| Design Applications |
Referenced Items (253, 254) |
(253) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 1, 3, 5, 11, and 41
[Docket No.: PTO-P-2013-0025]
RIN 0651-AC87
Changes to Implement the Hague Agreement Concerning International
Registration of Industrial Designs
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY:
Title I of the Patent Law Treaties Implementation Act of 2012
("PLTIA") amends the United States patent laws to implement the
provisions of the Geneva Act of the Hague Agreement Concerning the
International Registration of Industrial Designs, July 2, 1999,
(hereinafter "Hague Agreement") and is to take effect on the entry
into force of the Hague Agreement with respect to the United States.
Under the Hague Agreement, qualified applicants may apply for design
protection in the Contracting Parties to the Hague Agreement by filing
a single, standardized international design application in a single
language. The United States Patent and Trademark Office is revising the
rules of practice to implement title I of the PLTIA.
DATES: Effective date: The changes in this final rule take effect on
May 13, 2015.
Applicability date: The changes to 37 CFR 1.32, 1.46, 1.63, 1.76,
and 1.175 in this final rule apply only to patent applications filed
under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012. The
changes to 37 CFR 1.53(b) and (c) and 1.57(a)(4) in this final rule
apply only to patent applications filed under 35 U.S.C. 111 on or after
December 18, 2013.
FOR FURTHER INFORMATION CONTACT: Boris Milef, Senior PCT Legal
Examiner, International Patent Legal Administration, at (571) 272-3288
or David R. Gerk, Patent Attorney, Office of Policy and International
Affairs, at (571) 272-9300.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: Under the Hague Agreement available at
http://www.wipo.int/treaties/en/registration/hague/, qualified
applicants may apply for design protection in the Contracting Parties
to the Hague Agreement by filing a single, standardized international
design application in a single language. Title I of the PLTIA amends
title 35, United States Code, to implement the provisions of the Hague
Agreement and is to take effect on the entry into force of the Hague
Agreement with respect to the United States. This final rule revises
the relevant rules of practice in title 37, chapter I, of the Code of
Federal Regulations to implement title I of the PLTIA.
Summary of Major Changes to U.S. Practice: The major changes to
U.S. practice in title I of the PLTIA pertain to: (1) Standardizing
formal requirements for international design applications; (2)
establishing the United States Patent and Trademark Office ("USPTO"
or "Office") as an office through which international design
applications may be filed; (3) providing a right of priority with
respect to international design applications; (4) treating an
international design application that designates the United States as
having the same effect from its filing date as that of a national
design application; (5) providing provisional rights for published
international design applications that designate the United States; (6)
setting the patent term for design patents issuing from both national
design applications under chapter 16 and international design
applications designating the United States to 15 years from the date of
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patent grant; (7) providing for examination by the Office of
international design applications that designate the United States; and
(8) permitting an applicant's failure to act within prescribed time
limits in an international design application to be excused as to the
United States under certain conditions. In addition, as to the
applicability dates for certain provisions in existing rules, this
final rule makes those applicability dates more accessible by stating
them directly in the body of those rules.
The Office is specifically revising the rules of practice (37 CFR
parts 1, 3, 5, 11, and 41) to provide for the filing of international
design applications by applicants in the USPTO as an office of indirect
filing. The Office will transmit the international design application
and any collected international fees to the International Bureau of the
World Intellectual Property Organization ("WIPO"), subject to
national security review and payment of a transmittal fee. The
International Bureau will review the application for compliance with
the applicable formal requirements under the Hague Agreement.
The Office is also revising the rules of practice to set forth the
formal requirements of an international design application, including
specific content requirements where the United States is designated.
Specifically, an international design application designating the
United States must identify the inventor and include a claim and the
inventor's oath or declaration. The final rules also specify that an
international design application designating the United States may be
refused by the Office as a designated office if the applicant is not a
person qualified under 35 U.S.C. chapter 11 to be an applicant.
Additionally, the Office is revising the rules of practice to
provide for examination of international design applications that
designate the United States. International design applications are
reviewed by the International Bureau for compliance with requirements
under the Hague Agreement. Where these requirements have been met, the
International Bureau will register the industrial design in the
International Register and, subsequently, publish the international
registration and send a copy of the publication to each designated
office. Since international registration will only occur after the
International Bureau finds that the application conforms to the
applicable formal requirements, examination before the Office will
generally be limited to substantive matters. With certain exceptions,
the Hague Agreement imposes a time period of up to 12 months from the
date of publication of the international registration for an examining
office to refuse an international design application. The rules are
revised to provide for the applicability of the requirements of 35
U.S.C. chapter 16 to examination of international design applications
consistent with the Hague Agreement and to provide for the various
notifications to the International Bureau required of an examining
office under the Hague Agreement.
The Office is further revising the rules of practice to provide
for: (1) Review of a filing date established by the International
Bureau; (2) excusing an applicant's failure to act within prescribed
time limits in connection with an international design application; (3)
priority claims with respect to international design applications; (4)
payment of fees; and (5) treatment of international design applications
for national security review.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background: The Hague Agreement, negotiated under the auspices of
WIPO, is the latest revision to the 1925 Hague Agreement Concerning the
International Deposit of Industrial Designs ("1925 Agreement"). The
United States is not a party to the 1925 Agreement and did not join any
of the subsequent Acts revising the 1925 Agreement, because those
agreements either did not provide, or did not adequately provide, for
substantive examination of international design applications by national
offices. The Hague Agreement, adopted at a diplomatic conference on
July 2, 1999, is the first Act that adequately provides for a system of
individual review by the national offices of Contracting Parties.
In accordance with Article 28, the Hague Agreement will enter into
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force for the United States three months after the date that the United
States deposits its instrument of ratification with the Director
General of the International Bureau of WIPO or at any later date
indicated in the instrument. As stated in the President's November 13,
2006, Letter of Transmittal to the Senate, the United States will not
deposit its instrument of ratification until the necessary implementing
legal structure has been established domestically. Treaty Doc. 109-21.
Title I of the PLTIA, enacted on December 18, 2012, amended title 35,
United States Code, in order to implement the Hague Agreement. See
Public Law 112-211, sections 101-103, 126 Stat. 1527, 1527-33 (2012).
Its provisions are to take effect on the entry into force of the Hague
Agreement with respect to the United States. On February 13, 2015, the
United States deposited its instrument of ratification with the
Director General of the International Bureau of WIPO. These final rules
implement title I of the PLTIA.
The main purpose of the Hague Agreement is to facilitate protection
for industrial designs by allowing applicants to apply for protection
in those countries and intergovernmental organizations that are
Contracting Parties to the Hague Agreement by filing a single
standardized application in a single language. Currently, a U.S. design
applicant seeking global protection generally has to file separate
design applications in each country or intergovernmental organization
for which protection is sought, complying with the formal requirements
imposed by each country or intergovernmental organization. The Hague
Agreement simplifies the application process and reduces the costs for
applicants seeking to obtain rights globally. The Hague Agreement also
provides for centralized international registration of designs and
renewal of registrations. The Hague Agreement imposes a time limit on a
Contracting Party to refuse the effects of international registration
in that Contracting Party if the conditions for the grant of protection
under the law of that Contracting Party are not met.
Major provisions of the Hague Agreement as implemented by title I
of the PLTIA include the following:
Article 3 of the Hague Agreement provides that "[a]ny person that
is a national of a State that is a Contracting Party or of a State
member of an intergovernmental organization that is a Contracting
Party, or that has a domicile, a habitual residence or a real and
effective industrial or commercial establishment in the territory of a
Contracting Party, shall be entitled to file an international
application." Article 4(1)(a) provides that "[t]he international
application may be filed, at the option of the applicant, either
directly with the International Bureau or through the Office of the
applicant's Contracting Party." Article 4(2) allows "[t]he Office of
any Contracting Party [to] require that the applicant pay a transmittal
fee to it, for its own benefit, in respect of any international
application filed through it."
Section 101(a) of the PLTIA adds 35 U.S.C. 382 to implement the
provisions of Articles 3 and 4. 126 Stat. at 1528. Section 382(a)
provides that "[a]ny person who is a national of the United States, or
has a domicile, a habitual residence, or a real and effective
industrial or commercial establishment in the United States, may file
an international design application by submitting to the Patent and
Trademark Office an application in such form, together with such fees,
as may be prescribed by the Director." Id. Section 382(b) requires the
Office to "perform all acts connected with the discharge of its duties
under the [Hague Agreement], including the collection of international
fees and the transmittal thereof to the International Bureau." Id.
Transmittal of the international design application is subject to 35
U.S.C. chapter 17 and payment of a transmittal fee. Id.
Article 5 of the Hague Agreement and Rule 7 of the "Common
Regulations under the 1999 Act and the 1960 Act of the Hague
Agreement" ("Hague Agreement Regulations" or "Regulations")
concern the contents of an international design application. Article
5(1) requires the international design application to be in one of the
prescribed languages and specifies the contents required for all
international design applications. Specifically, it provides that the
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application "shall contain or be accompanied by (i) a request for
international registration under [the Hague Agreement]; (ii) the
prescribed data concerning the applicant; (iii) the prescribed number
of copies of a reproduction or, at the choice of the applicant, of
several different reproductions of the industrial design that is the
subject of the international application, presented in the prescribed
manner; however, where the industrial design is two-dimensional and a
request for deferment of publication is made in accordance with
[Article 5(5)], the international application may, instead of
containing reproductions, be accompanied by the prescribed number of
specimens of the industrial design; (iv) an indication of the product
or products which constitute the industrial design or in relation to
which the industrial design is to be used, as prescribed; (v) an
indication of the designated Contracting Parties; (vi) the prescribed
fees; [and] (vii) any other prescribed particulars."
Article 5(2) of the Hague Agreement and Rule 11 of the Hague
Agreement Regulations set forth additional mandatory contents that may
be required by any Contracting Party whose Office is an Examining
Office and whose law, at the time it becomes party to the Hague
Agreement, so requires. Specifically, Article 5(2) provides that "an
application for the grant of protection to an industrial design . . .
[may], in order for that application to be accorded a filing date under
that law" be required to contain any of the following elements: "(i)
Indications concerning the identity of the creator of the industrial
design that is the subject of that application; (ii) a brief
description of the reproduction or of the characteristic features of
the industrial design that is the subject of that application; [and]
(iii) a claim."
Section 101(a) of the PLTIA adds 35 U.S.C. 383 to provide that,
"[i]n addition to any requirements pursuant to chapter 16, the
international design application shall contain - (1) a request for
international registration under the treaty; (2) an indication of the
designated Contracting Parties; (3) data concerning the applicant as
prescribed in the treaty and the Regulations; (4) copies of a
reproduction or, at the choice of the applicant, of several different
reproductions of the industrial design that is the subject of the
international design application, presented in the number and manner
prescribed in the treaty and the Regulations; (5) an indication of the
product or products that constitute the industrial design or in
relation to which the industrial design is to be used, as prescribed in
the treaty and the Regulations; (6) the fees prescribed in the treaty
and the Regulations; and (7) any other particulars prescribed in the
Regulations." 126 Stat. at 1528-29.
Article 6 of the Hague Agreement provides a right of priority with
respect to international design applications. Article 6(1) provides
that "[t]he international design application may contain a declaration
claiming, under Article 4 of the Paris Convention, the priority of one
or more earlier applications filed in or for any country party to that
Convention or any Member of the World Trade Organization." Article
6(2) provides that "[t]he international [design] application shall, as
from its filing date and whatever may be its subsequent fate, be
equivalent to a regular filing within the meaning of Article 4 of the
Paris Convention."
Section 101(a) of the PLTIA adds 35 U.S.C. 386 to provide for a
right of priority with respect to international design applications.
Section 386(a) provides that "[i]n 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." 126 Stat. at 1529.
Section 386(b) provides that "[i]n 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
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least 1 country other than the United States, or a prior international
design application designating at least 1 country other than the United
States." Id. Section 386(c) provides for domestic benefit claims with
respect to international design applications designating the United
States in accordance with the conditions and requirements of 35 U.S.C.
120. 126 Stat. at 1529-30.
Article 7 of the Hague Agreement and Rule 12 of the Hague Agreement
Regulations provide for designation fees. Under Article 7(2) and Rule
12(3), the designation fee may be an "individual designation fee."
Article 7(2) provides that for any Contracting Party whose Office is an
Examining Office, the "amount may be fixed by the said Contracting
Party . . . for the maximum period of protection allowed by the
Contracting Party concerned." Rule 12(3) provides that the individual
designation fee may "comprise[ ] two parts, the first part to be paid
at the time of filing the international design application and the
second part to be paid at a later date which is determined in
accordance with the law of the Contracting Party concerned." Rule
12(1) lists other fees concerning the international design application,
including the basic fee and publication fee.
Article 8(1) of the Hague Agreement and Rule 14 of the Hague
Agreement Regulations provide that the International Bureau will
examine the international design application for compliance with the
requirements of the Hague Agreement and Regulations and invite the
applicant to make any required correction within a prescribed time
limit. Under Article 8(2), the failure to timely comply with the
invitation will result in abandonment of the application, except where
the irregularity concerns a requirement under Article 5(2) or a special
requirement under the Regulations, in which case the failure to timely
correct will result in the application being deemed not to contain the
designation of the Contracting Party concerned.
Article 9 of the Hague Agreement establishes the filing date of an
international design application. Article 9(1) provides that "[w]here
the international application is filed directly with the International
Bureau, the filing date shall, subject to [Article 9(3)], be the date
on which the International Bureau receives the international
application." Article 9(2) provides that "[w]here the international
application is filed through the Office of the applicant's Contracting
Party, the filing date shall be determined as prescribed." The filing
date of an international application filed with an office of indirect
filing is prescribed in Rule 13(3) of the Regulations.
Article 9(3) provides that "[w]here the international application
has, on the date on which it is received by the International Bureau,
an irregularity which is prescribed as an irregularity entailing a
postponement of the filing date of the international application, the
filing date shall be the date on which the correction of such
irregularity is received by the International Bureau." Rule 14(1) sets
forth the time limit in which the applicant is required to correct such
irregularities, and Rule 14(2) sets forth the irregularities that are
prescribed as entailing postponement of the filing date of the
international design application.
The PLTIA adds 35 U.S.C. 384, which provides in subsection (a) that
the filing date of an international design application in the United
States shall be the "effective registration date" subject to review
under subsection (b). 126 Stat. at 1529. The term "effective
registration date" is defined in section 381(a)(5), added by the
PLTIA, as "the date of international registration determined by the
International Bureau under the treaty." 126 Stat. at 1528. Section
384(b) provides that "[a]n applicant may request review by the
Director of the filing date of the international design application in
the United States" and that "[t]he Director may determine that the
filing date of the international design application in the United
States is a date other than the effective registration date." 126
Stat. at 1529. It also authorizes the Director to "establish
procedures, including the payment of a surcharge, to review the filing
date under this section." Id. Section 384(a) also provides that "any
international design application designating the United States that
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otherwise meets the requirements of chapter 16 may be treated as a
design application under chapter 16." Id.
Article 10(1) of the Hague Agreement provides that "[t]he
International Bureau shall register each industrial design that is the
subject of an international application immediately upon receipt by it
of the international application or, where corrections are invited
under Article 8, immediately upon receipt of the required
corrections." Article 10(2) provides that "[s]ubject to subparagraph
(b), the date of the international registration shall be the filing
date of the international application." Article 10(2)(b) provides that
"[w]here the international application has, on the date on which it is
received by the International Bureau, an irregularity that relates to
Article 5(2), the date of the international registration shall be the
date on which the correction of such irregularity is received by the
International Bureau or the filing date of the international
application, whichever is the later." Under Rule 15(2) of the
Regulations, "[t]he international registration shall contain (i) all
the data contained in the international application . . . ; (ii) any
reproduction of the industrial design; (iii) the date of the
international registration; (iv) the number of the international
registration; [and] (v) the relevant class of the International
Classification, as determined by the International Bureau."
Article 10(3)(a) of the Hague Agreement provides that "[t]he
international registration shall be published by the International
Bureau." Under Article 10(3)(b), "[t]he International Bureau shall
send a copy of the publication of the international registration to
each designated Office."
Section 101(a) of the PLTIA adds 35 U.S.C. 390 to provide that
"[t]he publication under the treaty of an international design
application designating the United States shall be deemed a publication
under [35 U.S.C.] 122(b)." 126 Stat. at 1531.
Article 10(4) of the Hague Agreement provides that the
International Bureau shall, subject to Articles 10(5) and 11(4)(b),
keep each international application and international registration
confidential until publication. Under Article 10(5)(a), "[t]he
International Bureau shall, immediately after registration has been
effected, send a copy of the international registration, along with any
relevant statement, document or specimen accompanying the international
application, to each Office that has notified the International Bureau
that it wishes to receive such a copy and has been designated in the
international application."
Article 11 of the Hague Agreement provides for deferment of
publication under certain conditions. Article 11(3) prescribes the
procedure where a request for deferment of publication is filed in an
international design application designating a Contracting Party that
has made a declaration under Article 11(1)(b) stating that deferment of
publication is not possible under its law.
Article 12(1) of the Hague Agreement provides that "[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. . . ." Article 12(1) further
provides 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 [the Hague Agreement] or the Regulations or are
additional to, or different from, those requirements have not been
satisfied under the law of the Contracting Party concerned." Article
12(2) provides that the refusal of the effects of an international
registration shall be communicated to the International Bureau within
the prescribed period and shall state the grounds on which the refusal
is based. Under Rule 18(1) of the Hague Agreement Regulations, the
prescribed period for sending the notification of refusal is six months
from publication, or twelve months from publication where an office
makes a declaration under Rule 18(1)(b). The declaration under Rule
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18(1)(b) may state that the international registration shall produce
the effects under Article 14(2)(a) at the latest "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 "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 [Rule 18(1)(a) or (b)]." See Rule 18(1)(c).
Rule 18(2)(b) provides that the notification of refusal "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 . . ., (iv) where the . . . refusal is based
. . . [on] 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 . . . accessible to
the public) and the name and address of the owner . . ., (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 (vii) the date on which the refusal was pronounced."
