37 C.F.R. 1.1026 Reproductions

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

Hague Rule 9

Reproductions of the Industrial Design

1. (1) [Form and Number of Reproductions of the Industrial Design]
   1. (a) Reproductions of the industrial design shall, at the option of the applicant, be in the form of photographs or other graphic representations of the industrial design itself or of the product or products which constitute the industrial design. The same product may be shown from different angles; views from different angles shall be included in different photographs or other graphic representations.
   2. (b) Any reproduction shall be submitted in the number of copies specified in the Administrative Instructions.
2. (2) [Requirements Concerning Reproductions]
   1. (a) Reproductions shall be of a quality permitting all the details of the industrial design to be clearly distinguished and permitting publication.
   2. (b) Matter which is shown in a reproduction but for which protection is not sought may be indicated as provided for in the Administrative Instructions.
3. (3) [Views Required]
   1. (a) Subject to subparagraph (b), any Contracting Party bound by the 1999 Act which requires certain specified views of the product or products which constitute the industrial design or in relation to which the industrial design is to be used shall, in a declaration, so notify the Director General, specifying the views that are required and the circumstances in which they are required.
   2. (b) No Contracting Party may require more than one view where the industrial design or product is two-dimensional, or more than six views where the product is three-dimensional.
4. (4) [Refusal on Grounds Relating to the Reproductions of the Industrial Design] A Contracting Party may not refuse the effects of the international registration on the ground that requirements relating to the form of the reproductions of the industrial design that are additional to, or different from, those notified by that Contracting Party in accordance with paragraph (3)(a) have not been satisfied under its law. 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.

Administrative instructions concerning reproductions contained in Part Four of the Administrative Instructions for the Application of the Hague Agreement ("Administrative Instructions") are set forth below:

Hague Administrative Instructions Section 401:

Presentation of Reproductions

1. (a) One and the same international application may comprise both photographs and other graphic representations, in black and white or in color.
2. (b) Each reproduction accompanying an international application shall be submitted in a single copy.
3. (c) The photographs or other graphic representations accompanying an international application filed on paper shall be either pasted or printed directly onto a separate sheet of A4 paper which is white and opaque. The separate sheet of paper shall be used upright and shall not contain more than 25 reproductions.
4. (d) The reproductions accompanying an international application must be arranged in the orientation in which the applicant wishes them to be published. Where that application is filed on paper, a margin of at least 5 millimeters should be left around the representation of each industrial design.
5. (e) Each reproduction must fall within a right-angled quadrilateral containing no other reproduction or part of another reproduction and no numbering. The photographs or other graphic representations shall not be folded, stapled or marked in any way.

Hague Administrative Instructions Section 402

Representation of the Industrial Design

1. (a) The photographs and other graphic representations shall represent the industrial design alone, or the product in relation to which the industrial design is to be used, to the exclusion of any other object, accessory, person or animal.
2. (b) The dimensions of the representation of each industrial design appearing in a photograph or other graphic representation may not exceed 16 x 16 centimeters, and in respect of at least one representation of each design, one of those dimensions must be at least 3 centimeters. With respect to the filing of international applications by electronic means, the International Bureau may establish a data format, the particulars of which shall be published on the web site of the Organization, to ensure compliance with these maximum and minimum dimensions.
3. (c) The following shall not be accepted:
   1. (i) technical drawings, particularly with axes and dimensions;
   2. (ii) explanatory text or legends in the representation.

Hague Administrative Instructions Section 403

Disclaimers and Matter That Does Not Form Part of the Industrial Design or the Product in Relation to Which the Industrial Design is to be Used

1. (a) Matter which is shown in a reproduction but for which protection is not sought may be indicated
   1. (i) in the description referred to in Rule 7(5)(a) and/or
   2. (ii) by means of dotted or broken lines or coloring.
2. (b) Notwithstanding Section 402(a), matter that does not form part of the industrial design or the product in relation to which the industrial design is to be used may be shown in a reproduction if it is indicated in accordance with paragraph (a).

Hague Administrative Instructions Section 404

Requirements for Photographs and Other Graphic Representations

1. (a) The photographs supplied must be of professional standard and have all the edges cut at right angles. The industrial design must be shown against a neutral plain background. Photographs retouched with ink or correcting fluid shall not be allowed.
2. (b) Graphic representations must be of professional standard produced with drawing instruments or by electronic means and, where the application is filed on paper, must further be produced on good quality white, opaque paper, all of whose edges are cut at right angles. The industrial design represented may comprise shading and hatching to provide relief. Graphic representations executed by electronic means may be shown against a background, provided that it is neutral and plain and has only edges cut at right angles.

Hague Administrative Instructions Section 405

Numbering of Reproductions and Legends

1. (a) The numbering stipulated for multiple international applications shall appear in the margin of each photograph or other graphic representation. When 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).
2. (b) The reproductions shall be submitted in ascending numerical order.
3. (c) Legends to indicate a specific view of the product (e.g., "front view", "top view", etc.) may be indicated in association with the numbering of the reproduction.

