MPEP § 2920
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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 public PAIR after publication under Article 10(3) of an international registration designating the United States. 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".
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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 application data sheet 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 1.48(f). 37 CFR 1.48(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 application data sheet 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 application data sheet, the request should also identify the desired inventor name change. See MPEP § 602.01(c)(2).
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 an application data sheet 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). In a nonprovisional international design application, the original applicant specified is the person identified as the applicant in the publication of the international registration under Hague Agreement Article 10(3). 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 an application data sheet 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 an application data sheet specifying the correct or updated name in the applicant information section. Any corrected application data sheet 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) will also be effective to change the name of the applicant in a nonprovisional international design application. See 37 CFR 1.46(c)(1). 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).
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.
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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 shown in the reproductions may be directed to only a portion of the article. However, the title may not be directed to less than the claimed design shown in the reproductions.
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. See 37 CFR 1.1025. When the title and claim do not correspond, the title should be objected to under 37 CFR 1.1067 as not corresponding to the claim.
Form paragraphs 15.05.01 and 15.59 may be used in nonprovisional international design applications as appropriate.
The title of a design being claimed must correspond to the name of the article in which the design is embodied or applied to. See MPEP § 1503.01 and 37 CFR 1.153 or 37 CFR 1.1067.
For [1], the title [2] amended throughout the application, original oath or declaration excepted, to read: [3]
1. In bracket 1, insert reason.
2. In bracket 2, insert --should be-- or --has been--.
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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.
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 a description of broken lines or coloring, as appropriate:
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.--
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--.
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.--
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.
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.--
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--.
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.
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."
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.
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."
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.
Because of [1] -- and described -- [2] added to the claim after "shown."
1. In bracket 1, insert reason.
2. In bracket 2, insert --must be-- or --has been--.
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 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. Rule 9 and the relevant provisions of the Administrative Instructions are reproduced in MPEP § 2909.02. Notable provisions include, for example, the ability to submit reproductions in black and white or in color (Administrative Instruction 401), numbering of reproductions by design and view number separated by a dot (Administrative Instruction 405), and the use of coloring to indicate matter shown in a reproduction for which protection is not sought (Administrative Instruction 403). 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).
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.
The amended reproductions received on [1] are objected to because [2]. See 37 CFR 1.1026.
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.
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.
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 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.
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.
Use this form paragraph only in an international design application.
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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).
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), 1505 (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:
Regulations concerning international design applications are set forth in 37 CFR Part 1, subpart I.
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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 effect 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, 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 prior to examination.
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.
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.
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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.
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.
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.--
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--.
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 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.--
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.
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.--
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.
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 ).
Use this form paragraph only in an international design application.
2. In bracket 1, insert title of the article.
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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 §§ 213 et 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 an 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. 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 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.
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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.
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 and 1.98 to ensure consideration of an IDS by the examiner. When filing an international design application, an applicant may submit an IDS as an annex to the international design application. 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.
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 specified on the website of WIPO, currently available at www.wipo.int/hague, at the time the fee is paid. 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.