Article 12(3) of the Hague Agreement provides that "[t]he
International Bureau shall, without delay, transmit a copy of the
notification of refusal to the holder," and that "[t]he holder shall
enjoy the same remedies as if . . . the international registration had
been the subject of an application for a grant of protection under the
law applicable to the Office that communicated the refusal." Under
Article 12(4), "[a]ny refusal may be withdrawn, in part or in whole,
at any time by the Office that communicated it."
Article 13 of the Hague Agreement permits a Contracting Party to
notify the Director General in a declaration, where the Contracting
Party's "law, at the time it becomes party to this Act, requires that
designs [in the] application conform to a requirement of unity of
design, unity of production or unity of use, . . . or that only one
independent and distinct design may be claimed in a single
application."
Under Article 14(1) of the Hague Agreement, "[t]he 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."
Section 101(a) of the PLTIA adds 35 U.S.C. 385 to provide that
"[a]n international design application designating the United States
shall have the effect, for all purposes, from its filing date . . ., of
an application for patent filed in the Patent and Trademark Office
pursuant to chapter 16 [of title 35, United States Code]." 126 Stat.
at 1529. The PLTIA also amends 35 U.S.C. 154 to provide for provisional
rights in international design applications that designate the United
States. 126 Stat. at 1531-32.
Article 14(2)(a) of the Hague Agreement provides that "[i]n each
designated Contracting Party the Office of which has not communicated a
refusal in accordance with Article 12, the international registration
shall have the same effect as a grant of [design] protection . . .
under the law of that Contracting Party at the latest from the date of
expiration of the period allowed for it to communicate a refusal or,
where a Contracting Party has made a corresponding declaration under
the Regulations, at the latest at the time specified in that
declaration." Article 14(2)(b) provides that "[w]here the Office of a
designated Contracting Party has communicated a refusal and has
subsequently withdrawn, in part or in whole, that refusal, the
international registration shall, to the extent that the refusal is
withdrawn, have the same effect in that Contracting Party as a grant of
[design protection] under the law of the said Contracting Party at the
latest from the date on which the refusal was withdrawn." Rule 18(4)
of the Hague Agreement Regulations sets forth the required contents of
a notification of withdrawal of refusal. Alternatively, under Rule
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18bis(2), the office of a Contracting Party may send the International
Bureau a statement of grant of protection instead of a notification of
withdrawal of refusal.
Article 16 of the Hague Agreement and Rule 21 of the Hague
Agreement Regulations provide for the recording of certain changes in
the International Register by the International Bureau, such as changes
in ownership or the name or address of the holder. Under Article 16(2),
any such recording at the International Bureau "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 [of a
change in ownership] 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."
Under Article 17 of the Hague Agreement, an "international design
registration shall be effected for an initial term of five years
counted from the date of international registration" and "may be
renewed for additional terms of five years, in accordance with the
prescribed procedure and subject to payment of the prescribed fees."
The initial term of protection and additional terms may be replaced by
a maximum period of protection allowed by a Contracting Party. See
Article 7(2). The PLTIA amends 35 U.S.C. 173 to set the term of a
design patent to 15 years from date of grant. 126 Stat. at 1532.
The PLTIA adds 35 U.S.C. 387 to allow the Director to establish
procedures, including a requirement for payment of the fee specified in
35 U.S.C. 41(a)(7), to excuse as to the United States "[a]n
applicant's failure to act within prescribed time limits in connection
with requirements pertaining to an international design application"
upon a showing of unintentional delay. 126 Stat. at 1530.
Hague Agreement Regulations Rule 8 provides for certain
requirements concerning the applicant and the creator. Under Rule
8(1)(a)(ii), "[w]here the law of a Contracting Party bound by the 1999
Act requires the furnishing of an oath or declaration of the creator,
that Contracting Party may, in a declaration, notify the Director
General of that fact." Rule 8(1)(b) provides that the declarations
referred to in Rules 8(1)(a)(i) and (a)(ii) shall specify the form and
mandatory contents of any required statement, document, oath, or
declaration. Rule 8(3) provides that "[w]here an international
application contains the designation of a Contracting Party that has
made the declaration referred to in paragraph (1)(a)(ii) it shall also
contain indications concerning the identity of the creator of the
industrial design." See discussion of § 1.1021(d).
Relevant documents, including the implementing legislation (title I
of the PLTIA), Senate Committee Reports, and the Transmittal Letter,
are available on the USPTO Web site at
http://www.uspto.gov/patents/int_protect/index.jsp. This Web site also
contains a link to WIPO's Website, which makes available relevant treaty
documents, currently at http://www.wipo.int/hague/en/legal_texts/.
Discussion of Specific Rules
The following is a discussion of the amendments to title 37 of the
Code of Federal Regulations, parts 1, 3, 5, 11, and 41.
Section 1.4: Section 1.4(a)(2) is amended to include a reference to
the final rules relating to international design applications in
subpart I.
Section 1.5: Section 1.5(a) is amended to provide that the
international registration number may be used on correspondence
directed to the Office to identify an international design application.
The international registration number is the number assigned by the
International Bureau upon registration of the international design in
the International Register. See Rule 15 of the Regulations.
Section 1.6: Section 1.6(d)(3) is amended to include the filing of
an international design application among the correspondence for which
facsimile transmission is not permitted and, if submitted, will not be
accorded a receipt date. This is consistent with the treatment of the
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filing of national patent applications and international applications
under the Patent Cooperation Treaty ("PCT").
Section 1.6(d)(4) is amended to prohibit the filing of color
drawings by facsimile in an international design application. This is
consistent with the treatment of color drawings in national
applications and international applications under the PCT.
Section 1.6(d)(6) is amended to change "a patent application" to
"an application" to clearly prohibit the submission of correspondence
by facsimile in an international design application that is subject to
a secrecy order under §§ 5.1 through 5.5.
Section 1.8: Section 1.8(a)(2)(i) is amended to add a new paragraph
(K) to include the filing of an international design application among
the correspondence that will not receive benefit from a Certificate of
Mailing or Transmission. See discussion of § 1.6(d)(3), supra.
Section 1.9: Sections 1.9(a)(1) and (a)(3) are amended to include
in the definitions of "national application" and "nonprovisional
application," respectively, an international design application filed
under the Hague Agreement for which the Office has received a copy of
the international registration pursuant to Hague Agreement Article 10.
Pursuant to 35 U.S.C. 385, added by section 101(a) of the PLTIA, an
international design application that designates the United States has
the effect from its filing date under 35 U.S.C. 384 of an application
for patent filed in the United States Patent and Trademark Office
pursuant to 35 U.S.C. chapter 16. 126 Stat. at 1529. The filing date of
an international design application is, subject to review, the
international registration date.
See discussion of § 1.1023, infra. Under Article 10, the
International Bureau will send a copy of the international registration
to each designated office after publication (Article 10(3)) or, upon
notification by the Contracting Party, immediately after international
registration (Article 10(5)). Consequently, the Office will receive a
copy of the international registration pursuant to Article 10 only if
the United States has been designated. The Office notes that, while the
definition of "nonprovisional application" in § 1.9(a)(3) may
include international applications under the PCT and international
design applications under the Hague Agreement satisfying certain
conditions, neither the PCT, the Hague Agreement, nor U.S. law provides
for provisional international applications or international design
applications.
Sections 1.9(l) and 1.9(m) are added to define "Hague Agreement,"
"Hague Agreement Article," "Hague Agreement Regulations," and
"Hague Agreement Rule" as used in chapter I of title 37 of the Code
of Federal Regulations ("CFR").
Section 1.9(n) is added to define "international design
application" as used in chapter I of title 37 of the CFR. Section
1.9(n) further provides that unless otherwise clear from the wording,
reference to "design application" or "application for a design
patent" in chapter I of the CFR includes an international design
application that designates the United States.
Section 1.14: Section 1.14(a)(1) introductory text is amended to
add a reference to added paragraph (j) concerning international design
applications.
Section 1.14(a)(1)(ii) is amended to replace the reference to
"abandoned application that has been published as a patent application
publication" with a reference to "abandoned published application."
This change is consistent with the language of § 1.11(a) to which
§ 1.14(a)(1)(ii) refers. In addition, the term "published
application" is defined in § 1.9(c) as "an application for patent
which has been published under 35 U.S.C. 122(b)." Pursuant to 35
U.S.C. 374 and 35 U.S.C. 390, international applications and
international design applications that designate the United States and
are published under the respective treaty, "shall be deemed a
publication under section 122(b)." Accordingly, a published
application for purposes of § 1.14 will include a publication by
the International Bureau of either an international application under
the PCT or an international design application under the Hague
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Agreement that designates the United States. Access to such published
applications is permitted under PCT Article 30 and Hague Agreement
Article 10. In contrast, the term "patent application publication" refers
to a publication by the Office under § 1.215. The Office will not publish
international design applications under § 1.215 (see § 1.211), as
international design applications are published in English by the
International Bureau under the Hague Agreement. See Hague Agreement
Article 10(3) and Rule 6(2). See also 35 U.S.C. 390, added by the
PLTIA, deeming a publication under the Hague Agreement as a publication
under 35 U.S.C. 122(b). 126 Stat. at 1531. In addition, the Office does
not publish applications for design patents under 35 U.S.C. chapter 16.
See § 1.211(b).
Sections 1.14(a)(1)(iv)-(vi) are amended to include a publication
of an international registration under Hague Agreement Article 10(3) of
an international design application designating the United States among
the publications for which access to an unpublished application may be
obtained. Section 1.14(a)(1)(iv) is amended to permit access to the
file contents of an unpublished abandoned application where the
application is identified in the publication of an international
registration under Hague Agreement Article 10(3) of an international
design application designating the United States, or where benefit of
the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or
386(c) in an application that has issued as a U.S. patent or has
published as a statutory invention registration, a U.S. patent
application publication, an international publication of an
international application under PCT Article 21(2), or a publication of
an international registration under Hague Agreement Article 10(3).
Section 1.14(a)(1)(v) is amended to permit access to the file contents
of an unpublished pending application where benefit of the application
is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an
application that has issued as a U.S. patent or has published as a
statutory invention registration, a U.S. patent application
publication, an international publication under PCT Article 21(2), or a
publication of an international registration under Hague Agreement
Article 10(3). Section 1.14(a)(1)(vi) is amended to permit access to a
copy of the application as originally filed of an unpublished pending
application if the application is incorporated by reference or
otherwise identified in a U.S. patent, a statutory invention
registration, a U.S. patent application publication, an international
publication under PCT Article 21(2), or a publication of an
international registration under Hague Agreement Article 10(3) of an
international design application designating the United States.
Section 1.14(a)(1)(vii) is amended consistent with amendments to
§§ 1.14(a)(1)(iv)-(vi).
Section 1.14(a)(2)(iv) is amended to add a reference to benefit
claims under 35 U.S.C. 386, as provided by the PLTIA. 126 Stat. 1529-
30.
Section 1.14(j) is added to set forth the conditions under which
the records of an international design application maintained by the
Office will be made available to the public.
Section 1.14(j)(1) provides that, with respect to an international
design application maintained by the Office in its capacity as a
designated office for national processing, the records associated with
the international design application may be made available as provided
under §§ 1.14(a)-(i). Under Hague Agreement Article 10(5), the
Office is to keep international design registrations confidential until
publication of the international registration by the International
Bureau. This provision does not alter the Office's long-standing
practice to make application files available to the public to satisfy
the constitutionally mandated quid pro quo requiring public disclosure
of patented inventions. See United States ex rel. Pollok v. Hall, 1889
Dec. Comm'r Pat. 582, 48 O.G. 1263 (D.C. 1888) (recognizing that the
rights of exclusivity and confidentiality stem from Article I, Section
8, clause 8, of the Constitution in holding that the Office must make
available to the public an abandoned application specifically
referenced in a patent); P.J. Federico, Commentary on the New Patent
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Act, reprinted in 75 J. Pat. & Trademark Off. Soc'y 161, 196-97 (1993)
(as background discussion to the addition of section 122 to the 1952
Patent Act, noting that for nearly 100 years the Office has had
regulations requiring that applications be maintained confidential
while recognizing public accessibility when an abandoned application is
referenced in a later issued patent); see also Metropolitan West Side
Elevated Railroad Co. et al. v. Siemans, 1898 Dec. Comm'r Pat. 220,
222, 85 O.G. 290 (Comm'r Pat. 1898); In re Reed Manufacturing Co., 1900
Dec. Comm'r Pat. 140, 92 O.G. 2001 (Comm'r Pat. 1900); Ex parte Lewis
and Unger, 1903 Dec. Comm'r Pat. 303, 106 O.G. 543 (Comm'r Pat. 1903);
In re Doman, 1905 Dec. Comm'r Pat. 101, 115 O.G. 804 (Comm'r Pat.
1905). As a designated office, the Office will establish a file for
national processing upon receipt of the published international
registration from the International Bureau. In such cases, the records
of the application file will be available pursuant to §§ 1.14(a)(ii)-
(iii). The provisions of § 1.14(j)(1) provide for access to such
international design applications maintained by the Office for national
processing, thus treating international design applications the same as
regular national applications.
Section 1.14(j)(2) provides that, with respect to an international
design application maintained by the Office in its capacity as an
office of indirect filing (§ 1.1002), the records of the
international design application may be available under § 1.14(j)(1)
when they are contained in the file of the international design
application maintained by the Office for national processing.
Also, if benefit of the international design application is claimed
under 35 U.S.C. 386(c) in a U.S. patent or published application, the
file contents of the application may be made available to the public,
or the file contents of the application, a copy of the application-as-
filed, or a specific document in the file of the application may be
provided to any person upon written request and payment of the
appropriate fee (§ 1.19(b)). The Office will place the application
filed with the Office as an office of indirect filing in the file used
for national processing as a designated office. Consequently, the
records maintained by the Office as an office of indirect filing may be
available where the records are part of the file maintained by the
Office as a designated office and are available pursuant to § 1.14(j)(1).
The records maintained by the Office as an office of the indirect
filing may also be available where benefit to the international design
application is claimed under 35 U.S.C. 386(c) in a U.S. patent or
published application. Under the provisions of 35 U.S.C. 386(c) and
35 U.S.C. 388, applicants may claim benefit to an international design
application that designates the United States provided the application
claiming benefit of the international design mapplication is filed before
the date of withdrawal, renunciation, cancellation, or abandonment of the
international application, either generally or as to the United States.
Section 1.16: Sections 1.16(b), (l), and (p) are amended to clarify
that the design application fees specified therein are applicable only
to design applications filed under 35 U.S.C. 111 (i.e., an application
filed under 35 U.S.C. chapter 16). The other provisions of § 1.16 are
not changed.
Section 1.17: Section 1.17(f) is amended to specify the fee for
filing a petition under § 1.1023 to review the filing date of an
international design application in the United States. Section 101(a)
of the PLTIA adds 35 U.S.C. 384, which provides that the filing date of
an international application in the United States is the effective
registration date (35 U.S.C. 384(a)), and authorizes the Director to
establish procedures, including the payment of a surcharge, to review
the filing date, which may result in a determination that the
application has a filing date in the United States other than the
effective registration date (35 U.S.C. 384(b)). 126 Stat. at 1529. The
review procedure authorized under 35 U.S.C. 384(b) is set forth in
§ 1.1023, discussed infra, which requires, inter alia, the fee set
forth in § 1.17(f). Under 35 U.S.C. 389(b), added by the PLTIA, all
questions of procedures regarding an international design application
designating the United States, unless required by the Hague Agreement
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and Hague Agreement Regulations, shall be determined as in the case of
applications filed under 35 U.S.C. chapter 16. 126 Stat. at 1530.
Accordingly, pursuant to the authority under 35 U.S.C. 389(b), the fee
for filing a petition to review the filing date of an international
design application under § 1.1023 is the same as the fee for filing
a petition to accord a filing date in a national application (see
§ 1.53(e)).
Section 1.17(g) is amended to specify the fee for filing a petition
under § 1.55(g) for acceptance of a belated certified copy of a foreign
application in a design application. See discussion of § 1.55(g).
Section 1.17(i)(1) is amended to remove the processing fee under
§ 1.55 for entry of a priority claim or certified copy of a foreign
application after payment of the issue fee. See discussion of § 1.55(g).
Section 1.17(m) is amended to set forth the fee for filing a
petition to excuse an applicant's failure to act within prescribed time
limits in an international design application. Section 101(a) of the
PLTIA adds 35 U.S.C. 387 to provide that an applicant's failure to act
within prescribed time limits in connection with requirements
pertaining to an international design application may be excused as to
the United States upon a showing satisfactory to the Director of
unintentional delay and under such conditions, including a requirement
for payment of the fee specified in 35 U.S.C. 41(a)(7), as may be
prescribed by the Director. 126 Stat. at 1530. The conditions for
excusing an applicant's failure to act within the prescribed time
limits in an international design application are set forth in
§ 1.1051, discussed infra. These requirements include, inter alia, the
requirement to pay the fee set forth in § 1.17(m). The fee set
forth in § 1.17(m) does not include a micro entity amount as this
fee is set under 35 U.S.C. 41(a)(7) as amended by section 202(b)(1)(A)
of the PLTIA, and not section 10(a) of the AIA. Section 10(b) of the
AIA provides that the micro entity discount applies to fees set under
section 10(a) of the AIA. See Public Law 112-29, 125 Stat. 284, 316-17
(2011). The Office will consider including a micro entity amount in
§ 1.17(m) in the event that patent fees are again set or adjusted
under section 10(a) of the AIA.
Section 1.17(t) is amended to specify the fee for filing a petition
under § 1.1052 to convert an international design application to a
design application under 35 U.S.C. chapter 16. See discussion of
§ 1.1052, infra. The petition fee is not being set pursuant to section
10(a) of the AIA. Rather, the Office is setting this fee in this
rulemaking pursuant to its authority under 35 U.S.C. 41(d)(2), which
provides that fees for all processing, services, or materials relating
to patents not specified in 35 U.S.C. 41 are to be set at amounts to
recover the estimated average cost to the Office of such processing,
services, or materials.
