Hague Rule 22

Corrections in the International Register

1. (1) [Correction]Where the International Bureau, acting ex officio or at the request of the holder, considers that there is an error concerning an international registration in the International Register, it shall modify the Register and inform the holder accordingly.
2. (2) [Refusal of Effects of Correction] The Office of any designated Contracting Party shall have the right to declare in a notification to the International Bureau that it refuses to recognize the effects of the correction. Rules 18 to 19 shall apply mutatis mutandis.

Hague Article 16

Recording of Changes and Other Matters Concerning International Registrations

1. (1) [Recording of Changes and Other Matters] The International Bureau shall, as prescribed, record in the International Register
   1. (i) any change in ownership of the international registration, in respect of any or all of the designated Contracting Parties and in respect of any or all of the industrial designs that are the subject of the international registration, provided that the new owner is entitled to file an international application under Article 3,
   2. (ii) any change in the name or address of the holder,
   3. (iii) the appointment of a representative of the applicant or holder and any other relevant fact concerning such representative,
   4. (iv) any renunciation, by the holder, of the international registration, in respect of any or all of the designated Contracting Parties,
   5. (v) any limitation, by the holder, of the international registration, in respect of any or all of the designated Contracting Parties, to one or some of the industrial designs that are the subject of the international registration,
   6. (vi) any invalidation, by the competent authorities of a designated Contracting Party, of the effects, in the territory of that Contracting Party, of the international registration in respect of any or all of the industrial designs that are the subject of the international registration,
   7. (vii) any other relevant fact, identified in the Regulations, concerning the rights in any or all of the industrial designs that are the subject of the international registration.
2. (2) [Effect of Recording in International Register] Any recording referred to in items (i), (ii), (iv), (v), (vi) and (vii) of paragraph (1) shall have the same effect as if it had been made in the Register of the Office of each of the Contracting Parties concerned, except that a Contracting Party may, in a declaration, notify the Director General that a recording referred to in item (i) of paragraph (1) shall not have that effect in that Contracting Party until the Office of that Contracting Party has received the statements or documents specified in that declaration.

37 C.F.R. 1.1065 Corrections and other changes in the International Register.

1. (a) The effects of any correction in the International Register by the International Bureau pursuant to Rule 22 in a pending nonprovisional international design application shall be decided by the Office in accordance with the merits of each situation, subject to such other requirements as may be imposed. A patent issuing from an international design application may only be corrected in accordance with the provisions of title 35, United States Code, for correcting patents. Any correction under Rule 22 recorded by the International Bureau with respect to an abandoned nonprovisional international design application will generally not be acted upon by the Office and shall not be given effect unless otherwise indicated by the Office.
2. (b) A recording of a partial change in ownership in the International Register pursuant to Rule 21(7) concerning a transfer of less than all designs shall not have effect in the United States.

I. CORRECTIONS UNDER HAGUE RULE 22

Hague Agreement Rule 22 provides for correction of errors in the International Register by the International Bureau, acting ex officio, or at the request of the holder. Under Rule 22(2), a designated Contracting Party may refuse the effects of correction.

Upon receipt of a correction under Rule 22 in a pending application, the Office will make a determination whether to give effect to the correction or to refuse the effects of the correction in accordance with the merits of each situation, subject to such other requirements as may be imposed. Upon making such a determination, the Rule 22 correction will be annotated to reflect entry or non-entry of the correction. Where the Rule 22 correction is entered and corrects data contained in the official filing receipt, a corrected filing receipt will be issued.

Corrections under Rule 22 received in abandoned applications will generally not be acted upon by the Office and will not be given effect unless otherwise indicated by the Office. U.S. patents, including U.S. patents issuing from international design applications, may only be corrected in accordance with the provisions of title 35, United States Code, for correcting patents. Such provisions are contained, for example, in 35 U.S.C. chapter 25. See, e.g., MPEP §§ 1401, 1480 et seq. and 1481 et seq.

II. RECORDING OF CHANGES UNDER HAGUE ARTICLE 16

Hague Agreement Article 16(1) provides for the recording of certain changes in the International Register by the International Bureau, including: (1) a change in ownership of the international registration; (2) a change in the name or address of the holder; (3) an appointment of a representative of the applicant or holder; (4) a renunciation of the international registration with respect to any or all of the designated Contracting Parties; (5) a limitation of the international registration with respect to any or all of the designated Contracting Parties, to one or some of the industrial designs that are the subject of the international registration; and (6) any invalidation by the competent authority of a designated Contracting Party of the effects of the international registration in the territory of that Contracting Party.

Regarding the recording of a change in ownership of the international registration pursuant to Article 16(1)(i), Article 16(2) provides that a Contracting Party may, in a declaration, notify the International Bureau that a recording of a change in ownership of the international registration shall not have that effect in that Contracting Party until the office of that Contracting Party has received the statements or documents specified in that declaration. The United States has made a declaration under Article 16(2). See MPEP § 2903. In addition, the recording of a partial change in ownership by the International Bureau in the International Register concerning a transfer of less than all designs shall not have effect in the United States. See 37 CFR 1.1065(b). Section 1.1065(b) does not limit the right of the owner to assign or otherwise transfer a portion of his or her interest in the application, or to record such transfer in the Office, but rather simply provides that the recording of such a transfer in the International Register will not have effect in the United States.

A change in the name or address of the holder under Article 16(1)(ii) will be entered in a pending nonprovisional international design application where the holder is the applicant and the change is timely made. See MPEP § 2920.02 regarding a change in the name of the applicant. Where the recording of a purported change in the name of the holder under Article 16(1)(ii) is a de facto change in the applicant, the Office will treat the recording as a recording under Article 16(1)(i).

The recording of the appointment of a representative of the applicant or holder pursuant to Article 16(1)(iii) concerns representation before the International Bureau pursuant to Rule 3. The recording under Article 16(1)(iii) does not effect a change in representation before the USPTO.

A renunciation of the international registration with respect to the designation of the United States pursuant to Article 16(1)(iv) will result in termination of a pending nonprovisional international design application. In such case, the Office will send a notification of abandonment to the applicant, or to the International Bureau in the form of a refusal where a refusal has not previously been communicated. See MPEP § 2920.05(a) .

The recording of a limitation with respect to the designation of the United States pursuant to Article 16(1)(v) will be treated as an amendment canceling the designs that are the subject of the limitation contained in the nonprovisional international design application.