Reproductions in international design applications must comply with the requirements of Hague Agreement Rule 9 and Part Four of the Administrative Instructions. See 37 CFR 1.1026.

Pursuant to Rule 9, the reproductions of the industrial design shall, at the option of the applicant, be in the form of photographs or other graphic representations of the industrial design itself or of the product or products which constitute the industrial design. The same product may be shown from different angles; views from different angles shall be included in different photographs or other graphic representations. Pursuant to Administrative Instruction 401, only a single copy of each reproduction should be submitted.

The reproductions must be of a quality permitting all the details of the industrial design to be clearly distinguished and permitting publication. See Rule 9(2). The reproductions should represent the industrial design alone, or the product in relation to which the industrial design is to be used, without any other object, accessory, person, or animal. However, the reproduction may show matter for which protection is not sought if such matter is indicated as provided for in Administrative Instruction 403.

Pursuant to Rule 9(3)(a), a Contracting Party may require certain specified views of the product or products which constitute the industrial design or in relation to which the industrial design is to be used, if the Contracting Party has appropriately notified the International Bureau of the required views and the circumstances under which they are required. Information concerning specified views required by a Contracting Party pursuant to Rule 9(3)(a) is set forth in the section "Specific Views" of the Guide to the Hague System available at WIPO’s website at www.wipo.int/export/sites/www/hague/en/ docs/hague-system-guide.pdf.

Additional formal requirements for the reproductions (e.g., margins, paper, backgrounds, etc.) are set forth in the Administrative Instructions. In addition, technical requirements regarding image files, such as resolution, minimum and maximum image size, border width, etc., are set forth on the website of the International Bureau at www.wipo.int/hague/ en/hague_file_renew.html. Reproductions may be filed through the USPTO as an office of indirect filing via the USPTO patent electronic filing system as PDF or JPEG files in accordance with the Legal Framework for Patent Electronic System. See MPEP §§ 502.05 and 2909.02(a).

Pursuant to Rule 9(4), a Contracting Party may 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. To help minimize the risk of receiving a refusal on such grounds, the International Bureau has established guidance, in consultation with examining offices, to assist applicants in preparing reproductions to help avoid refusals by examining offices on grounds of insufficient disclosure of the design. See "Guidance on Preparing and Providing Reproductions in Order to Forestall Possible Refusals on the Ground of Insufficient Disclosure of an Industrial Design by Examining Offices" available at www.wipo.int/export/sites/www/hague/en/docs/ guidance_reproductions.pdf.

Reproductions of industrial designs are required in international design applications and may be submitted as drawings, photographs, or a combination thereof, and may be in black and white or in color. See Rule 9 and Part Four of the Administrative Instructions for the Application of the Hague Agreement. Reproductions may be submitted via the USPTO patent electronic filing system as PDF or JPEG files as set forth below. Technical requirements regarding image files, such as resolution, minimum and maximum image size, border width, etc., are also set forth on the website of the International Bureau at www.wipo.int/hague/en/hague_file_renew.html.

Reproductions may be submitted as single page PDF or JPEG files by attaching the file(s) using the "Reproductions" section of the "Upload documents" screen. Alternatively, applicants may attach reproductions as PDFs (including multi-page PDFs) using the "Upload documents" section of the "Upload documents" screen. Attaching compliant reproductions via the "Reproductions" section, rather than the "Upload documents" section, may help to avoid incurring additional per page publication fees that might otherwise be required by the International Bureau. Each image file attached through the "Reproductions" section should contain only one view of the design. The "Reproductions" section will assign a design and view number to each file attached under this section.

In accordance with the technical requirements set forth by the International Bureau, the USPTO patent electronic filing system will not permit submission of any PDF or JPEG file via the "Reproductions" section that exceeds a file size of two megabytes. For JPEG submissions, the USPTO patent electronic filing system will provide warnings where requirements pertaining to image resolution and minimum and maximum dimensions have not been satisfied; the USPTO patent electronic filing system does not check color mode or border size for JPEG images. For PDF submissions via the "Reproductions" section, the USPTO patent electronic filing system submission of any PDF file that is more than one page is not permitted. In addition, the USPTO patent electronic filing system does not check color mode, border size, resolution, or maximum or minimum dimensions of the reproduction (other than certain minimum and maximum page size dimensions) for PDF images. It is the responsibility of applicants to ensure that reproductions satisfy all applicable requirements.

Users attaching reproductions under either the "Reproductions" section or the "Upload documents" section should select the document description "Drawings – only black and white line drawings" or "Drawings – other than black and white line drawings", as appropriate. The USPTO patent electronic filing system will provide a warning to users about the possibility of incurring additional per page publication fees where reproductions are attached via the "Attach documents" section. The USPTO patent electronic filing system will also provide a warning to users where a new international design application does not contain an indication that at least one reproduction is attached. See MPEP § 502.05 for additional information on using the USPTO patent electronic filing system.