The Office uses an Activity Based Information ("ABI") methodology
to determine the estimated average costs (or expense) on a per process,
service, or material basis including the particular processes and
services addressed in this rulemaking. The ABI analysis includes
compiling the Office costs for a specified activity, including the
direct-expense (e.g., direct personnel compensation, contract services,
maintenance and repairs, communications, utilities, equipment,
supplies, materials, training, rent, and program-related information
technology ("IT") automation), an appropriate allocation of allocated
direct expense (e.g., rent, program-related automation, and personnel
compensation benefits such as medical insurance and retirement), and an
appropriate allocation of allocated indirect expense (e.g., general
financial and human resource management, nonprogram specific IT
automation, and general Office expenses). The direct expense for an
activity plus its allocated direct expense and allocated indirect
expense is the "fully burdened" expense for that activity. The
"fully burdened" expense for an activity is then divided by
production measures (number of that activity completed) to arrive at
the fully burdened per-unit cost for that activity. The cost for a
particular process is then determined by ascertaining which activities
occur for the process and how often each such activity occurs for the
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process. If historical activity level information is not available for
a particular fee, then ABI uses a cost build-up approach using
position, salary, and burdening rate data to determine the full cost of
work related to a particular fee. The ABI analysis in this rulemaking
is based upon fiscal year 2012 expense. The prospective fees are
calculated using the ABI expense and applying adjustment factors to
estimate the cost in fiscal year 2015 expense, as fiscal year 2015 may
be the next opportunity to consider whether to revisit the fees under
section 10(a) of the AIA. This analysis uses 2012 expense as a proxy
and adjusts for yearly inflation in the out-years.
The Office is estimating the fiscal year 2015 cost in this
rulemaking by using the change in the Consumer Price Index for All
Urban Consumers ("CPI-U") for fiscal years 2013, 2014, and 2015, as
the CPI-U is a reasonable basis for determining the change in Office
costs between fiscal year 2012 and fiscal year 2015. The individual
CPI-U increases for each fiscal year are multiplied together to obtain
a cumulative CPI-U from fiscal year 2013 through fiscal year 2015. The
actual CPI-U increase for fiscal year 2013 was 1.4 percent. The CPI-U
increase for fiscal year 2014 is forecasted to be 1.6 percent. The CPI-
U increase for fiscal year 2015 is forecasted to be 2.0 percent. See
Fiscal Year 2015 Analytical Perspectives,
http://www.whitehouse.gov/sites/default/files/omb/budget/fy2015/assets/
spec.pdf. Thus, the estimated fiscal year 2015 cost amounts are calculated
by multiplying the actual expense amount for fiscal year 2012 by 1.051
(1.014 multiplied by 1.016 multiplied by 1.020 equals 1.051). The estimated
fiscal year 2015 cost amounts are then rounded to the nearest ten
dollars by applying standard arithmetic rules so that the resulting fee
amounts will be convenient for international design application users.
The processing of a petition to convert an international design
application to a design application under 35 U.S.C. chapter 16 involves
review and preparation of a decision for the petition. An estimate of
the number of hours required for a GS-12, Step 5, attorney to review
the petition and draft a decision is two hours. The ABI analysis
indicates that the estimated fully burdened expense during fiscal
year 2012 to review and prepare a decision for the petition is $172
($86 fully burdened labor cost per hour multiplied by 2). Thus, the
Office estimates that the fiscal year prospective unit cost to review
the petition and draft a decision, using the estimated CPI-U increase
for fiscal years 2013, 2014, and 2015, is $181 ($172 multiplied by
1.051), which, when rounded to the nearest ten dollars, is a petition
fee for conversion of $180. Additional information concerning the
Office's analysis of the estimated fiscal year 2015 costs for
converting an international design application to a design application
under 35 U.S.C. chapter 16 is available upon request.
Section 1.18: Section 1.18(b)(3) is added to provide that an issue
fee paid through the International Bureau in an international design
application designating the United States shall be in the amount
specified on the Web site of WIPO, currently available at
http://www.wipo.int/hague, at the time the fee is paid. The option for
applicants to pay the issue fee through the International Bureau is
provided for in Hague Agreement Rule 12(3)(c) and is in lieu of paying
the issue fee under § 1.18(b)(1). Article 7(2) permits a
Contracting Party to declare that the prescribed designation fee shall
be replaced by an individual designation fee, whose amounts can be
changed in further declarations. The International Bureau accepts
payment only in Swiss currency (see Hague Agreement Rule 28(1)) and all
fee amounts specified on the WIPO Web site are in Swiss currency.
Section 1.25: Section 1.25(b) is amended to provide that
international design application fees may be charged to a deposit
account. International design application fees are set forth in § 1.1031.
Section 1.25(b) is also amended to provide that a general
authorization to charge fees in an international design application set
forth in § 1.1031 will only be effective for the transmittal fee
(§ 1.1031(a)). The international fees set forth in § 1.1031,
other than the transmittal fee set forth in § 1.1031(a), are not
required to be paid to the Office as an office of indirect filing. See
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§ 1.1031(d).
Section 1.27: The introductory text of § 1.27(c)(3) is amended
to provide that the payment, by any party, of the small entity first
part of the individual designation fee for the United States to the
International Bureau will be treated as a written assertion of
entitlement to small entity status. The change to § 1.27(c)(3) will
permit international design applicants to establish small entity status
for the purpose of the United States by payment to the International
Bureau of the small entity first part of the individual designation fee
for the United States.
Section 1.29: Section 1.29(e) is amended to provide that a micro
entity certification filed in an international design application may
be signed by a person authorized to represent the applicant under
§ 1.1041 before the International Bureau where the micro entity
certification is filed with the International Bureau.
Section 1.32: The introductory text of § 1.32(d) is amended to
add a reference to benefit claims under 35 U.S.C. 386(c), as provided
by the PLTIA. 126 Stat. 1529-30. Thus, a power of attorney from a prior
national application for which benefit is claimed under 35 U.S.C.
386(c) in a continuing international design application may have effect
in the continuing application if a copy of the power of attorney from
the prior application is filed in the continuing application, subject
to the conditions set forth in § 1.32(d).
Section 1.41: Section 1.41(f) is added to set forth the
inventorship in an international design application designating the
United States. Specifically, 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). Section 1.41(f) further provides
that any correction of inventorship must be pursuant to § 1.48.
Section 1.46: The introductory text of § 1.46(b) is amended to
provide that if an application entering the national stage under 35
U.S.C. 371 or a nonprovisional international design application is
applied for by a person other than the inventor under § 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, as provided under 35 U.S.C. 118),
that person must have been identified as the applicant for the United
States in the international stage of the international application or
as the applicant in the publication of the international registration
under Hague Agreement Article 10(3). The amendment does not change the
current practice with respect to national stage applications under 35
U.S.C. 371, where a person seeking to become an applicant under
§ 1.46 in the national phase was not named as an applicant for the United
States in the international phase. In such case, that person must
comply with the requirements under § 1.46(c), including the
requirements of §§ 3.71 and 3.73, to be an applicant in the
national phase. The amendment treats international design applications
in the same manner as international applications under the PCT. See
discussion of § 1.1011(b), infra (regarding who may be an applicant
for an international design application designating the United States).
Section 1.46(c) is amended to provide for the correction or update
in the name of the applicant in paragraph (c)(1) and a change in the
applicant in paragraph (c)(2). Section 1.46(c)(1) corresponds to the
first sentence of paragraph (c) of former § 1.46 and further
provides that a change in the name of the applicant under § 1.46
recorded pursuant to Hague Agreement Article 16(1)(ii) will be
effective to change the name of the applicant in a nonprovisional
international design application. 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 in a nonprovisional
international design application under § 1.46 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). Section
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1.46(c)(1) also clarifies that a correction or update of the name of
the applicant using an application data sheet must be made in
accordance with § 1.76(c)(2), which requires that the information
that is changed be indicated by underlining, strike-though, or
brackets, as appropriate.
Section 1.46(c)(2) corresponds to the second sentence of paragraph
(c) of former § 1.46 and provides that any request to change the
applicant under § 1.46 after an original applicant has been
specified must include an application data sheet under § 1.76
specifying the applicant in the applicant information section
(§ 1.76(b)(7)) in accordance with § 1.76(c)(2) and comply with
§§ 3.71 and 3.73. The language of § 1.46(c)(2) is amended
to clarify that any change in the applicant under § 1.46 once an
applicant has been specified requires identification of the new
applicant in an application data sheet in accordance with § 1.76(c)(2)
and comply with §§ 3.71 and 3.73. There was some confusion with respect
to the proper way to change the applicant where (1) the inventor was the
original applicant or (2) the applicant is being changed from a second
(or subsequent) applicant to a new applicant. Specifying the applicant in
an application filed under 35 U.S.C. 111 may be accomplished
either by the person who has made the application or by the Office
where the applicant has not been specified by the time the filing
receipt is issued. The Office previously indicated that the inventors
may be considered the applicant where an applicant has not otherwise
been specified and that compliance with §§ 3.71 and 3.73 is
required for any change in the applicant from the inventors. See
Changes To Implement the Inventor's Oath or Declaration Provisions of
the Leahy-Smith America Invents Act, 77 FR 48775, 48785 (Aug. 14,
2012). In an application entering the national stage under 35 U.S.C.
371, the original applicant specified is the person identified as the
applicant for the United States in the international stage of the
international application. 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). Section 1.46 does not govern
changes in inventorship. Rather, any request to add or delete an
inventor, or to correct or update the name of an inventor, must be made
in accordance with the provisions of § 1.48.
Section 1.53: The introductory text of § 1.53(b) is amended to
include a reference to 35 U.S.C. 386(c), as added by the PLTIA. Thus,
§ 1.53(b) provides that a continuing application, which may be a
continuation, divisional, or continuation-in-part application, may be
filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or
386(c) and § 1.78.
Section 1.53(c)(4) is amended to include a reference to 35 U.S.C.
386(a) and 386(c), as added by the PLTIA, thus making clear that a
provisional application is not entitled to a right of priority or to
the benefit of the filing date of an international design application.
Section 1.53(d)(1)(ii) is amended to provide that a continued
prosecution application ("CPA") of a prior nonprovisional application
may be filed where the prior nonprovisional application is a design
application, but not an international design application, that is
complete as defined by § 1.51(b), except for the inventor's oath or
declaration if the application is filed on or after September 16, 2012,
and the prior nonprovisional application contains an application data
sheet meeting the conditions specified in § 1.53(f)(3)(i).
Section 1.55: Section 1.55 is revised to provide for a right of
priority under 35 U.S.C. 386 with respect to international design
applications and for other matters, as discussed below. In addition, as
to the applicability dates for certain provisions in existing rules,
this final rule makes those applicability dates more accessible by
stating them directly in the body of those rules. In particular, the
requirements of § 1.55 set forth in the following final rules have
been consolidated in this final rule: Changes To Implement the Patent
Law Treaty, 78 FR 62368, 62399 (Oct. 21, 2013) (changes to § 1.55
made therein applicable to any patent application filed before, on, or
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after December 18, 2013, except for the changes to § 1.55(f), which
is applicable to patent applications filed under 35 U.S.C. 111 on or
after December 18, 2013, and international patent applications in which
the national stage commenced under 35 U.S.C. 371 on or after December
18, 2013); Changes To Implement the First Inventor To File Provisions
of the Leahy-Smith America Invents Act, 78 FR 11024 (Feb. 14, 2013)
(applicable to any application filed under 35 U.S.C. 111 or 363 on or
after March 16, 2013); Changes To Implement the Inventor's Oath or
Declaration Provisions of the Leahy-Smith America Invents Act, 77 FR
48776 (Aug. 14, 2012) (applicable to patent applications filed under 35
U.S.C. 111(a) or 363 on or after September 16, 2012); and Changes to
Implement Eighteen-Month Publication of Patent Applications, 65 FR
57024 (Sept. 20, 2000) (applicable to patent applications filed on or
after November 29, 2000).
Section 1.55(a) is amended to provide that 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. 386(a)
and (b) and this section.
Section 1.55(b) is amended to clarify which application is the
"subsequent application" for purposes of § 1.55. Section 1.55(b)
provides that the nonprovisional application must be: 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 the section (a subsequent application); or 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 the section. Thus, the subsequent application in
either § 1.55(b)(1) or (b)(2) is the application required to be
filed within the period set forth in § 1.55(b)(1). For purposes of
§ 1.55(b)(2), the subsequent application may be a nonprovisional
application, an international application designating the United
States, or international design application designating the United
States.
Section 1.55(c) is amended to provide for restoration of priority
claims under 35 U.S.C. 386(a) or (b). Restoration of the right of
priority is provided for under 35 U.S.C. 119(a), as amended by title II
of the PLTIA. 126 Stat. 1534. Section 1.55 was previously amended to
implement the provisions of 35 U.S.C. 119, as amended by title II of
the PLTIA. See Changes To Implement the Patent Law Treaty, 78 FR 62368,
62399 (Oct. 21, 2013). Under 35 U.S.C. 386(a) and (b), entitlement to
priority to a prior application shall be "[i]n accordance with the
conditions and requirements of subsections (a) through (d) of section
119 and section 172 . . . ." Consequently, § 1.55(c) is amended in
this final rule to provide that restoration of the right of priority is
available for priority claims under 35 U.S.C. 386(a) and (b).
Section 1.55(c) is also amended to provide that a petition to
restore the right of priority filed on or after May 13, 2015 (the
effective date of this final rule) 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. The Office has received inquiries from the public asking
in which application the petition to restore the right of priority
under § 1.55(c) must be filed where there is a chain of
applications claiming benefit under 35 U.S.C. 120, 121, or 365(c) to
the application for which filing was unintentionally delayed. The
amendment to § 1.55(c) is intended to provide clarification by
requiring that, on or after May 13, 2015, a petition to restore the
right of priority under this paragraph 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. If a petition under § 1.55(c) to restore the right of
priority is granted, a further petition under § 1.55(c) is not
required in an application entitled to claim the benefit under 35
U.S.C. 120, 121, 365(c), or 386(c) of the subsequent application for
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which the right of priority was restored.
Requiring the filing of the petition under § 1.55(c) in the
earliest nonprovisional application claiming benefit under 35 U.S.C.
120, 121, 365(c), or 386(c) to the subsequent application, when the
subsequent application is not a nonprovisional application, is
appropriate because the Office may not have an application file
established for the subsequent application. This would occur, for
example, where an international application designating the United
States was filed in a foreign Receiving office and the applicant files
a continuation of the international application under 35 U.S.C. 111(a)
rather than entering the national phase under 35 U.S.C. 371.
Nevertheless, the statement required under § 1.55(c)(3) must still
relate to the unintentional delay in filing the subsequent application,
i.e., the international application, in such instance.
Section 1.55(e) is amended to provide that unless such claim is
accepted in accordance with the provisions of § 1.55(e), any claim
for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b),
or 386(a) or 386(b) not presented in the manner required by § 1.55(d)
or (m) during pendency and within the time period provided by
§ 1.55(d) (if applicable) is considered to have been waived.
Section 1.55(e) is also amended to provide for the acceptance of a
delayed priority claim considered to have been waived under § 1.55
and to provide for acceptance of an unintentionally delayed priority
claim under 35 U.S.C. 386(a) or 386(b).
35 U.S.C. 119(b), amended in section 4503 of the American Inventors
Protection Act of 1999 (AIPA), provides in paragraph (b)(1) that "[n]o
application for patent shall be entitled to this right of priority
unless a claim is filed in the Patent and Trademark Office, identifying
the foreign application by specifying the application number on that
foreign application, the intellectual property authority or country in
or for which the application was filed, and the date of filing the
application, at such time during the pendency of the application as
required by the Director." See Pub. L. 106-113, 113 Stat. 1501 (1999).
35 U.S.C. 119(b), amended under the AIPA, further provides, in
paragraph (b)(2) that "[t]he Director may consider the failure of the
applicant to file a timely claim for priority as a waiver of any such
claim. The Director may establish procedures, including the requirement
for payment of the fee specified in section 41(a)(7), to accept an
unintentionally delayed claim under this section." Id. Section 4503 of
the AIPA applies "only to applications (including international
applications designating the United States) filed on or after [November
29, 2000]." See Intellectual Property and High Technology Technical
Amendments Act of 2002, Public Law 107-273, 116 Stat. 1757. 35 U.S.C.
119(b)(2) was subsequently amended under title II of the PLTIA to
provide for the payment of the fee specified in 35 U.S.C. 41(a)(7). 126
Stat. 1536. Pursuant to the authority under 35 U.S.C. 119(b)(2), the
Office established procedures to accept an unintentionally delayed
claim for priority in utility applications. See Changes to Implement
Eighteen-Month Publication of Patent Applications, 65 FR 57024 (Sept.
20, 2000). However, no procedures were established for accepting an
unintentionally delayed priority claim in a design application. The
change to § 1.55(e) makes the petition procedure therein applicable
to design applications, thus according design applicants the same
remedy available to applicants in utility applications.
Section 1.55(f) is amended to provide for an exception under
§ 1.55(h) to the requirement for a certified copy of the prior foreign
application. See discussion of § 1.55(h), infra.
Section 1.55(g) is amended to provide that 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
§ 1.55(e) or (f) 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. MPEP 216.01 provides for the submission of a
request for certificate of correction under § 1.323 along with,
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where applicable, a petition under § 1.55(e), to perfect a claim
for priority under 35 U.S.C. 119(a)-(d) and (f) in a patent under
certain conditions, including the case where the certified copy was not
in the application that issued as a patent but was filed in a parent
application. Where the conditions set forth in MPEP 216.01 do not
apply, perfection of the claim for foreign priority generally required
the filing of a reissue application. See MPEP 1417. Section 1.55(g), as
amended in this final rule, eliminates the need in many instances to
file a reissue application in order to perfect a claim for foreign
priority by allowing the certified copy of the foreign application
required under § 1.55 to be filed in the application with a
petition under § 1.55(f) or as provided in § 1.55(g), together
with the fee set forth in § 1.17(g), that includes a showing of
good and sufficient cause for the delay in filing the certified copy of
the foreign application. In addition, where a priority claim under
§ 1.55 was not timely made, § 1.55(g) as amended in this final
rule allows the priority claim and certified copy required under
§ 1.55 to be filed pursuant to a petition under § 1.55(e) even if the
application is not pending (e.g., a patented application). Furthermore,
where the priority claim required under § 1.55 was timely filed in
the application but was not included on the patent because the
requirement under § 1.55 for a certified copy was not satisfied,
the patent may be corrected to include the priority claim via a
certificate of correction under 35 U.S.C. 255 and § 1.323,
accompanied by a grantable petition under § 1.55(f) or (g), without
the need for a petition under § 1.55(e) to accept an
unintentionally delayed priority claim.
