priority claim section to provide the WIPO access code. See MPEP §§ 2909 and 2909.01. Providing the WIPO access code in accordance with Administrative Instruction 408 will allow the USPTO to automatically attempt retrieval of the priority document via WIPO DAS in a nonprovisional international design application. If the USPTO is able to retrieve the priority document via WIPO DAS, the priority document will be considered to satisfy the requirement under 37 CFR 1.55 for a certified copy of the priority document. If the WIPO access code is not provided in accordance with Administrative Instruction 408, the WIPO access code may be provided to the USPTO by submitting in the nonprovisional international design application a corrected application data sheet (37 CFR 1.76(c)) and a request for a corrected filing receipt or, as discussed in MPEP § 215.02(a), by submitting Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)), where applicable. Applicants are reminded that they continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to provide the WIPO access code to the USPTO as soon as possible and to check as necessary to confirm receipt by the USPTO of appropriate documents.

When making a foreign priority claim to an earlier filed international design application pursuant to 35 U.S.C. 386(a) or (b) and 37 CFR 1.55, the USPTO will accept identification of the earlier international design application either by the application number assigned by the International Bureau or by its international registration number. Applicants should note, however, that on January 15, 2020, the International Bureau became a depositing office under WIPO DAS for international design applications and, to utilize WIPO DAS for retrieval of an international design application, the international design application must be identified by the application number in a specified format (i.e., WIPONNNNN, NNNNNNNNN). For further information regarding the format of the application number and other information needed for retrieval of an international design application via WIPO DAS, see the Electronic Priority Document Exchange (PDX) Program site on www.uspto.gov/PatentsPDX/.

Pursuant to 35 U.S.C. 119(a) and 172, and 37 CFR 1.55(b)(1), the nonprovisional international design application must be filed not later than six months after the date on which the foreign application was filed, or be entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of an application that was filed within this six month period. Where a nonprovisional international design application directly claims priority to a foreign application, the six month period is measured with respect to the U.S. filing date of the international design application, which may or may not be the same as the international filing date assigned by the International Bureau. See MPEP §§ 2906-2908. Where there was a delay in filing the subsequent application within this six month period, the right of priority may be restored under the conditions set forth in 37 CFR 1.55(c) and MPEP § 213.03, subsection III.

2920.05(e) Benefit Claims Under 35 U.S.C. 386(c) [R-07.2015]

35 U.S.C. 386 Right of priority.

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(c) PRIOR NATIONAL APPLICATION.—In accordance with the conditions and requirements of section 120, an international design application designating the United States shall be entitled to the benefit of the filing date of a prior national application, a prior international application as defined in section 351(c) designating the United States, or a prior international design application designating the United States, and a national application shall be entitled to the benefit of the filing date of a prior international design application designating the United States. If any claim for the benefit of an earlier filing date is based on a prior international application as defined in section 351(c) which designated but did not originate in the United States or a prior international design application which designated but did not originate in the United States, the Director may require the filing in the Patent and Trademark Office of a certified copy of such application together with a translation thereof into the English language, if it was filed in another language.

37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.

(a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. An applicant in a nonprovisional application, other than for a design patent, or an international application designating the United States may claim the benefit of one or more prior-filed provisional applications under the conditions set forth in 35 U.S.C. 119(e) and this section.

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(d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
- (1) Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed application must either be:
  - (i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States;
  - (ii) An international design application entitled to a filing date in accordance with § 1.1023 and designating the United States; or
  - (iii) A nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in § 1.53(b) or (d) for which the basic filing fee set forth in § 1.16 has been paid within the pendency of the application.
- (2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5) ). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
- (3)
  - (i) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section must be submitted during the pendency of the later-filed application.
  - (ii) If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed application. The time periods in this paragraph do not apply if the later-filed application is:
    - (A) An application for a design patent;
    - (B) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
    - (C) An international application filed under 35 U.S.C. 363 before November 29, 2000.
  - (iii) Except as provided in paragraph (e) of this section, failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is considered a waiver of any benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application.
- (4) The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior-filed application. The identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.
- (5) Cross-references to other related applications may be made when appropriate (see § 1.14), but cross-references to applications for which a benefit is not claimed under title 35, United States Code, must not be included in an application data sheet (§ 1.76(b)(5) ).
- (6) If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims the benefit of the filing date of a nonprovisional application or an international application designating the United States filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the later-filed application. An applicant is not required to provide such a statement if either:
  - (i) The application claims the benefit of a nonprovisional application in which a statement under § 1.55(k) , paragraph (a)(6) of this section, or this paragraph that the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 has been filed; or
  - (ii) The applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the later filed application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
- (7) Where benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application or an international design application which designates but did not originate in the United States, the Office may require a certified copy of such application together with an English translation thereof if filed in another language.
(e) Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. If the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is presented after the time period provided by paragraph (d)(3) of this section, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States may be accepted if the reference required by paragraph (d)(2) of this section was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be accompanied by:
- (1) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section to the prior-filed application, unless previously submitted;
- (2) The petition fee as set forth in § 1.17(m); and
- (3) A statement that the entire delay between the date the benefit claim was due under paragraph (d)(3) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

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(j) Benefit under 35 U.S.C. 386(c). Benefit under 35 U.S.C. 386(c) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
(k) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).

Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, an international design application designating the United States is entitled to claim the benefit of the filing date of a prior nonprovisional application, international application (PCT) designating the United States, or international design application designating the United States, and a nonprovisional application is entitled to the benefit of a prior international design application designating the United States. See MPEP §§ 211 and 1504.20. An international design application designating the United States may not claim benefit to a provisional application. See 37 CFR 1.78(a).

An application claiming benefit under 35 U.S.C. 386(c) to an international design application designating the United States may identify the international design application by the U.S. application number or by the international registration number and U.S. filing date under 37 CFR 1.1023. See 37 CFR 1.78(d)(2). To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023. See 37 CFR 1.78(d)(1)(ii).

When a later-filed international design application designating the United States is claiming the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c), the later-filed application must be copending with the prior application or with an intermediate application similarly entitled to the benefit of the filing date of the prior application. In determining whether an international design application designating the United States is copending with a prior-filed application, it is the U.S. filing date of the international design application that is relevant, which may or may not be the same as the international filing date assigned by the International Bureau. See MPEP §§ 2906-2908. Thus, if the international design application designating the United States has an international filing date before, but a U.S. filing date after, the date of abandonment of the prior-filed application, the benefit claim should be refused because the international design application designating the United States does not comply with the copendency requirement of 35 U.S.C. 120.

For purposes of determining the effective filing date under AIA 35 U.S.C. 100(i)(1)(B) with regard to a benefit claim under 35 U.S.C. 386(c) to a prior-filed international design application designating the United States, the U.S. filing date of the international design application rather than the international filing date, if different, should be used.

2920.05(f) Information Disclosure Statement in an International Design Application Designating the United States [R-07.2022]

An extensive discussion of Information Disclosure Statement (IDS) practice is set forth in MPEP § 609. Although not specifically stated therein, the duty to disclose information material to patentability as defined in 37 CFR 1.56 is placed on individuals associated with the filing and prosecution of an international design application designating the United States in the same manner as for a domestic national application. An international design application designating the United States has the effect of a U.S. patent application and thus is subject to 37 CFR 1.56. See 35 U.S.C. 385 (“An international design application designating the United States shall have the effect, for all purposes, from its filing date determined in accordance with section 384, of an application for patent filed in the Patent and Trademark Office pursuant to chapter 16.”). See also 35 U.S.C. 389(b) (“All questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16.”).

Pursuant to 37 CFR 1.56(c), individuals associated with the filing or prosecution of a patent application for purposes of 37 CFR 1.56 are: “(1) Each inventor named in the application; (2) Each attorney or agent who prepares or prosecutes the application; and (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.” For example, individuals who are neither inventors nor practitioners but who are substantively involved in the preparation or prosecution of an international design application designating the United States and who are associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application, have a duty of disclosure under 37 CFR 1.56. In addition, the requirement under 37 CFR 1.63(c) and 1.64(c) that a person may not execute the inventor’s oath or declaration for an application unless that person is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in 37 CFR 1.56 is applicable to the inventor’s oath or declaration filed in an international design application designating the United States. See 37 CFR 1.1021(d).

Applicant must adhere to the requirements set forth in 37 CFR 1.97, 37 CFR 1.98, and 37 CFR 1.33(b) to ensure consideration of an IDS by the examiner. When filing an international design application, an applicant may submit an IDS using Annex III to the official application form (DM/1 form). See MPEP § 2909.03. The International Bureau will send the annex to the USPTO when the published international registration is sent to the Office pursuant to Hague Agreement Article 10(3). However, the Office would prefer to receive the IDS from the applicant after publication of the international registration. Pursuant to 37 CFR 1.97(b)(5), the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3). The Office may also consider an IDS filed after this three month period as provided in 37 CFR 1.97. See MPEP § 609 for further information.

2920.06 Allowance [R-07.2022]

A Notice of Allowability For a Design Application (form PTOL-37D) is used whenever a nonprovisional international design application has been placed in condition for allowance. See MPEP § 1302.03 for further information concerning the Notice of Allowability. In addition, a Notice of Allowance (form PTOL-85 (Hague)) is sent to the applicant requiring payment of the issue fee (i.e., second part of the U.S. designation fee). See 37 CFR 1.311 and 1.18(b). The Notice of Allowance and the Notice of Allowability are communicated to the applicant at the correspondence address of record in the application. The International Bureau is also notified of the communication of the Notice of Allowance to the applicant.

Since the Notice of Allowability is used whenever an application has been placed in a condition for allowance, the Notice of Allowability does not constitute a refusal of the effects of the international registration. However, a Notification of Partial Refusal (form PTO-2321) may be sent to the International Bureau concurrent with the sending of the Notice of Allowance to the applicant where all the designs contained in the international registration have not been allowed and were not previously the subject of a notification of refusal (e.g., all designs but the allowed design were removed by preliminary amendment prior to examination). See MPEP § 2920.05(a) .

The issue fee specified in the Notice of Allowance form PTOL-85 (Hague) may be paid directly to the Office or through the International Bureau. An issue fee paid through the International Bureau shall be in the amount established in Swiss currency pursuant to Rule 28 as of the date of mailing of the notice of allowance. See 37 CFR 1.18(b)(3). The International Bureau accepts payment only in Swiss currency (see Hague Agreement Rule 28(1)) and all fee amounts specified on the WIPO website are in Swiss currency). Further, any change in entity status from that shown in the Notice of Allowance must be communicated directly to the Office in accordance with U.S. rules, as instructed in the Notice of Allowance.

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Last Modified: 02/16/2023 12:58:28