Chapter 2900: International Design Applications
This chapter is brand new as of the 9th Edition 07.2015. It covers details on International Design Applications. A single International Design Application may be filed through the USPTO or the International Bureau under the Hague Agreement. The application may list multiple Contracting Parties.
The filing of a single international design application may have the effect of an application for protection in multiple countries and/or intergovernmental organizations that are Contracting Parties. The U.S. became a Contracting Party to the Hague Agreement on May 13, 2015.
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This section covers the basics of the Hague Agreement. Essentially, the U.S. became a Contracting Party to the Hague Agreement on May 13, 2015. The Hague Agreement allows an applicant to file a single international design application through the USPTO or the IB which may list additional Contracting Parties. Therefore, the filing of a single international design application may have the effect of an application for protection in multiple countries and/or intergovernmental organizations that are Contracting Parties.
If the international design application satisfies all applicable requirements, the International Bureau will register the international design application in the International Register and accord a date of international registration.
The international registration date will be either the filing date of the international design application or the date of receipt of any additional mandatory content item required, if such date is later than the filing date.
The international registration will be published by the International Bureau. The applicant may request that publication occur immediately after registration or that publication be deferred for up to 30 months from the filing date (or priority date, if applicable).
As a result of that examination, the office may notify the International Bureau of a refusal of protection for its territory. A refusal of protection, if any, must be notified to the International Bureau within six months from the date of publication of the international registration. However, any Contracting Party whose office is an examining office (such as the USPTO), or whose law provides for the possibility of opposition to the grant of protection, may declare that the refusal period of six months is extended to 12 months.
This section provides definitions for three terms; article, Rule, and administrative instruction. “Article” means an article of the Hague Agreement. “Rule,” when capitalized, means a rule under the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement. Finally, “Administrative Instruction” means the Administrative Instruction for the Application of the Hague Agreement referred to in Rule 34.
This section covers the main declarations made by the U.S. in respect to the Hague Agreement. For instance, the Hague Agreement took effect with respect to the United States on May 13, 2015. Briefly, the international design application designating the U.S. must contain a claim describing the ornamental design for the article as shown or as shown and described. Only one independent and distinct design may be claimed. The application must contain an oath or declaration of the creator.
The rights provided will be the issuance of a U.S. design patent. The maximum duration of protection for designs is 15 years from grant. Further declarations under the Hague Agreement made by the U.S. are stated and described in this section.
This section covers who may file an international design application. Essentially, to file an international design application, a person must be a national of or live in the territory of a Contracting Party. Further details are provided in this section.
This section covers where to file an international design application. An international design application may be filed either directly with the International Bureau or indirectly through the office of the applicant’s Contracting Party. However, Contracting Parties may notify the International Bureau that applications may not be filed indirectly through their office. As such, only certain offices may allow for “indirect” filing. Further information on where to file an international design application is discussed.
This section covers the filing date requirements of the international design application. The filing date of an international design application in the United States is not necessarily the same date as the filing date accorded by the International Bureau. The filing date accorded by the International Bureau is referred to as the international filing date. Further filing date requirements are outlined in this section.
If the International Bureau determines that the international design application conforms to the applicable requirements, it will register the industrial design in the International Register. The date of international registration will be the international filing date unless there is an applicable requirement under Hague Agreement Article 5(2) that has not been satisfied, in which case the date of international registration will be the date that a timely correction satisfying the outstanding requirement(s) is received, or the international filing date, whichever is later. Further details regarding the date of international registration are covered in this section.
The filing date of an international design application in the United States is the “effective registration date”. The “effective registration date” means “the date of international registration determined by the International Bureau under the treaty”. Further details on the U.S. filing date are covered here.
This section covers the contents of an international design application. The elements of an international design application fall into three categories:
(1) mandatory contents which include items required in all international design applications.
(2) additional mandatory contents which include elements that are required by certain Contracting Parties and therefore are mandatory in any international design application that designates such Contracting Parties.
(3) optional contents which are items that may be included in an international design application.
Further details on the specific contents of an international design application are discussed here. In addition, this section also discusses contents that are required where the United States is designated.
An international design application is subject to the following fees: the basic fee, standard designation fee(s), individual designation fee(s) and the publication fee. Also, pursuant to the Hague Agreement, an additional fee is required where the application contains a description that exceeds 100 words. In addition, a transmittal fee is required for an international design application filed through the USPTO as an office of indirect filing.
This section discusses the different fees. There is a discussion on the transmittal fee, basic fees, publication fees, and designation fees. In addition, there is a discussion on the payment of fees through the USPTO when the application is filed through the USPTO as an office of indirect filing.
This section details representation of the applicant. Rule 3 of the Hague Agreement provides for the appointment by the applicant of a representative before the International Bureau. Rule 3 does not provide for any requirement as to professional qualification, nationality, or domicile regarding who may be appointed to represent the applicant before the International Bureau. The appointment may be made in the international design application or in a separate communication. Further details regarding representation our discussed in this section.
The applicant may specify a correspondence address for correspondence sent by the USPTO as an office of indirect filing. Applicants may specify a different address than specified on the DM/1 form for the purpose of correspondence sent by the USPTO as an office of indirect filing. Where no such address has been specified, the Office will use as the correspondence address of applicant’s appointed representative or, where no representative is appointed, the address as specified in the Administrative Instructions.
This section outlines the procedures to excuse an applicant's failure to act within prescribed time limits under the Hague Agreement in connection with requirements pertaining to an international design application where the delay in applicant’s failure to act was unintentional. 37 C.F.R. 1.1051 is covered extensively in this section. This rule covers what the grantable petition pursuant to this section must be accompanied by. Other details are discussed here.
This section covers the conversion of an international design application to a design application under 35 U.S.C. chapter 16. 37 C.F.R. 1.1052 sets forth the procedure for the conversion.
An international design application converted under 37 CFR 1.1052 is subject to the regulations applicable to a design application filed under 35 U.S.C. chapter 16. In addition, a successfully converted international design application will not entitle the applicant to a refund of any fee forwarded to the International Bureau. A grantable petition to convert under 37 CFR 1.1052(a) must be accompanied by the fee and be filed prior to publication of the international registration under the Hague Agreement.
Further details on the conversion process are outlined in this section.
This section covers the national processing of international design applications designating the U.S. Essentially, the Office will examine an international design application designating the United States pursuant to Title 35 United States Code. 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 and examined in due course. Further details regarding the processing are detailed in this section.
This section covers corrections and other changes in the International Register by the International Bureau. For instance, a Contracting Party may refuse the effects of correction. Upon receipt of a correction in a pending application, the Office will make a determination whether to give effect to the correction or to refuse the correction in accordance with the merits of each situation, subject to such other requirements as may be imposed.
Upon issuance of a patent on a nonprovisional international design application, the Office will send to the International Bureau a statement that protection is granted in the United States to the industrial design or designs that are the subject of the international registration and covered by the patent.
The sending of a statement of grant of protection serves the purpose of providing notice to the public and third parties through publication of the statement by the International Bureau in the International Designs Bulletin that protection for an industrial design has been granted in the United States.
This section discusses how patent rights are only gained upon issuance of a patent. In addition, U.S. patents issued from international design applications shall be effective for a term of fifteen years from the date of grant.
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