Section 1.55(g) is also amended to remove the requirement for the
processing fee set forth in § 1.17(i) where the claim for priority
or the certified copy of the foreign application is filed after the
date the issue fee is paid. Section 1.55(g), however, retains the
provision of former § 1.55(g) that if the claim for priority or the
certified copy 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.
Section 1.55(h) provides that the requirement in § 1.55(f) and
(g) 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 in the reissue
application as containing the certified copy. Section 1.55(h) further
provides that 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. The exception under
§ 1.55(h) to the requirement to provide the certified copy of the foreign
application is in accord with long-standing Office policy. See, e.g.,
MPEP 215(III) (9th ed., Mar. 2014).
Sections 1.55(i)-(l) in this final rule correspond to the
provisions of paragraphs (h)-(k) of former § 1.55. Section
1.55(i)(4) is also amended, consistent with Office practice, to provide
that the request under that paragraph may be filed with a petition
under § 1.55(f). See AIA Frequently Asked Questions, Question
FITF3500,
http://www.uspto.gov/aia_implementation/faqs_first_inventor.jsp.
Section 1.55(j)(2) is amended to provide for a time period to submit
the copy of the foreign application and separate cover sheet in a
national stage application to include 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)) or four months from the date of the initial
submission under 35 U.S.C. 371 to enter the national stage. Section
1.55(j)(2) is also amended to provide for the submission of the copy of
the foreign application and separate cover sheet with a petition under
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§ 1.55(f). Id. Nonprovisional international design applications are
also excluded from the transition provision of § 1.55(k), as such
applications can only be filed on or after the date the treaty takes
effect as to the United States.
Section 1.55(m) sets forth the time for filing a priority claim and
certified copy of a foreign application in an international design
application designating the United States. Section 1.55(m) provides
that 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. Section 1.55(m) further
provides that 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 § 1.55(g).
Section 1.55(o) provides, in accordance with the effective date
provision of title I of the PTLIA, that 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. 126 Stat. 1532.
Section 1.55(p) provides that 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). Section
1.55(p) in this final rule corresponds to the provisions contained in
paragraphs (b) and (l) of former § 1.55 and further provide that
the time periods are subject to Hague Agreement Rule 4(4). Rule 4(4)
provides that if a period expires on a day on which the International
Bureau or the office concerned is not open to the public, the period
shall expire on the first subsequent day on which the International
Bureau or the office concerned is open to the public. Section 101(a) of
the PLTIA adds 35 U.S.C. 386(b), which provides: "[i]n 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
. . . ." 126 Stat. at 1529. Thus, pursuant to 35 U.S.C. 386(b), the
priority period in an international design application designating the
United States is subject to Rule 4(4).
Section 1.57: Section 1.57(a)(4) is amended to change the reference
from "§ 1.55(h)" to "§ 1.55(i)" in light of the changes to
§ 1.55 in this final rule. The introductory text of § 1.57(b)
is amended to include a reference to priority and benefit claims to
international design applications. Section 101(a) of the PLTIA adds 35
U.S.C. 386 to provide for a right of priority or benefit with respect
to an international design application. 126 Stat. at 1529-30.
Accordingly, the introductory text of § 1.57(b) is amended to
provide for incorporation by reference to an inadvertently omitted
portion of the specification or drawings based on a claim for priority
under § 1.55 or benefit claim under § 1.78 to an international
design application present upon filing. Section 1.57(b)(4) is also
added to provide that any amendment to an international design
application pursuant to § 1.57(b)(1) shall be effective only as to
the United States and shall have no effect on the filing date of the
application and that no request under § 1.57(b) to add the
inadvertently omitted portion of the specification or drawings in an
international design application will be acted upon by the Office prior
to the international design application becoming a nonprovisional
application. Section 1.57(b)(4) is similar to § 1.57(b)(2), which
applies to international applications.
Section 1.63: Section 1.63(d)(1) is amended to add references to
§ 1.1021(d) and 35 U.S.C. 386(c) so as to provide that a newly
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executed oath or declaration under § 1.63, or substitute statement
under § 1.64, is not required under §§ 1.51(b)(2) and
1.53(f), or under §§ 1.497 and 1.1021(d), for an inventor in a
continuing application that claims the benefit under 35 U.S.C. 120,
121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-
filed application, provided that an oath or declaration in compliance
with this section, or substitute statement under § 1.64, was
executed by or with respect to such inventor and was filed in the
earlier-filed application and a copy of such oath, declaration, or
substitute statement showing the signature or an indication thereon
that it was executed is submitted in the continuing application. Title
I of the PLTIA amends 35 U.S.C. 115(g)(1) (as amended by the Leahy-
Smith America Invents Act) by adding a reference to benefit claims
under 35 U.S.C. 386(c). See 126 Stat. 1531. The amendment to § 1.63(d)(1)
is consistent with this statutory change.
Section 1.76: Section 1.76(a) is amended to provide for the filing
of an application data sheet in a nonprovisional international design
application and to include a reference to priority and benefit claims
under 35 U.S.C. 386 with respect to international design applications.
Section 1.76(b)(5) is amended to provide for domestic benefit
information pertaining to benefit claims under 35 U.S.C. 386(c).
Section 1.76(b)(6) is amended to provide that the foreign priority
information section of the application data sheet may include the
intellectual property authority rather than country of filing. This
change is for consistency with the requirements of 35 U.S.C. 119(b) and
§ 1.55.
Section 1.78: Section 1.78 is amended, as discussed below, to
provide for benefit claims under 35 U.S.C. 386(c) with respect to
international design applications designating the United States. In
addition, as to the applicability dates for certain provisions in
existing rules, this final rule makes those applicability dates more
accessible by stating them directly in the body of those rules. In
particular, the requirements of § 1.78 set forth in the following
final rules have been consolidated in this final rule: Changes To
Implement the Patent Law Treaty, 78 FR 62368, 62399 (Oct. 21, 2013)
(applicable to any patent application filed before, on, or after
December 18, 2013); Changes To Implement the First Inventor To File
Provisions of the Leahy-Smith America Invents Act, 78 FR 11024 (Feb.
14, 2013) (applicable to any application filed under 35 U.S.C. 111 or
363 on or after March 16, 2013); Changes To Implement the Inventor's
Oath or Declaration Provisions of the Leahy-Smith America Invents Act,
77 FR 48776 (Aug. 14, 2012) (applicable to patent applications filed
under 35 U.S.C. 111(a) or 363 on or after September 16, 2012); and
Changes to Implement Eighteen-Month Publication of Patent Applications,
65 FR 57024 (Sept. 20, 2000) (applicable to patent applications filed on
or after November 29, 2000).
Section 1.78(a)(1) is amended to clarify which application is the
"subsequent application" for purposes of § 1.78. Section
1.78(a)(1) provides that the nonprovisional application, other than for
a design patent, or international application designating the United
States must be: Filed not later than twelve months after the date on
which the provisional application was filed, subject to paragraph (b)
of the section (a subsequent application); or entitled to claim the
benefit under 35 U.S.C. 120, 121, or 365(c) of a subsequent application
that was filed within the period set forth in paragraph (a)(1)(i) of
the section. Thus, the subsequent application in either § 1.78(a)(1)(i)
or (a)(1)(ii) is the application required to be filed within the period
set forth in § 1.78(a)(1)(i). For purposes of § 1.78(a)(1)(ii), the
subsequent application may be a nonprovisional application or an
international application designating the United States.
Section 1.78(b) is amended to provide, in paragraph (b)(1), that a
petition to restore the benefit of a provisional application under this
paragraph filed on or after May 13, 2015, must be filed in the
subsequent application. A similar change was made to § 1.55. See
discussion of § 1.55(c), supra. If a petition under § 1.78(b)
to restore benefit of a provisional application is granted, a further
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petition under § 1.78(b) is not required in an application entitled
to claim the benefit under 35 U.S.C. 120, 121, or 365(c) of the
subsequent application for which benefit of the provisional application
was restored.
The introductory text of § 1.78(d) is amended to provide for
benefit claims under 35 U.S.C. 386(c) with respect to international
design applications designating the United States. Section
1.78(d)(1)(ii) provides that the prior-filed application to which
benefit is claimed may be an international design application entitled
to a filing date in accordance with § 1.1023 and designating the
United States.
Section 1.78(d)(2) is amended to provide that the reference
required under this paragraph to a prior filed international design
application designating the United States may identify the
international design application by international registration number
and filing date under § 1.1023. Where the international design
application becomes a nonprovisional application, which occurs when the
Office receives a copy of the international registration from the
International Bureau pursuant to Article 10 of the Hague Agreement (see
§ 1.9), the required reference can identify the nonprovisional
application number instead of the international registration number and
filing date under § 1.1023. Identifying the prior international
design application by the nonprovisional application number is
preferable to the Office and simpler for applicants.
Section 1.78(d)(3) is amended to provide, in paragraph (d)(3)(i),
that the reference required by 35 U.S.C. 120 and § 1.78(d)(2) must
be submitted during the pendency of the later-filed application.
Section 1.78(d)(3)(ii) sets forth the time period for submitting the
reference required under 35 U.S.C. 120 and § 1.78(d)(2) in a later-
filed application under 35 U.S.C. 111(a) (excluding design
applications) and in a nonprovisional application entering the national
stage from an international application under 35 U.S.C. 371 and
substantially corresponds to the provisions contained in paragraph
(d)(3) of former § 1.78. Section 1.78(d)(3)(iii) provides that,
except as provided in § 1.78(e), the failure to timely submit the
reference required by 35 U.S.C. 120 and § 1.78(d)(2) is considered
a waiver of any benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to
the prior-filed application. The changes to § 1.78(d)(3) in this
final rule would make the procedures under § 1.78(e) to accept an
unintentionally delayed benefit claim applicable to design applications
and thus accord applicants in design applications the same remedy for
accepting an unintentionally delayed benefit claim that is available to
applicants in utility applications. The establishment of such
procedures is provided for in 35 U.S.C. 120, as amended in section 4503
of the AIPA. See discussion of § 1.55(e), supra (regarding
acceptance of an unintentionally delay claim of priority in a design
application).
Section 1.78(d)(6) is amended to exclude nonprovisional
international design applications, as such applications can only be
filed on or after the date the Hague Agreement takes effect as to the
United States.
Section 1.78(d)(7) is added to provide that 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. The authority to require a
certified copy of an international design application that designates
the United States but did not originate in the United States, and an
English translation thereof, is provided in 35 U.S.C. 386(c). Similar
authority with respect to international applications that designate the
United States but do not originate in the United States is provided in
35 U.S.C. 365(c). Since international applications are published under
PCT Article 21(2) and international design applications are published
under Hague Agreement Article 10(3), the Office would not ordinarily
require a certified copy of the international application or
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international design application pursuant to § 1.78(d)(7). Rather,
the Office foresees use of § 1.78(d)(7) primarily in instances
where the international application or international design application
did not publish under the respective treaty or where there is a
question as to the content of the disclosure of the application as of
its filing date and the certified copy and any English translation are
needed to determine entitlement to the benefit of the filing date of
the international application or international design application in
order to, for example, overcome a prior art reference.
Section 1.78(e) is amended to provide for acceptance of a delayed
benefit claim under 35 U.S.C. 386(c) to a prior filed international
application designating the United States pursuant to the petition
procedure set forth therein.
Section 1.78(i) is added to provide that where a petition under
paragraphs (b), (c), or (e) of this section is required in an
international application that was not filed with the United States
Receiving Office and is not a nonprovisional application, then such
petition may be filed in the earliest nonprovisional application that
claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the
international application and will be treated as being filed in the
international application. This provision is added because, in such
instances, the Office does not have an application file established for
the international application.
Section 1.78(j) provides, in accordance with the effective date
provision of title I of the PTLIA, that 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. 126 Stat. 1532.
Section 1.78(k) in this final rule corresponds to the provisions
contained in paragraphs (h) and (a)(1) of former § 1.78 and further
provides that the time periods are subject to Hague Agreement Rule
4(4).
Section 1.84: Section 1.84(a)(2) is amended to eliminate the
requirement for a petition and fee set forth in § 1.17(h) to accept
color drawings or photographs in design applications. The requirements
that the design application include the number of sets of color
drawings required by § 1.84(a)(2)(ii) and that the specification
contain the reference to the color drawings or photographs set forth in
§ 1.84(a)(2)(iii) are maintained. The reference set forth in
§ 1.84(a)(2)(iii) provides notice to the public should the design
application issue as a patent that the patented design is in color. In
addition, the petition requirement is maintained for utility patent
applications. Section 1.84(a)(2) is also amended to reflect current
requirements for color drawings submitted through EFS-Web.
See Legal Framework for Electronic Filing System - Web (EFS-Web), 74
FR 55200, 55208 (Oct. 27, 2009) ("The requirement for three (3) sets
of color drawings under 37 CFR 1.84(a)(2)(ii) is not applicable to
color drawings submitted via EFS-Web. Therefore, only one set of such
color drawings is necessary when filing via EFS-Web.").
Section 1.84(y) is amended to include a cross reference to
international design application reproductions in § 1.1026.
Section 1.85: Section 1.85(c) is amended to provide that if an
amended drawing submitted under § 1.121(d) in a nonprovisional
international design application does not comply with § 1.1026 at
the time an application is allowed, the Office may notify the applicant
in a notice of allowability and set a three-month period of time from
the mail date of the notice of allowability within which the applicant
must file a corrected drawing to avoid abandonment.
Section 1.97: Section 1.97(b) is amended by revising paragraphs
(b)(3) and (b)(4), and adding a new paragraph (b)(5) to provide that an
information disclosure statement may be filed within three months of
the date of publication of the international registration under Hague
Agreement Article 10(3) in an international design application. An
information disclosure statement may also be submitted with the
international design application. See Hague Agreement Rule 7(5)(g)
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("The international application may be accompanied by a statement that
identifies information known by the applicant to be material to the
eligibility for protection of the industrial design concerned.").
Section 1.105: The introductory text of § 1.105(a)(1) is
amended to make a requirement for information under § 1.105
applicable to international design applications and to clarify that the
requirement under § 1.105 is applicable to a reexamination
proceeding ordered as a result of a supplemental examination
proceeding.
Section 1.109: Section 1.109 is revised such that its definition of
"effective filing date" is no longer restricted only to first
inventor to file applications, but applies regardless of whether an
application is a first to invent or a first inventor to file
application. This does not change or affect the meaning of effective
U.S. filing date when used in the MPEP to discuss the treatment of
first to invent (pre-AIA) applications or the order of examination.
Section 1.109(a)(2) is also amended to include, for purposes of
determining the "effective filing date" for a claimed invention in a
patent or application for patent (other than a reissue application or
reissued patent), a right of priority or benefit of an earlier filing
date under 35 U.S.C. 386. Title I of the PLTIA amends 35 U.S.C.
100(i)(1)(B) (as amended by the Leahy-Smith America Invents Act) to
include, within the meaning of "effective filing date" for a claimed
invention in a patent or application, the filing date of the earliest
application for which the patent or application is entitled, as to such
invention, to a right of priority or the benefit of an earlier filing
date under 35 U.S.C. 386. See 126 Stat. 1531. The amendment to
§ 1.109(a)(2) is consistent with the change to 35 U.S.C. 100(i)(1)(B) as
amended by title I of the PLTIA.
Section 1.114: 35 U.S.C. 132(b), which provides for the request for
continued examination practice set forth in § 1.114, was added to
title 35, United States Code, in section 4403 of the American Inventors
Protection Act of 1999 (AIPA). See Public Law 106-113, 113 Stat. 1501,
1501A-561 (1999). With respect to international applications, section
4405(b)(1) of the AIPA provides that 35 U.S.C. 132(b) applies to
"applications complying with section 371 of title 35, United States
Code, that resulted from international applications filed on or after
June 8, 1995." See 113 Stat. at 1501A-561. The Office recently revised
its rules to permit applicants, including applicants in national stage
applications under 35 U.S.C. 371, to postpone filing the inventor's
oath or declaration until the application is otherwise in condition for
allowance (subject to certain conditions). See Changes to Implement the
Inventor's Oath or Declaration Provisions of the Leahy-Smith America
Invents Act, 77 FR 48776 (Aug. 14, 2012) (final rule). An international
application, however, does not comply with the requirements of 35
U.S.C. 371 until the application includes the inventor's oath or
declaration. See 35 U.S.C. 371(c)(4); see also 77 FR at 48777, 48780,
48795 (explaining that the inventor's oath or declaration is still
required for a PCT international application to comply with 35 U.S.C.
371, notwithstanding the changes permitting applicants to postpone
filing the inventor's oath or declaration until after a PCT
international application enters the national stage). Thus, the Office
is revising § 1.114(e)(3) to clarify that the request for continued
examination practice set forth in § 1.114 added in section 4403 of
the AIPA does not apply to an international application until the
international application complies with 35 U.S.C. 371 (which requires
the filing of the inventor's oath or declaration in the international
application, as well as, for example, the basic national fee and an
English language translation of the international application if filed
in another language).
Section 1.114(e) also is amended to provide that a request for
continued examination may not be filed in an international design
application, as there is no statutory provision to permit the filing of
a request for continued examination in an international design
application. Section 4405(b)(2) of the AIPA specifically excludes
design applications under 35 U.S.C. chapter 16 from the provisions of
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35 U.S.C. 132(b), and there is no provision in the AIPA, PLTIA, or
other legislative act making 35 U.S.C. 132(b) applicable to
international design applications.
Section 1.121: Section 1.121(d) is amended to provide for
amendments to the drawings in a nonprovisional international design
application and requires, inter alia, that any changes to the drawings
be in compliance with §§ 1.84(c) and 1.1026.
Section 1.130: Section 1.130(d) is amended to refer to the
definition of "effective filing date" in § 1.109, rather than the
definition of "effective filing date" in 35 U.S.C. 100(i). The
definition of "effective filing date" in § 1.109 and 35 U.S.C.
100(i) are the same, and other rules of practice refer to definition of
"effective filing date" in § 1.109. See §§ 1.78, 1.110.
Section 1.130(d) is also amended to include a reference to 35 U.S.C.
386(c), added by title I of the PLTIA, concerning domestic benefit
claims with respect to international design applications that designate
the United States. Pursuant to 35 U.S.C. 386(c), an application must
comply with the conditions and requirements of 35 U.S.C. 120, which
include, inter alia, a requirement that the application contain a specific
reference to the earlier application whose filing date is claimed.
Section 1.131: Section 1.131(d) is amended to refer to the
definition of "effective filing date" in § 1.109, rather than the
definition of "effective filing date" in 35 U.S.C. 100(i). The
definition of "effective filing date" in § 1.109 and 35 U.S.C.
100(i) are the same, and other rules of practice refer to definition of
"effective filing date" in § 1.109. See §§ 1.78, 1.110.
Section 1.131(d) is also amended to include a reference to 35 U.S.C.
386(c), added by title I of the PLTIA, concerning domestic benefit
claims with respect to international design applications that designate
the United States.
Section 1.137: Section 1.137(d)(1)(ii) and (d)(2) are amended to
include a reference to 35 U.S.C. 386(c) concerning domestic benefit
claims with respect to international design applications that designate
the United States.
Section 1.155: Section 1.155 is amended to provide for expedited
examination of an international design application that designates the
United States. To qualify for expedited examination, § 1.155(a)(1)
provides that the international design application must have been
published pursuant to Hague Agreement Article 10(3).
Section 1.175: The introductory text of § 1.175(f)(1) is
amended to include a reference to 35 U.S.C. 386(c) concerning domestic
benefit claims with respect to international design applications that
designate the United States.
Section 1.211: Section 1.211(b) is amended to provide that an
international design application under 35 U.S.C. chapter 38 shall not
be published by the Office under § 1.211. International
registrations are published by the International Bureau pursuant to
Article 10(3) of the Hague Agreement. The international registration
includes the data contained in the international design application and
any reproduction of the industrial design. See Hague Agreement Rule
15(2).
Section 1.312: The Office has decided not to amend § 1.312 in
this final rule. Pursuant to Rule 29 of the Hague Agreement, where the
second part of the individual U.S. designation fee (i.e., the issue
fee) is paid to the International Bureau, the International Bureau is
to "immediately upon its receipt" credit payment of such fee to the
Office. The proposed rule would create an administrative burden in
international design applications where the issue fee was paid to the
International Bureau in order to determine the appropriate date to be
used for amendment entry purposes. The Office may reconsider the need
for such a provision after it gains more experience with the crediting
of fees by the International Bureau to the Office.
A new subpart I is added to provide for international and national
processing of international design applications.
Section 1.1001: Section 1.1001 is added to include definitions of
terms used in subpart I.
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Section 1.1002: Section 1.1002 is added to indicate the major
functions of the USPTO as an office of indirect filing. These include:
(1) Receiving and according a receipt date to international design
applications; (2) collecting and, when required, transmitting fees for
processing international design applications; (3) determining
compliance with applicable requirements of part 5 of chapter I of title
37 of the CFR; and (4) transmitting an international design application
to the International Bureau, unless prescriptions concerning national
security prevent the application from being transmitted.
Section 1.1003: Section 1.1003 is added to indicate the major
functions of the USPTO as a designated office. These include: (1)
Accepting for national examination international design applications
that satisfy the requirements of the Hague Agreement and Regulations;
(2) performing an examination of the international design application
in accordance with 35 U.S.C. chapter 16; and (3) communicating the
results of examination to the International Bureau.
Section 1.1004: Section 1.1004 is added to indicate the major
functions of the International Bureau. These include: (1) Receiving
international design applications directly from applicants and
indirectly from an office of indirect filing; (2) collecting required
fees and crediting designation fees to the accounts of the Contracting
Parties concerned; (3) reviewing international design applications for
compliance with prescribed requirements; (4) translating international
design applications into the required languages for recordation and
publication; (5) registering the international design in the
International Register where the international design application
complies with the applicable requirements; (6) publishing international
registrations in the International Designs Bulletin; and (7) sending
copies of the publication of the international registration to each
designated office.
Section 1.1005: Section 1.1005 is added, pursuant to the Paperwork
Reduction Act of 1995, to display the currently valid Office of
Management and Budget control number for the collection of information
in 37 CFR part 1, subpart I. Section 1.1005(a) provides that pursuant
to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.), the
collection of information in this subpart has been reviewed and
approved by the Office of Management and Budget under control number
0651-0075. Section 1.1005(b) provides that notwithstanding any other
provision of law, no person is required to respond to nor shall a
person be subject to a penalty for failure to comply with a collection
of information subject to the requirements of the Paperwork Reduction
Act unless that collection of information displays a currently valid
Office of Management and Budget control number. Section 1.1005(b)
further provides that § 1.1005 constitutes the display required by
44 U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of
information under Office of Management and Budget control number 0651-
0075.
Section 1.1011: Section 1.1011(a) is added to specify who may file
an international design application through the USPTO. Under Article 3,
any person that is a national of a State that is a Contracting Party or
a State member of an intergovernmental organization that is a
Contracting Party, or that has a domicile, a habitual residence, or a
real and effective industrial or commercial establishment in the
territory of a Contracting Party, shall be entitled to file an
international application. Under Article 4(1), the international
application may be filed, at the option of the applicant, either
directly with the International Bureau or through the office of the
applicant's Contracting Party (i.e., an office of indirect filing).
Title I of the PLTIA adds 35 U.S.C. 382(a), which provides: "[a]ny
person who is a national of the United States, or has a domicile, a
habitual residence, or a real and effective industrial or commercial
establishment in the United States, may file an international design
application by submitting to the Patent and Trademark Office an
application in such form, together with such fees, as may be prescribed
by the Director." 126 Stat. at 1528. In accordance with 35 U.S.C.
382(a) and Articles 3 and 4(1), § 1.1011(a) specifies that only
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persons who are nationals of the United States or who have a domicile,
a habitual residence, or a real and effective industrial or commercial
establishment in the territory of the United States may file international
design applications through the United States Patent and Trademark Office.
Section 1.1011(b) is added to provide that, although the USPTO will
accept international design applications filed by any person referred
to in § 1.1011(a), an international design application designating
the United States may be refused by the Office as a designated office
if the applicant is not a person qualified under 35 U.S.C. chapter 11
to be an applicant. The PLTIA does not distinguish a person qualified
to be an applicant for an international design application designating
the United States from a person qualified to be an applicant in a
national design application under 35 U.S.C. 171-173. See section 101(a)
of the PLTIA, which adds: 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."); 35 U.S.C. 382(c) ("Except as otherwise
provided in this chapter, the provisions of chapter 16 shall apply.");
and 35 U.S.C. 383 ("In addition to any requirements pursuant to
chapter 16, the international design application shall contain. . . .").
126 Stat. at 1528-30.
Section 1.1012: Section 1.1012 is added to provide that, in order
to file an international design application through the United States
Patent and Trademark Office as an office of indirect filing, the United
States must be applicant's Contracting Party. Pursuant to Article 4, an
international design application may be filed through the office of the
"applicant's Contracting Party." The term "applicant's Contracting
Party" is defined in Article 1(xiv) as "the Contracting Party or one
of the Contracting Parties from which the applicant derives its
entitlement to file an international application by virtue of
satisfying, in relation to that Contracting Party, at least one of the
conditions specified in Article 3; where there are two or more
Contracting Parties from which the applicant may, under Article 3,
derive its entitlement to file an international application,
`applicant's Contracting Party' means the one which, among those
Contracting Parties, is indicated as such in the international
application." The indication of applicant's Contracting Party may be
made in Box 4 of the application for international registration form
(DM/1 form).
Section 1.1021: Section 1.1021 is added to specify the contents of
the international design application.
Section 1.1021(a) specifies the mandatory contents of an
international design application. The international design application
must be in English, French, or Spanish. In addition, the application
shall contain or be accompanied by: (1) A request for international
registration under the Hague Agreement (Article 5(1)(i)); (2) the
prescribed data concerning the applicant (Article 5(1)(ii) and Rule
7(3)(i) and (ii)); (3) the prescribed number of copies of a
reproduction or, at the choice of the applicant, of several different
reproductions of the industrial design that is the subject of the
international design application, presented in the prescribed manner;
however, where the industrial design is two-dimensional and a request
for deferment of publication is made in accordance with Article 5(5),
the international design application may, instead of containing
reproductions, be accompanied by the prescribed number of specimens of
the industrial design (Article 5(1)(iii)); (4) an indication of the
product or products that constitute the industrial design or in
relation to which the industrial design is to be used, as prescribed
(Article 5(1)(iv) and Rule 7(3)(iv)); (5) an indication of the
designated Contracting Parties (Article 5(1)(v)); (6) the prescribed
fees (Article 5(1)(vi) and Rule 12(1)); (7) the Contracting Party or
Parties in respect of which the applicant fulfills the conditions to be
the holder of an international registration (Rule 7(3)(iii)); (8) the
number of industrial designs included in the international application,
which may not exceed 100, and the number of reproductions or specimens
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of the industrial designs accompanying the international application
(Rule 7(3)(v)); (9) the amount of the fees being paid and the method of
payment or instructions to debit the required amount of fees to an
account opened with the International Bureau and the identification of
the party effecting the payment or giving the instructions (Rule
7(3)(vii)); and (10) an indication of applicant's Contracting Party as
required under Rule 7(4)(a).
Section 1.1021(b) sets forth additional mandatory contents that may
be required by certain Contracting Parties. These include: (1) Elements
referred to in Article 5(2)(b) required for a filing date in the
designated Contracting Party for which a declaration was made by that
Contracting Party; and (2) a statement, document, oath, or declaration
required pursuant to Rule 8(1) by a designated Contracting Party. The
elements that may be required under Article 5(2)(b) are: (i)
Indications concerning the identity of the creator; (ii) a brief
description of the reproduction or of the characteristic features of
the industrial design; and (iii) a claim.
Section 1.1021(c) identifies optional contents that the
international design application may contain. These include: (1) Two or
more industrial designs, subject to the prescribed conditions (Article
5(4) and Rule 7(7)); (2) a request for deferment of publication
(Article 5(5) and Rule 7(5)(e)) or a request for immediate publication
(Rule 17); (3) an element referred to in item (i) or (ii) of Article
5(2)(b) of the Hague Agreement or in Article 8(4)(a) of the 1960 Act
even where that element is not required in consequence of a
notification in accordance with Article 5(2)(a) of the Hague Agreement
or in consequence of a requirement under Article 8(4)(a) of the 1960
Act (Rule 7(5)(a)); (4) the name and address of applicant's
representative, as prescribed (Rule 7(5)(b)); (5) a claim of priority
of one or more earlier filed applications in accordance with Article 6
and Rule 7(5)(c); (6) a declaration, for purposes of Article 11 of the
Paris Convention, that the product or products that constitute the
industrial design, or in which the industrial design is incorporated,
have been shown at an official or officially recognized international
exhibition, together with the place where the exhibition was held and
the date on which the product or products were first exhibited there
and, where less than all the industrial designs contained in the
international application are concerned, the indication of those
industrial designs to which the declaration relates or does not relate
(Rule 7(5)(d)); (7) any declaration, statement, or other relevant
indication as may be specified in the Administrative Instructions (Rule
7(5)(f)); (8) a statement that identifies information known by the
applicant to be material to the eligibility for protection of the
industrial design concerned (Rule 7(5)(g)); and (9) a proposed
translation of any text matter contained in the international
application for purposes of recording and publication (Rule 6(4)).
Section 1.1021(d) sets forth additional required contents for an
international design application that designates the United States.
Section 1.1021(d) provides that, in addition to the mandatory
requirements set forth in § 1.1021(a), an international design
application that designates the United States shall contain or be
accompanied by: (1) A claim (§§ 1.1021(b)(1)(iii) and 1.1025);
(2) indications concerning the identity of the creator (i.e., the
inventor, see § 1.9(d)) in accordance with Rule 11(1); and (3) the
inventor's oath or declaration (§§ 1.63 and 1.64). Section 1.1021(d)(3)
further provides that 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.
Under Article 5(2), a Contracting Party may require an
international design application to contain certain additional
elements, where the law of that Contracting Party, at the time it
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becomes a party to the Hague Agreement, requires the application to
contain such elements to be accorded a filing date. The elements set
forth in Article 5(2) are: (1) Indications concerning the identity of
the creator of the industrial design; (2) a brief description of the
reproduction or of the characteristic features of the industrial
design; and (3) a claim. Article 5(2) permits a Contracting Party to
notify the Director General of the elements required in order for the
application to be accorded a filing date.
A claim is a filing date requirement for design applications in the
United States. While title II of the PLTIA, in implementing the Patent
Law Treaty, eliminated the requirement for a claim as a filing date
requirement in utility applications, it did not eliminate the
requirement for a claim as a filing date requirement for design
applications. See section 202 of the PLTIA (amending 35 U.S.C. 171 to
provide that "[t]he filing date of an application for patent for
design shall be the date on which the specification as prescribed by
[35 U.S.C.] 112 and any required drawings are filed"). 126 Stat. 1535.
The specific wording of the claim shall be as prescribed in § 1.1025. Id.
Consequently, an international design application that designates the
United States but does not contain a claim will not be registered by the
International Bureau in the international register and thus will not be
entitled to a filing date in the United States. See 35 U.S.C. 384; Article
10(2). In such case, the International Bureau will invite the applicant to
submit the claim within a prescribed time limit and will accord a date of
international registration as of the date of receipt of the claim (assuming
there are no other filing date defects). See Article 10(2)(b). Failure to
timely submit the claim in response to the invitation by the International
Bureau will result in the application being deemed not to contain the
designation of the United States. See Article 8(2)(b).
Section 1.1021(d) also requires an international design application
designating the United States to contain indications concerning the
identity of the inventor (i.e., creator) of the industrial design and
the inventor's oath or declaration (§§ 1.63 or 1.64). The
identity of the inventor and the inventor's oath or declaration are
requirements applicable to design applications under 35 U.S.C. chapter
16. See, e.g., 35 U.S.C. 115; 35 U.S.C. 101. The PLTIA provides for
parity in the treatment of international design applications
designating the United States with design applications under 35 U.S.C.
chapter 16, except where otherwise provided by the PLTIA, Hague
Agreement, or Regulations. See, e.g., 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."); 35 U.S.C. 382(c) ("Except as
otherwise provided in this chapter, the provisions of chapter 16 shall
apply."); 35 U.S.C. 383 ("In addition to any requirements pursuant to
chapter 16, the international design application shall contain. . . .").
126 Stat. at 1528-30. See also discussion of Hague Agreement Rule
8, supra.
Section 1.1022: Section 1.1022 is added to specify form and
signature requirements for international design applications. Section
1.1022(a) provides that the international design application shall be
presented on the official form. See Hague Agreement Rule 7(1). The term
"official form" is defined in Hague Agreement Rule 1(vi) to mean "a
form established by the International Bureau or an electronic interface
made available by the International Bureau on the Web site of the
Organization, or any form or electronic interface having the same
contents and format." Section 1.1022(b) provides that the
international design application shall be signed by the applicant. See
Rule 7(1).
Section 1.1023: The filing date of an international design
application in the United States is set forth in 35 U.S.C. 384, added
by section 101 of the PLTIA, which provides "[s]ubject to subsection
(b), the filing date of an international design application in the
United States shall be the effective registration date." 126 Stat. at
1529. The term "effective registration date" is defined in 35 U.S.C.
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381(a)(5) as "the date of international registration determined by the
International Bureau under the treaty." 126 Stat. at 1528.
Accordingly, § 1.1023(a) is added to set forth that the filing date
of an international design application in the United States is the date
of international registration determined by the International Bureau,
subject to review under § 1.1023(b).
Section 1.1023(b) is added to set forth a procedure to review the
filing date of an international design application. Pursuant to 35
U.S.C. 384(b), "[t]he Director may establish procedures, including the
payment of a surcharge, to review the filing date under this section.
Such review may result in a determination that the application has a
filing date in the United States other than the effective registration
date." 126 Stat. at 1529. Accordingly, § 1.1023(b) provides that,
where the applicant believes the international design application is
entitled under the Hague Agreement to a filing date in the United
States other than the date of international registration, the applicant
may petition the Director to accord the international design
application a filing date in the United States other than the date of
international registration. Section 1.1023(b) requires that the
petition be accompanied by the fee set forth in § 1.17(f) and
include a showing to the satisfaction of the Director that the
international design application is entitled to such filing date.
Section 1.1024: Section 1.1024 is added to provide that an
international design application designating the United States must
include a specification as prescribed by 35 U.S.C. 112 and preferably
include a brief description of the reproduction pursuant to Rule
7(5)(a) describing the view or views of the reproductions. Pursuant to
Article 5(2), a Contracting Party may require "a brief description of
the reproduction or of the characteristic features of the industrial
design that is the subject of that application" where such is a filing
date requirement under its national law. See Article 5(2)(b)(ii). While
the "brief description of the reproduction or of the characteristic
features of the industrial design" referred to in Article 5(2)(b)(ii)
is not a filing date requirement in the United States, applicants
should consider whether including additional written description of the
invention is needed to comply with the requirements of 35 U.S.C. 112.
Rule 7(5)(a) allows the applicant to include in the international
design application the description referred to in Article 5(2)(b)(ii)
even if not required by a Contracting Party pursuant to Article 5(2).
In the United States, the requirements for a filing date for an
application for design patent are set forth in 35 U.S.C. 171, as
amended under section 202 of the PLTIA, which states in subsection (c):
"[t]he filing date of an application for patent for design shall be
the date on which the specification as prescribed by [35 U.S.C.] 112
and any required drawings are filed." 126 Stat. 1535. Although a
"brief description of the reproduction or of the characteristic
features of the industrial design" is not a per se filing date
requirement, it may be necessary to comply with 35 U.S.C. 112(a), which
requires, inter alia, that the "specification shall contain a written
description of the invention." This written description requirement
may be satisfied by the reproductions. See In re Daniels, 144 F.3d
1452, 1456, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998) ("It is the drawings
of the design patent that provide the description of the invention.");
In re Klein, 987 F.2d 1569, 1571, 26 USPQ2d 1133, 1134 (Fed. Cir. 1993)
("[U]sual[ly] in design applications, there is no description other
than the drawings"); Hupp v. Siroflex of America, Inc., 122 F.3d 1456,
1464, 43 USPQ2d 1887, 1893 (Fed. Cir. 1997) ("A design patent contains
no written description; the drawings are the claims to the patented
subject matter."); Ex parte Tayama, 24 USPQ2d 1614, 1617 (Bd. Pat.
App. & Int'f 1992) ("[D]esign applications must meet the requirements
of 35 U.S.C. Section 112, first paragraph. While this ordinarily
requires little if any detailed description, some design applications
may require a disclosure as detailed as that in a complex utility
application. There is no `per se' rule with respect to the extent of
the disclosure necessary in a design application. The adequacy of the
disclosure must be determined on a case-by-case basis."). The Office
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therefore encourages the inclusion in international design applications
of a brief description of the reproduction, pursuant to Rule 7(5)(a),
that describes the view or views of the reproductions, as may be
required for design applications filed under 35 U.S.C. chapter 16. See,
e.g., § 1.153(b) ("No description, other than a reference to the
drawing, is ordinarily required. . . .); § 1.154(b) ("The
specification should include . . . 4) Description of the figure or
figures of the drawing"); and MPEP 1503.01(II) ("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 is more clearly descriptive of
the views."). Such figure descriptions are helpful for examination and
may, in some cases, avoid rejections under 35 U.S.C. 112. Furthermore,
a description of the view or views of the reproductions will be
required by the Office in a nonprovisional international design
application if not furnished under Rule 7(5)(a). See discussion of
§ 1.1067, infra.
Thus, § 1.1024 is added to provide that an international design
application designating the United States must include a specification
as prescribed by 35 U.S.C. 112, and should preferably include a brief
description of the reproduction pursuant to Rule 7(5)(a) describing the
view or views of the reproductions.
The Office notes that Article 5(2)(b)(ii) and Rule 11(2) refer to a
description of "characteristic features" of the industrial design
that may be required by some Contracting Parties. A characteristic
features statement is not required under U.S. national law. Applicants
are cautioned that a characteristic features statement may serve to
later limit the claim in the United States. See McGrady v. Aspenglas
Corp., 487 F. Supp. 859 (S.D.N.Y. 1980); MPEP 1503.01.
Section 1.1025: Section 1.1025 is added to set forth that 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. Section 1.1025 also provides that
more than one claim is neither required nor permitted for purposes of
the United States. Under Rule 11(3), a declaration requiring a claim
pursuant to Article 5(2) "shall specify the exact wording of the
required claim."
Section 1.1026: Section 1.1026 is added to provide that
reproductions shall comply with the requirements of Rule 9 and Part
Four of the Administrative Instructions. Rule 9 sets forth the
requirements for reproductions in international design applications,
including the form and number of reproductions, and references the
requirements of the Administration Instructions. Part Four of the
Administrative Instructions sets forth requirements concerning the
presentation of the reproductions (Section 401), representation of the
industrial design (Section 402), disclaimer (Section 403), requirements
for photographs and other graphic representations (Section 404),
numbering of reproductions (Section 405), requirements for specimens
(Section 406), and relation with a principal industrial design or a
principal application or registration (Section 407).
Section 1.1027: Section 1.1027 provides that, where a request for
deferment of publication has been filed in respect of a two-dimensional
industrial design, the international design application may include
specimens of the design in accordance with Rule 10 and Part Four of the
Administrative Instructions. Section 1.1027 further provides that
specimens are not permitted in an international design application that
designates the United States or any other Contracting Party that does
not permit deferment of publication. Under the Hague Agreement,
specimens are only permitted where a request for deferment of
publication has been made. See Article 5(1)(iii); Rule 10(1). However,
a request for deferment of publication is not permitted in an
international design application that designates a Contracting Party
that has made a declaration under Article 11(1)(b) that its applicable
law does not provide for deferment of publication. See Article 11(3).
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Section 1.1028: Section 1.1028 is added to make clear that an
international design application may contain a request for deferment of
publication, provided the application does not designate the United
States or any other Contracting Party that does not permit deferment of
publication. Where an international design application contains an
improper request for deferment, the International Bureau will require
correction pursuant to Article 11(3).
Section 1.1031: Section 1.1031 is added to provide for payment of
the international design application fees.
Section 1.1031(a) provides that international design applications
filed through the Office as an office of indirect filing are subject to
payment of a transmittal fee in the amount of $120. Under the Hague
Agreement, an office of indirect filing may require payment of a
transmittal fee. See Article 4(2). Section 101(a) of the PLTIA adds 35
U.S.C. 382(b), which provides that the international design application
and international fees shall be forwarded by the Office to the
International Bureau "upon payment of a transmittal fee." 126 Stat.
at 1528. Accordingly, § 1.1031(a) provides for the payment of a
transmittal fee. The transmittal fee is not being set pursuant to
section 10(a) of the AIA. Rather, the Office is setting this fee
pursuant to its authority under 35 U.S.C. 41(d)(2) in this rulemaking,
which provides that fees for all processing, services, or materials
relating to patents not specified in 35 U.S.C. 41 are to be set at amounts
to recover the estimated average cost to the Office of such processing,
services, or materials. See 35 U.S.C. 41(d)(2).
The transmittal fee for an international design application filed
under the Hague Agreement through the USPTO as an office of indirect
filing involves the following activities, which the Office considered
in estimating the fiscal year 2012 costs: (1) Processing incoming paper
($2); (2) processing application fees ($7); (3) application indexing/
scanning ($65); (4) routing classification/security screening ($4); (5)
second-level security screening and licensing and review processing
($1); (6) initial bibliographic data entry ($17); (7) copying and
mailing ($9); (8) performing processing section functions ($11); and
(9) performing Hague file maintenance ($2).
Applying the ABI methodology discussed above, the Office has thus
estimated the fiscal year 2012 unit cost to transmit an international
design application and international fees to the International Bureau
as the sum total of the aforementioned activities, resulting in a total
unit cost of $118. Using the actual CPI-U increase for fiscal year 2013
and the estimated CPI-U for 2014 and 2015, the Office estimates the
fiscal year 2015 unit cost to transmit the international design
application and the international fees to the International Bureau is
$124 ($118 multiplied by 1.051), which, when rounded to the nearest ten
dollars, is a fee for transmittal of $120. Additional information
concerning the Office's analysis of the estimated fiscal year 2012
costs for receiving and transmitting international design applications
and international fees to the International Bureau is available upon
request.
Section 1.1031(b) provides that the Schedule of Fees, a list of
individual designation fee amounts, and a fee calculator to assist
applicants in calculating the total amount of fees for filing an
international design application may be viewed on the Web site of the
WIPO, currently available at http://www.wipo.int/hague. Under the Hague
Agreement, the International Bureau is responsible for collecting the
required fees set forth in the Schedule of Fees annexed to the
Regulations (Rule 27(1)) and the individual designation fees referred
to in Rule 12(1)(a)(iii). Where the required fees have not been paid,
the International Bureau will invite the applicant to pay the required
fees to avoid abandonment of the application. See Article 8; Rule 14.
Section 1.1031(c) provides that the following fees required by the
International Bureau may be paid either directly to the International
Bureau or through the Office as an office of indirect filing in the
amounts specified on the WIPO Web site described in § 1.1031(b):
(1) The international application fees (Rule 12(1)); and (2) the fee
for descriptions exceeding 100 words (Rule 11(2)). The fees referred to
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in Hague Agreement Rule 12(1) include a basic fee, standard designation
fees, individual designation fees, and a publication fee. Rule 12(3)(b)
states that the Rule 12(1) reference to individual designation fees is
construed as a reference to only the first part of the individual
designation fee for any Contracting Party with a designation fee
comprised of two parts.
Section 1.1031(d) provides that the fees referred to in § 1.1031(c)
may be paid directly to the International Bureau in Swiss currency. See
Rule 27(2)(a). Administrative Instructions to the Hague Agreement set
forth the various modes of payment accepted by the International Bureau.
See Administrative Instruction 801. These include: (1) Payment by debit
through an account established with the International Bureau; (2) payment
into the Swiss postal check account or any of the specified bank accounts
of the International Bureau; or (3) payment by credit card.
Section 1.1031(d) also provides for payment of the fees referred to
in § 1.1031(c) through the Office as an office of indirect filing,
provided such fees are paid no later than the date of payment of the
transmittal fee required under § 1.1031(a). Any payment through the
Office must be in U.S. dollars. Section 1.1031(d) also provides that
applicants paying fees through the Office may be subject to a
requirement by the International Bureau to pay additional amounts where
the International Bureau has deemed the amount received as being
deficient. This may occur, for example, where the conversion from U.S.
dollars to Swiss currency results in the International Bureau receiving
less than the prescribed amounts. Under Rule 28(1), "[a]ll payments
made under these Regulations to the International Bureau shall be in
Swiss currency irrespective of the fact that, where the fees are paid
through an Office, such Office may have collected those fees in another
currency." Consequently, the fees collected by the Office for
forwarding to the International Bureau must be converted to Swiss
currency. If the converted amount at the time the Office transfers the
fees to the International Bureau in Swiss currency is less than the
amount required by the International Bureau, the International Bureau
may invite the applicant to pay the deficiency. Any payment in response
to the invitation must be made directly to the International Bureau
within the period set in the invitation.
Section 1.1031(e) provides that payment of the fees referred to in
Article 17 and Rule 24 for renewing an international registration
("renewal fees") is not required to maintain a U.S. patent issuing on
an international design application in force and that any renewal fees,
if required, must be submitted directly to the International Bureau.
Section 1.1031(e) further provides that any renewal fee submitted to
the Office will not be transmitted to the International Bureau.
The final rules do not provide for a fee for renewing an
international registration with respect to the United States. Article 7
provides for a designation fee for each designated Contracting Party.
Article 7(1) provides for a "prescribed" designation fee (also
referred to as "standard" designation fee, see Rule 11). However,
Article 7(2) allows a Contracting Party to make a declaration replacing
the prescribed designation fee with an individual designation fee "in
connection with any international application in which it is
designated, and in connection with the renewal of any international
registration resulting from such an international application."
Pursuant to Article 7(2), the amount of the individual designation fee
may be fixed by the Contracting Party "for the initial term of
protection and for each term of renewal or for the maximum period of
protection allowed by the Contracting Party concerned." Article 7(2)
further provides that the individual designation fee may not be higher
than the equivalent of the amount that the office of a Contracting
Party would be entitled to receive for a grant of protection for an
equivalent period to the same number of designs.
Thus, while Article 7(2) permits a Contracting Party to fix an
individual designation fee for renewing an international registration
in respect of that Contracting Party, it does not require such fee.
Rather, the individual designation fee fixed by the Contracting Party
may be for the maximum period of protection allowed by the Contracting
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Party. Furthermore, the PLTIA does not require payment of a fee for
renewing an international registration with respect to the United
States. In addition, the PLTIA does not require renewal of the
international registration to obtain the maximum period of protection
in the United States. See, e.g., 35 U.S.C. 173 as amended by the PLTIA,
126 Stat. at 1532 ("Patents for designs shall be granted for the term
of 15 years from the date of grant."). Accordingly, the final rules do
not provide a fee for renewing an international design application with
respect to the United States.
The Office notes that Article 17(3) provides that any extension of
the initial five-year term of protection accorded by an international
registration is subject to renewal. However, the Hague Agreement allows
a Contracting Party to provide greater protection under its national
law than provided under the Hague Agreement. See Article 2(1) ("The
provisions of this Act shall not affect the application of any greater
protection which may be accorded by the law of a Contracting
Party. . . ."). Furthermore, the records of the diplomatic conference
adopting the Hague Agreement make clear that renewal of the international
registration for a designated Contracting Party that requires payment
of a single designation fee for the entire 15-year (or more) period of
protection is not required to obtain the full period of protection in
that Contracting Party. See WIPO, Records of the Diplomatic Conference
for the Adoption of a New Act of the Hague Agreement Concerning the
International Deposit of Industrial Design (Geneva Act) June 16 to July
6, 1999, 254, ] 15.08 (2002) (discussing Article 15 of the Basic
Proposal presented to the diplomatic conference which, after minor
amendment, became Article 17) ("It would be compatible with paragraphs
(1) to (3) for a Contracting Party to stipulate a single 15-year (or
more) period and to require payment of an initial individual
designation fee for the whole period. In such case, protection would be
maintained in its territory for that whole period, whether the
international registration were renewed or not.").
Section 1.1035: The Office has decided not to adopt § 1.1035
concerning priority in an international design application in this
final rule. Section 1.1021(c)(5) in this final rule provides for the
inclusion of, as an optional content item, a claim of priority of one
or more earlier filed applications in accordance with Article 6 and
Rule 7(5)(c) of the Hague Agreement. In addition, §§ 1.55 and
1.78 in this final rule provide for foreign priority and domestic
benefit claims with respect to international design applications
designating the United States. Accordingly, § 1.1035 is
unnecessary.
Section 1.1041: Section 1.1041 is added to provide for
representation in an international design application. Section
1.1041(a) provides that the applicant may appoint a representative
before the International Bureau in accordance with Rule 3. With respect
to who may be appointed to represent the applicant before the
International Bureau, the Hague Agreement does not provide for any
requirement as to professional qualification, nationality, or domicile.
The appointment may be made in the international design application or
in a separate communication. See Rule 3(2).
Requirements as to the appointment of a representative before the
office of a Contracting Party are outside the scope of the Hague
Agreement and are exclusively a matter for the Contracting Party.
Accordingly, § 1.1041(b) is added to provide that applicants of
international design applications may be represented before the Office
as an office of indirect filing by a practitioner registered (§ 11.6)
or granted limited recognition (§ 11.9(a) or (b)) to practice before
the Office (§ 11.6). Section 1.1041(b) further provides that such
practitioner may act pursuant to § 1.34 or pursuant to appointment by
the applicant. The appointment must be in writing signed by the applicant,
must give the practitioner power to act on behalf of the applicant, and
must specify the name and registration number or limited recognition
number of each practitioner. Section 1.1041(b) also provides that an
appointment of a representative made in the international design
application pursuant to Rule 3(2) that complies with the requirements
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of this paragraph will be effective as an appointment before the Office
as an office of indirect filing. For purposes of representation before
the Office during prosecution of an international design application that
became a national application (see § 1.9(a)(1)), the regulations governing
national applications shall apply. See § 1.1061(a).
Section 1.1042: Section 1.1042 is added to provide that the
applicant may specify a correspondence address for correspondence sent
by the Office as an office of indirect filing. Where no such address
has been specified, the Office will use as the correspondence address
the address of applicant's appointed representative (§ 1.1041) or,
where no representative is appointed, the address as specified in
Administrative Instruction 302.
Section 1.1045: Section 1.1045 is added to set forth the procedures
for transmittal of international design applications to the
International Bureau. Section 101(a) of the PLTIA adds 35 U.S.C. 382,
which states, in subsection (b): "[s]ubject to chapter 17,
international design applications shall be forwarded by the Patent and
Trademark Office to the International Bureau, upon payment of a
transmittal fee." 126 Stat. at 1528. Rule 13(1) requires an office of
indirect filing to notify the applicant and the International Bureau of
the receipt date of an international design application and to notify
the applicant that the international design application has been
transmitted to the International Bureau. Accordingly, § 1.1045(a)
is added to provide that, subject to § 1.1045(b) and payment of the
transmittal fee set forth in § 1.1031(a), transmittal of the
international design application to the International Bureau shall be
made by the Office as provided by Rule 13(1). Section 1.1045(a) further
provides that at the same time as it transmits the international design
application to the International Bureau, the Office shall notify the
International Bureau of the date on which it received the application
and that the Office shall also notify the applicant of the date on
which it received the international design application and the date on
which it transmitted the application to the International Bureau.
Because transmittal of the international design application is
subject to 35 U.S.C. chapter 17, § 1.1045(b) is added to provide
that no copy of an international design application may be transmitted
to the International Bureau, a foreign designated office, or other
foreign authority by the Office or the applicant, unless the applicable
requirements of part 5 of this chapter have been satisfied.
Under the Hague Agreement, formalities review of the international
design application is performed by the International Bureau, not the
office of indirect filing. The functions of the office of indirect
filing are de minimis, i.e., receiving and transmitting the
international design application and international fees. There is no
provision in the Hague Agreement for filing follow-on submissions with
the office of indirect filing. Accordingly, § 1.1045(c) is added to
provide that once transmittal of the international design application
has been effected, except for matters properly before the USPTO as an
office of indirect filing or as a designated office, all further
correspondence concerning the application should be sent directly to
the International Bureau, and that the Office will generally not
forward communications to the International Bureau received after
transmittal of the application to the International Bureau. Section
1.1045(c) further provides that any reply to an invitation sent to the
applicant by the International Bureau must be filed directly with the
International Bureau, and not with the Office, to avoid abandonment or
other loss of rights under Article 8.
Section 1.1051: Section 1.1051 is added to set forth conditions
under which an applicant's failure to act within prescribed time limits
in connection with requirements pertaining to an international design
application may be excused as to the United States upon a showing of
unintentional delay. Section 101(a) of the PLTIA adds 35 U.S.C. 387,
which gives the Director authority to prescribe such conditions,
including the payment of the fee specified in 35 U.S.C. 41(a)(7), to
excuse an applicant's failure to act within prescribed time limits in
an international design application as to the United States where the
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delay was unintentional. 126 Stat. at 1530; see discussion of
§ 1.17(m), supra. Under § 1.1051(a), a petition to excuse applicant's
failure to act within the prescribed time limits must be accompanied
by: (1) A copy of any invitation sent from the International Bureau
setting a prescribed time limit for which applicant failed to timely
act; (2) the reply required under § 1.1051(c), unless previously
filed; (3) the fee as set forth in § 1.17(m); (4) a certified copy
of the originally filed international design application, unless a copy
of the international design application was previously communicated to
the Office from the International Bureau or the international design
application was filed with the Office as an office of indirect filing;
(5) a statement that the entire delay in filing the required reply from
the due date for the reply until the filing of a grantable petition
pursuant to this paragraph was unintentional; and (6) a terminal
disclaimer (and fee as set forth in § 1.20(d)) required pursuant to
paragraph (d) of this section. The Director may require additional
information where there is a question whether the delay was
unintentional.
The requirements for a copy of the invitation sent from the
International Bureau setting a prescribed time limit for which
applicant failed to timely act and for a certified copy of the
originally filed international design application (unless a copy of the
international design application was previously communicated to the
Office from the International Bureau or the international design
application was filed with the Office as an office of indirect filing)
are needed because the Office may not have a record of the
international design application. For example, the Office may not have
a record where the international design application was filed directly
with the International Bureau and was not published.
Section 1.1051(b) provides that, to be considered timely, any
request for reconsideration or review of a decision refusing to excuse
the applicant's failure to act within prescribed time limits in
connection with an international design application upon petition filed
under § 1.1051(a) must be filed within two months of the decision
refusing to excuse or within such time as set in the decision. Section
1.1051(b) further provides that, unless a decision indicates otherwise,
the two-month time period may be extended under the provisions of
§ 1.136.
Section 1.1051(c) provides that the reply required may be: (1) The
filing of a continuing application and, if the international design
application has not been subject to international registration, a
grantable petition under § 1.1023(b) to accord the international
design application a filing date; or (2) a grantable petition under
§ 1.1052, where the international design application was filed with
the Office as an office of indirect filing.
Under the Hague Agreement, the International Bureau reviews
international design applications for compliance with the requirements
of the treaty and Regulations. If these requirements have not been met,
the International Bureau will invite the applicant to make the required
corrections. See Hague Agreement Article 8(1). Depending on the
correction required, failure to timely comply with the invitation will
result in the application being considered abandoned or deemed not to
contain the designation of the Contracting Party for which the
deficiency relates. See Hague Agreement Article 8(2). The Hague
Agreement does not provide for continued processing of an international
design application that has been abandoned under Article 8 (or for
processing the application for a particular Contracting Party after the
designation of that Contracting Party has been deemed not to be
contained in the application), based on the Office excusing the
applicant's failure to timely comply with the invitation pursuant to 35
U.S.C. 387. For example, the Hague Agreement does not provide for
forwarding by the International Bureau to the applicant a notification
of refusal in an abandoned international application. Accordingly, the
Office is providing relief under 35 U.S.C. 387 by permitting the
applicant to file a continuing application claiming benefit to an
international design application under the conditions of 35 U.S.C.
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386(c) and 120. Upon grant of the petition under this section,
applicant's delay will be excused for the purpose of establishing
copendency or reinstatement of the U.S. designation in accordance with
35 U.S.C. 120, 386(c), and 388. The ability to file a continuing
application is similarly provided in the rule governing the procedure
for revival of an abandoned national application. See 37 CFR 1.137(c).
Alternatively, § 1.1051(c) provides that the reply may be a
grantable petition under § 1.1052 to convert the international
design application to an application under 35 U.S.C. chapter 16.
Section 1.1051(d) provides that any petition under § 1.1051
must be accompanied by a terminal disclaimer and fee as set forth in
§ 1.321 dedicating to the public a terminal part of the term of any
patent granted thereon equivalent to the period beginning on the due
date for the reply for which applicant failed to timely act and ending
on the date of filing of the reply required under paragraph (c) of the
section and must also apply to any patent granted on a continuing
design application that contains a specific reference under 35 U.S.C.
120, 121, 365(c), or 386(c) to the application for which relief under
this section is sought. The requirement under § 1.1051(d) for a
terminal disclaimer prevents an inappropriate length of patent term
caused by applicant's delay and is consistent with the requirement
under § 1.137(d) for a terminal disclaimer in a petition to revive
an unintentionally abandoned design application.
Section 1.1052: Section 1.1052 is added to set forth a procedure
for converting an international design application designating the
United States to a design application under 35 U.S.C. chapter 16.
Section 101(a) of the PLTIA adds 35 U.S.C. 384(a), the second sentence
of which provides: "[n]otwithstanding the provisions of this part, any
international design application designating the United States that
otherwise meets the requirements of chapter 16 may be treated as a
design application under chapter 16." 126 Stat. at 1529. The
requirements for a filing date for a design application under 35 U.S.C.
chapter 16 are set forth in § 1.53(b). Accordingly, § 1.1052(a)
provides that an international design application designating the
United States filed with the Office as an office of indirect filing and
meeting the requirements under § 1.53(b) for a filing date for an
application for a design patent may, on petition under this section, be
converted to an application for a design patent under § 1.53(b) and
accorded a filing date as provided therein.
Section 1.1052(a) further provides that the petition must be
accompanied by the fee set forth in § 1.17(t) and be filed prior to
publication of the international registration under Article 10(3). The
requirement that a grantable petition be filed prior to publication
under Article 10(3) is necessary in view of the timing requirements
under the Hague Agreement to issue a notification of refusal and to
avoid expending Office resources processing and examining the
application under two different statutory schemes.
Section 1.1052(a) also provides that the conversion of an
international design application to an application for a design patent
under § 1.53(b) will not entitle applicant to a refund of the
transmittal fee or any fee forwarded to the International Bureau, or
the application of any such fee toward the filing fee, or any other
fee, for the application for a design patent under § 1.53(b). In
addition, § 1.1052(a) provides that the application for a design
patent resulting from conversion of an international design application
must also include the basic filing fee (§ 1.16(b)), the search fee
(§ 1.16(l)), the examination fee (§ 1.16(p)), the inventor's
oath or declaration (§§ 1.63 or 1.64), and a surcharge if
required by § 1.16(f). These provisions are similar to those
applicable to converting an application under 35 U.S.C. 111(b) to an
application under 35 U.S.C. 111(a). See § 1.53(c)(3).
Section 1.1052(b) provides that an international design application
will be converted to an application for a design patent under § 1.53(b)
if a decision on petition under this section is granted prior to
transmittal of the international design application to the
International Bureau pursuant to § 1.1045. Otherwise, a decision
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granting a petition under this section will be effective to convert the
international design application to an application for a design patent
under § 1.53(b) only for purposes of the designation of the United
States. Thus, pursuant to § 1.1052(b), if the Office grants the
petition prior to transmittal of the international design application
to the International Bureau, the Office will treat the international
design application submission as an application for a design patent
under § 1.53(b). Once transmittal of the application under § 1.1045
has occurred, the grant of the petition will only be effective as to the
United States, and the International Bureau will continue to process the
international design application under the provisions of the Hague
Agreement. In such case, because the international design application
will have been converted to an application for a design patent under
§ 1.53(b) with respect to the designation of the United States, the Office
will, upon grant of the petition, treat the designation of the United
States in the international design application as not being made. To avoid
confusion and unnecessary processing, applicants should renounce the
designation of the United States pursuant to Article 16 upon grant of the
petition for conversion.
Section 1.1052 (c) provides that a petition under § 1.1052 will
not be granted in an abandoned international design application absent
a grantable petition under § 1.1051.
Section 1.1052(d) provides that an international design application
converted under this section is subject to the regulations applicable
to a design application filed under 35 U.S.C. chapter 16.
Sections 1.1061-1.1071 relate to national processing of an
international design application designating the United States.
Section 1.1061: Section 1.1061(a) is added to provide that the
rules relating to applications for patents for other inventions or
discoveries are also applicable to international design applications
designating the United States, except as otherwise provided in chapter
I of title 37 of the CFR or required by the Articles or Regulations of
the Hague Agreement. Section 1.1061(a) is similar to current § 1.151
with respect to design applications under 35 U.S.C. chapter 16
("The rules relating to applications for patents for other inventions
or discoveries are also applicable to applications for patents for
designs except as otherwise provided."). Section 101(a) of the PLTIA
adds 35 U.S.C. 389(b) to provide that all questions of procedures
regarding international design applications designating the United
States shall be determined as in the case of applications filed under
35 U.S.C. chapter 16, except where otherwise required by the Hague
Agreement and the Regulations (126 Stat. at 1530). Section 1.1061(b) is
added to identify, consistent with the Hague Agreement and the
Regulations, certain regulations that do not apply to international
design applications.
Section 1.1062: Section 1.1062(a) is added to provide that the
Office shall make an examination pursuant to title 35, United States
Code, of an international design application designating the United
States. Examination of international design applications designating
the United States is mandated by 35 U.S.C. 389(a), which was added by
section 101(a) of the PLTIA (126 Stat. at 1530). In accordance with
Article 12(1) and 35 U.S.C. 389(b), the Office will not refuse an
international design application under examination on grounds that
requirements relating to the form or contents of the international
design application provided for in the Hague Agreement or the
Regulations or additional to, or different from, those requirements
have not been satisfied. Accordingly, the Office does not consider it
necessary to import the language of Article 12(1) into § 1.1061(a)
as originally proposed.
The Office does not consider Article 12(1) to prohibit refusals
based on requirements relating to form or contents of the application
provided for in the Hague Agreement or Regulations where the
International Bureau is not responsible for verifying compliance with
such requirements. Such a situation could arise, for example, where the
applicant submits amended drawings directly to the Office in an
international design application before the Office for examination, as
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contemplated under Article 14(2)(c). Otherwise, the amended drawings
would not be subject to any formal requirements. The Office's
interpretation is consistent with the intent of Article 12(1). See,
e.g., WIPO, Guide to the International Registration of Industrial
Designs under the Hague Agreement, B.II.36, ] 9.03 (Jan. 2014)
("Protection may not be refused on the grounds that the international
registration does not satisfy formal requirements, since such
requirements are to be considered by each Contracting Party as having
already been satisfied following the examination carried out by the
International Bureau. For example, a designated Office may not refuse
protection on the ground that the required fees have not been paid or
that the quality of the reproductions is not sufficient, since such
verification is the exclusive responsibility of the International
Bureau." (emphases added)); WIPO, Notes on the Basic Proposal for the
New Act of the Hague Agreement Concerning the International
Registration of Industrial Designs, H/DC/5, ] 11.01 (Dec. 15, 1998)
("Paragraph (1) [(referring to Article 11(1) of the Basic Proposal,
which became Article 12(1))] affords the Offices of the designated
Contracting Parties the right to refuse the effects of international
registrations in which they are designated. It is clear, to begin with,
that protection may not be refused on the grounds that the filing does
not satisfy the requirements as to form or content of the international
application laid down in the new Act or in the Regulations to the
extent that such requirements are to be considered by each Contracting
Party as having already been satisfied under the international
procedure.
Additionally, once the International Bureau has ascertained that
those conditions have been satisfied and has proceeded with the
international registration, paragraph (1) stipulates that no Office may
refuse the effects of an international registration on the grounds that
requirements relating to the form or contents of the international
application that are contained in the legislation of the Contracting
Party concerned and which are additional to or different from the
requirements set out in this Act or in the Regulations have not been
met." (third emphasis added)). See also the discussion of § 1.067(a),
infra (regarding refusals permitted under the Hague Agreement with
respect to optional content items).
Section 1.1062(b) concerns the timing of certain actions in
international design applications. Pursuant to Hague Agreement Article
12, where the conditions for the grant of protection under the law of
the Contracting Party are not met, a notification of refusal of the
effects of international registration must be communicated to the
International Bureau within the prescribed period. Rule 18(1) sets
forth the period for communicating the notification of refusal. While
Rule 18(1)(a) sets forth the prescribed period as six months from the
date of publication, this period may be extended by a Contracting Party
pursuant to a declaration made under Rule 18(1)(b) (extending the six-
month period to twelve months). Furthermore, the declaration under Rule
18(1)(b) may also include, inter alia, a statement under Rule
18(1)(c)(ii) (providing for the later communication of a decision
regarding the grant of protection where a decision regarding the grant
of protection was unintentionally delayed by the office of the
Contracting Party).
Section 1.1062(b) is added to provide that, for each international
design application to be examined, 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 U.S. law with respect to
any industrial design that is the subject of the international
registration. The Office intends to send all notifications of refusal
prior to the expiration of the 12-month period set forth in § 1.1062(b).
Any failure by the Office to do so would be unintentional pursuant to
Rule 18(1)(c)(ii).
The Office does not regard the failure to send the notification of
refusal within the period referenced in § 1.1062(b) to confer
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patent rights or other effect under Article 14(2). The Hague Agreement
is not self-executing, and the PLTIA provides for patent rights only
upon issuance of a patent. See 35 U.S.C. 389(d) added by the PLTIA, 126
Stat. at 1531; see also S. Exec. Rep. No. 110-7, at 5 ("The proposed
Act makes no substantive changes in U.S. design patent law with the
exception of the following: The provision of limited rights to patent
applicants between the date that their international design application
is published by the IB and the date on which they are granted a U.S.
patent based on that application; the extension of a patent term for
designs from fourteen to fifteen years from grant; and allowing the
USPTO to use a published international design registration as a basis
for rejecting a subsequently filed national patent application that is
directed at the same or a similar subject matter."). Furthermore, the
PLTIA requires an international design application that designates the
United States to be examined by the Office pursuant to title 35, United
States Code. See 35 U.S.C. 389(a). Patent rights may only arise at the
end of the examination process. The absence of a notification of
refusal does not confer enforceable rights. See 35 U.S.C. 153
("Patents shall be issued in the name of the United States of America,
under the seal of the Patent and Trademark Office, and shall be signed
by the Director or have his signature placed thereon and shall be
recorded in the Patent and Trademark Office.").
Section 1.1063: Section 1.1063(a) is added to provide, in
accordance with Rule 18(2)(b), that a notification of refusal shall
contain or indicate: (1) The number of the international registration
(Rule 18(2)(b)(ii)); (2) the grounds on which the refusal is based
(Rule 18(2)(b)(iii)); (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 (Rule 18(2)(b)(iv)); (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 (Rule
18(2)(b)(v)); and (5) a time period for reply under §§ 1.134
and 1.136 where a reply to the notification of refusal is required
(Rule 18(2)(b)(vi)).
Pursuant to Article 12, the Office communicates the notification of
refusal directly to the International Bureau, which then transmits
without delay a copy of the notification of refusal to the holder. 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. 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 § 1.138 prior to
examination.
The Office will generally forward references used in the grounds of
refusal (e.g., a rejection under 35 U.S.C. 102 or 103) with the
notification of refusal unless the reference was cited by the applicant
in an information disclosure statement.
The notification of refusal communicated by the Office will set a
time period for reply under §§ 1.134 and 1.136 to avoid
abandonment where a reply to the notification of refusal is required.
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 "partial notification of
refusal," will be communicated to the International Bureau but will
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not set a time period for reply to the notification of refusal, as no
reply to the refusal is required.
Section 1.1063(b) is added to provide that any reply to the
notification of refusal must be filed directly with the Office and not
through the International Bureau. Section 1.1063(b) further provides
that the requirements of § 1.111 shall apply to a reply to a
notification of refusal. As described above, the notification of
refusal may be a non-final Office action, including a non-final Office
action on the merits, after a first examination under § 1.104.
Under the Hague Agreement, any reply to the notification of refusal
must be filed directly with the Office. The applicant may not file a
reply to a notification of refusal through the International Bureau.
Any further correspondence from the Office will normally be sent
directly to the applicant. The procedures applicable to design
applications under 35 U.S.C. chapter 16 are generally applicable to
international design applications after communication of the
notification of refusal. See Article 12(3)(b) and 35 U.S.C. 389(b); see
also WIPO, Guide to the International Registration of Industrial
Designs under the Hague Agreement, B.II.40, ] 9.23 (Jan. 2014) ("Where
the holder of an international registration receives, through the
International Bureau, a notification of refusal, he has the same rights
and remedies (such as review of, or appeal against, the refusal) as if
the industrial design had been filed directly with the Office that
issued the notification of refusal. The international registration is,
therefore, with respect to the Contracting Party concerned, subject to
the same procedures as would apply to an application for registration
filed with the Office of that Contracting Party."). Thus, for example,
the provisions of 35 U.S.C. 133 and §§ 1.134 through 1.136
govern the time to reply to an Office action, including a notification
of refusal that requires a reply to avoid abandonment, and the
consequence for failure to timely reply (i.e., abandonment).
Because the procedures following the notification of refusal are
governed by national practice, the failure of an applicant to renew an
international registration pursuant to Article 17(2) does not affect
the pendency status of an international design application before the
Office. Otherwise, applicants in international design applications
would not have the same rights and remedies as applicants in national
design applications, as required under Article 12(3)(b) and 35 U.S.C.
389. Similarly, the failure to renew a registration under Article 17(2)
does not impact an applicant's ability to file a continuing application
under 35 U.S.C. 120, 121, 365(c) or 386(c), as the critical inquiry
under 35 U.S.C. 120 is the presence of copendency.
Section 1.1064: Section 1.1064(a) is added to provide that only one
independent and distinct design may be claimed in a nonprovisional
international design application. Subject to the requirements of
Article 13, 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. Accordingly, § 1.1064(a) is
added to provide that only one independent and distinct design may be
claimed in a nonprovisional international design application.
Section 1.1064(b) provides that, if the requirements under
§ 1.1064(a) 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. Section 1.1064(b)
further provides that 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.
Section 1.1065: Hague Agreement Rule 22 provides for correction of
errors in the International Registration by the International Bureau,
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acting ex officio or at the request of the holder. Under Rule 22(2), a
designated Contracting Party has the right to refuse the effects of
correction. Accordingly, § 1.1065(a) is added to provide that 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. Section 1.1065(a) further provides that
a patent 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. Title I of the
PLTIA does not provide another mechanism for correcting patents issued
on international design applications. Section 1.1065(a) also provides
that 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. Rule 22
does not impose any requirement on a Contracting Party to give effect
to a correction made under Rule 22 in an international design
application that is abandoned before that Contracting Party.
Section 1.1065(b) is added to provide that 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. Under the Hague Agreement, a partial
change in ownership resulting from an assignment or other transfer of
the international registration in respect of only some of the
industrial designs or only some of the designated Contracting Parties
may be recorded in the International Register pursuant to Rule 21(7).
Upon recording of the partial change in ownership, the International
Bureau will create a new international registration number for the part
that has been assigned or otherwise transferred, and cancel that part
under the originally international registration number. Consequently,
it is possible that an original international registration may be
divided by the International Bureau into a number of international
registrations each directed to only some of the designs present in the
original registration. Such would present administrative difficulties
for the Office. Under Rule 21bis, a Contracting Party may declare that
a change in ownership recorded in the International Register has no
effect in that Contracting Party. Accordingly, § 1.1065(b) is
added, consistent with Rule 21bis, to provide that 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. 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.
Section 1.1066: Section 1.1066 is added to specify the
correspondence address for a nonprovisional international design
application. Unlike other types of applications before the Office, an
applicant does not need to file any submissions with the Office to
initiate examination under § 1.1062 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 and
examined in due course. Accordingly, § 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,
§ 1.1066(a) provides that, 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: (i) The
correspondence address under § 1.1042; (ii) the address of the
applicant's representative identified in the publication of the
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international registration; and (iii) the address of the applicant
identified in the publication of the international registration.
Section 1.1066(b) is added to provide that a reference in the rules
to the correspondence address set forth in § 1.33(a) shall be
construed to include a reference to § 1.1066 for a nonprovisional
international design application.
Section 1.1067: Section 1.1067(a) is added to provide for a title
in a nonprovisional international design application. The Hague
Agreement does not require that an international design application
contain a title. The Office believes a title that identifies the
article in which a design is embodied is helpful to the public in
understanding the nature of the article embodying the design after the
patent has issued and also aids in identification during public search.
In addition, a U.S. patent must contain a title of the invention. See
35 U.S.C. 154(a)(1) ("Every patent shall contain a short title of the
invention. . . ."). Accordingly, pursuant to § 1.1067(a), the
applicant may provide a title of the design that designates the
particular article in a nonprovisional international design
application. Section 1.1067(a) further provides that, where a
nonprovisional international design application does not contain a
title of the design, the Office may establish a title. In determining
the title, the Office may look to the particular article specified in
the claim.
Section 1.1067(a) also provides for a brief description of the
drawings in a nonprovisional international design application, as for
design applications filed under 35 U.S.C. chapter 16. Section
1.1061(a), discussed supra, makes applicable the rules relating to
applications for patents to international design applications that
designate the United States except as otherwise provided in chapter 37
of the Code of Federal Regulations or required by the Hague Agreement
Articles or Regulations. Section 1.1061(b) in this final rule excludes
from applicability to international design applications the
requirements set forth in § 1.74 for a description of the drawings.
Instead, a requirement for a brief description of the drawings is
provided for in § 1.1067(a) in this final rule. The description
requirement in § 1.1067(a) is consistent with the description
requirement applicable to design applications filed under 35 U.S.C.
chapter 16. See § 1.153 ("No description, other than a reference
to the drawings, is ordinarily required."). The PLTIA provides for
parity in the treatment of international design applications
designating the United States with design applications under 35 U.S.C.
chapter 16, except where otherwise provided by the PLTIA, Hague
Agreement, or Regulations. See, e.g., 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."). Rule 7(5)(a) allows an
applicant to include in the international design application a brief
description of the reproduction even where those items are not required
under Article 5(2). The purpose of Rule 7(5)(a) is to allow applicants
to include these items in the international design application to avoid
a refusal by a designated Contracting Party whose national law requires
such items, though not as a filing date requirement. See, e.g., WIPO,
Notes on the Basic Proposal for the New Act of the Hague Agreement
Concerning the International Registration of Industrial Designs, H/DC/
5, ] 5.09 (Dec. 15, 1998) ("Paragraph (2) [(Article 5(3))] gives
applicants the possibility of including in the international
application, or accompanying it by, those additional elements which are
specified in Rule 7(4) [(Rule 7(5)(a))]. Certain of those elements may
be furnished by applicants in order to avoid refusal by a designated
Contracting Party. If the international application does not contain an
optional element as referred to in Article 5(2) and designates a
Contracting Party that imposes the requirement or requirements
concerned, regularization will not be carried out with the
International Bureau, but with the designated Office that has issued
the refusal."). See also WIPO, Records of the Diplomatic Conference
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for the Adoption of a New Act of the Hague Agreement concerning the
International Deposit of Industrial Designs (Geneva Act) June 16 to
July 6, 1999, 480, ]] 793-94 (2002) (discussing Rule 7 at the 1999
Diplomatic Conference). Contracting Parties to the Hague Agreement may
require items referred to in Rule 7(5)(a) pursuant to their national
law. Applicants are informed of each Contracting Party's national law
requirements in the application for international registration form
(DM/1 form) and corresponding instructions to the application form.
See, e.g., instruction form DM/1.INF, ] 38, currently available at
http://www.wipo.int/hague/en/forms/ (advising applicants that if they
designate certain Contracting Parties, the applicant must provide the
optional item required by such Contracting Party's national law, and
that such item will not be reviewed by the International Bureau).
Section 1.1067(b) is added to provide that, if the applicant is
notified in a notice of allowability that an oath or declaration in
compliance with § 1.63, or a 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. As explained above, Hague Agreement Rule 8
accommodates current U.S. law regarding the inventor's oath or
declaration. Because the presence of the required inventor's oath or
declaration is verified by the International Bureau as part of its
formalities review, 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 § 1.48(a) and
an executed an oath or declaration from the inventor has not been
received. See § 1.48(b). Since the notice of allowability is used
whenever an application has been placed in a condition for allowance
(see MPEP 1302.03), the notice of allowability does not constitute a
refusal of the effects of the international registration, and thus is
not a notification of refusal, notwithstanding any requirement in the
notice of allowability to furnish an item, such as the inventor's oath
or declaration pursuant to § 1.1067.
Section 1.1068: Section 1.1068 is added to provide that, upon
issuance of a patent on an international design application designating
the United States, the Office may send to the International Bureau a
statement to the effect 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 such
a statement is provided for under Hague Agreement Rule 18bis and 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. The statement also serves as a
withdrawal, in part or in whole, of any prior refusal with respect to the
design covered by the patent. See Rule 18bis(2).
Section 1.1069: The Office has decided not to add § 1.1069 in
this final rule. Section 1.1069 concerning a notification of division
is not necessary. The requirements relating to a notification of
division are clearly set forth in Rule 18(3) and Administrative
Instruction 502. Furthermore, having a rule that sets forth
requirements contained in an administrative instruction would
necessitate the need to amend the rule each time the administrative
instruction is changed.
Section 1.1070: Section 1.1070 is added to provide for the sending
of a notification of invalidation to the International Bureau. Article
15 provides that the office of the Contracting Party in whose territory
the effects of the international registration have been invalidated
shall, where it is aware of the invalidation, notify the International
Bureau of the invalidation ("notification of invalidation"). Rule 20
provides that, where the effects of an international registration are
invalidated in a designated Contracting Party and the invalidation is
no longer subject to any review or appeal, the office of the
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Contracting Party whose competent authority has pronounced the
invalidation shall, where it is aware of the invalidation, notify the
International Bureau accordingly. Rule 20 further specifies the
required contents of the notification of invalidation. In accordance
with Article 15 and Rule 20, § 1.1070(a) provides that, where a
design patent that was granted from an international design application
is invalidated in the United States and the invalidation is no longer
subject to any review or appeal, the patentee shall inform the Office.
Section 1.1070(b) provides that after receiving a notification of
invalidation under § 1.1070(a) or through other means, the Office
will notify the International Bureau in accordance with Rule 20.
Section 1.1071: Section 1.1071 is added to provide that a grant of
protection for an industrial design that is the subject of an
international registration shall only arise in the United States
through the issuance of a patent pursuant to 35 U.S.C. 389(d) or 171
and in accordance with 35 U.S.C. 153.
Section 3.1: Section 3.1 is amended to include an international
design application that designates the United States of America within
the definition of "application" for purposes of Part 3 of Title 37 of
the CFR. The change to the definition of "application" in § 3.1
makes clear that assignments (or other documents affecting title) of
international design applications that designate the United States may
be submitted to the Office for recording. The change to § 3.1 is in
accordance with 35 U.S.C. 385, added under the PLTIA, which provides
that an international design application designating the United States
has the effect, for all purposes, of an application for patent filed in
the Office pursuant to 35 U.S.C. chapter 16. 126 Stat. at 1529.
Section 3.21: Section 3.21 is amended to provide that an assignment
relating to an international design application that designates the
United States must identify the international design application by the
international registration number or by the U.S. application number
assigned to the international design application.
Section 5.1: Section 5.1(b) is amended to change the definition of
"application" as used in part 5 of title 37 of the CFR to include
international design applications and for consistency with the
definitions in § 1.9. Section 5.1(b) is also amended to include a
definition of "foreign application" to permit simplification of other
rules contained in part 5.
Section 5.3: Section 5.3(d) is amended to clarify that an
international design application that is subject to a secrecy order
will not be mailed, delivered, or otherwise transmitted to the
international authorities or the applicant.
Section 5.11: The title of § 5.11 is amended to encompass
international design applications and to indicate that the license
authorizes filing and exporting. Section 5.11(a) is amended to clarify
that, just as for filing an international application in the United
States Patent and Trademark Office acting as a Receiving Office under
the PCT, a foreign filing license is not required to file an
international design application in the United States Patent and
Trademark Office acting as an office of indirect filing under the Hague
Agreement. The Office notes that, pursuant to § 5.12, filing of an
international design application constitutes "a petition for license
under 35 U.S.C. 184 for the subject matter of the application."
Sections 5.11(b), (c), (e)(3)(i), and (f) are amended to change
"foreign patent application" to "foreign application," as the
provisions of 35 U.S.C. 184 are not limited to "patent" applications
but include other types of applications, e.g., registrations of
industrial designs. Section 5.11(b) is also amended for consistency
with § 5.11(c) with respect to the citation to regulations
contained in other titles under the Code of Federal Regulations.
Section 5.11(f) is also amended to refer to the Office as the United
States Patent and Trademark Office.
Section 5.12: Section 5.12 is amended for consistency with the
definition of "application" in § 5.1(b) as amended in this final
rule and to indicate that the grant of a foreign filing license may be
on an official notice other than the filing receipt, e.g., in the case
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of international applications filed under the PCT, on the
"Notification of the International Application Number and of the
International Filing Date" (Form PCT/RO/105).
Section 5.13: Section 5.13 is amended to include as a corresponding
application for purposes of this section an international design
application that has been filed in the United States. Thus, if no
corresponding national, international design, or international
application has been filed in the United States, the petition for
license under § 5.12(b) must also be accompanied by a legible copy
of the material upon which a license is desired.
Section 5.14: Section 5.14(c) is amended for clarity to provide
that a copy of the application to be filed or exported abroad must be
furnished with the petition under § 5.14 under the conditions set
forth in § 5.14(c). The copy of the application required under
§ 5.14(c) may be a copy of the international design application to
be filed or exported abroad.
Section 5.15: Section 5.15(a) introductory text and paragraphs
(a)(3), (b), (d) and (e) are amended for consistency with the changes
to §§ 5.1(b) and 5.11 as amended in this final rule.
Section 11.10: Section 11.10(b)(3)(iii) is amended to include
international design application in the definition of patent
application for purposes of § 11.10.
Section 41.200(b): Section 41.200(b) is added to provide that any
reference to 35 U.S.C. 102 or 135 in this subpart refers to the statute
in effect on March 15, 2013, unless otherwise expressly indicated, and
to provide that any reference to 35 U.S.C. 141 or 146 in this subpart
refers to the statute applicable to the involved application or patent.
Section 41.200(b) is added for clarity consistent with the changes made
under the first inventor to file provisions of the AIA.
Section 41.201: The definition of "constructive reduction to
practice" is amended to provide that for a chain of patent
applications to be continuous, each subsequent application must comply
with the requirements of 35 U.S.C. 119-121, 365, or 386. The amended
definition accounts for priority under 35 U.S.C. 386 added by title 1
of the PTLIA as well as priority under 35 U.S.C. 119, 365(b), and
365(c). The definition of "threshold issue" is amended by changing
the reference to 35 U.S.C. 112(a) in paragraph (2)(ii) to 35 U.S.C.
112, as the written description requirement under pre-AIA 35 U.S.C.
112, first paragraph, may be applicable in certain cases.
Comments and Responses to Comments: The Office published a notice
of proposed rulemaking on November 29, 2013, proposing to change the
rules of practice to implement title I of the PLTIA. See Changes To
Implement the Hague Agreement Concerning International Registration of
Industrial Designs, 78 FR 71870 (Nov. 29, 2013). The Office received
seven written submissions containing comments from intellectual
property organizations, academia, a law firm, an individual patent
practitioner, and the general public in response to this notice of
proposed rulemaking. The summarized comments and the Office's responses
to those comments follow:
Closed System
Comment 1: Several comments requested that the Office clarify
whether an international design application that designates the United
States can be assigned to a person who is not entitled to file an
international design application under the Hague Agreement. One of the
comments further suggested that such clarification be made by amending
certain rules affected by a limitation on assignment, in particular
§ 1.46(c) (pertaining to a change in the applicant), §§ 3.21 and 3.24
(pertaining to assignments), and all rules pertaining to actions by the
patent owner (e.g., §§ 1.172 and 1.510). Another comment suggested that
if assignment is restricted, any patent granted on an international
design application should include a notice to the public of the
restriction. A further comment questioned whether any restriction in
transfer of ownership, if applicable to international design applications,
would also apply to continuing applications.
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Response: The PLTIA does not restrict assignment of international
design applications designating the United States, or patents issuing
thereon, to persons entitled to file an application under the Hague
Agreement. 35 U.S.C. 261 provides that "patents shall have the
attributes of personal property," that "[a]pplications for patent,
patents, or any interest therein, shall be assignable in law by an
instrument in writing" and that "[t]he applicant, patentee, or his
assigns or legal representatives may in like manner grant and convey an
exclusive right under his application for patent, or patents, to the
whole or any specified part of the United States." See also GAIA
Techs., Inc. v. Reconversion Techs., Inc., 93 F.3d 774, 777-80 (Fed.
Cir. 1996), as amended on reh'g, 104 F.3d 1296 (Fed. Cir. 1996)
("Patents . . ., like other personal property, may be conveyed from
the inventor . . . to others. . . ."). Title I of the PLTIA did not
change 35 U.S.C. 261 or otherwise restrict to whom an international
design application or patent issuing thereon may be assigned.
The fact that the Hague Agreement is a closed system, in that only
persons who meet certain criteria may file an international design
application, does not restrict the ability to transfer ownership in the
application (or resulting patent) to a person not entitled to file
under the system. Similar to Hague applicants, applicants in
international applications filed under the PCT must be nationals or
residents of PCT Contracting States in order to file international
applications. See PCT Article 9. Also, U.S. national law does not
restrict the ability of PCT applicants to assign PCT applications
designating the United States to persons not entitled to file
applications under the PCT. See, e.g., § 3.1 (defining
"application" for purposes of the rules governing assignments to
broadly include "international [PCT] applications that designate the
United States"); § 3.21 (specifying only an identification
requirement for assignments relating to international patent
applications that designate the United States). In contrast, applicants
filing for trademark protection under the Madrid Protocol are barred
from assigning an extension of protection to a person who is not
entitled to file the application under the Madrid Protocol (see, e.g.,
§ 7.22 (providing that Section 10 of the Lanham Act and 37 CFR part
3 are not applicable to assignments or restrictions of international
registrations)). This is because the Madrid Protocol Implementation Act
of 2002, unlike the PLTIA and legislation implementing the PCT,
expressly restricts assignment. See 15 U.S.C. 1141l ("An extension of
protection may be assigned, together with the goodwill associated with
the mark, only to a person who is a national of, is domiciled in, or
has a bona fide and effective industrial or commercial establishment
either in a country that is a Contracting Party or in a country that is
a member of an intergovernmental organization that is a Contracting
Party.").
Furthermore, Article 16 of the Hague Agreement provides only that
the International Bureau shall record changes in ownership of the
international registration in the International Register, provided that
the new owner is entitled to file an international application under
Article 3. See Article 16(1)(i). Recording changes in ownership by the
International Bureau in the International Register is a separate issue
from whether an international design application can be assigned or
otherwise transferred under national law. The Hague Agreement does not
govern the validity of ownership changes. See WIPO, Guide to the
International Registration of Industrial Designs under the Hague
Agreement, B.II.46, ] 13.04 (Jan. 2014) ("Furthermore, the issue of
the recording of a change in ownership in the International Register
must be distinguished from that of the validity of such change in
ownership. The Hague Agreement does not set out, for example, the
conditions to be met regarding the validity of a deed of assignment
relating to an international registration. These conditions are, and
remain, governed exclusively by the relevant domestic legislation, and
may therefore vary from one Contracting Party to another (e.g., the
need for execution of a document in writing certifying the assignment,
proof of the age of the parties in order to assess their legal
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entitlement, etc.)."). See also id. at ] 13.05 ("The Hague Agreement
provides only for the requirements to be complied with in order to
validly record a change in ownership in the International Register.").
One comment suggested amending § 1.46(c) to clarify whether an
international design application designating the United States can be
amended to name an applicant who is not entitled to file under the
Hague Agreement. The Office does not deem clarification necessary. Who
qualifies to be an applicant for a designated Contracting Party is a
matter of national law. The PLTIA does not expressly state who is
qualified to be an applicant for an international design application
designating the United States, but otherwise indicates that a qualified
applicant does not differ from a person qualified to be an applicant for
a national design application under 35 U.S.C. 171-73. See section 101(a)
of the PLTIA (adding 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."); 35 U.S.C. 382(c) ("Except as otherwise provided in this
chapter, the provisions of chapter 16 shall apply."); and 35 U.S.C. 383
("In addition to any requirements pursuant to chapter 16, the international
design application shall contain . . . .")). 126 Stat. at 1528-30.
Pursuant to 35 U.S.C. 118, as amended under the AIA, an assignee may be
an applicant in a patent application. As explained above, the assignee
of an international design application designating the United States
may be a person not entitled to file an application under the Hague
Agreement. In accordance with 35 U.S.C. 118, such person may be named
as an applicant in the international design application pursuant to the
provisions of § 1.46(c). This is also consistent with applicant
changes made pursuant to § 1.46(c) in the U.S. national phase of
PCT international applications. Because the Office does not consider
the PLTIA to prohibit assigning an international design application
designating the United States to a person not entitled to file an
application under the Hague system, the rules do not provide for any
restriction on assignment.
Comment 2: One comment suggested that a U.S. patent issuing from an
international design application be identified as an "international
design patent" to clarify that rights are subject to the Hague
Agreement, with its closed system features, for example, only
membership participation, assignment of International Registration
rights, and renewal features.
Response: A U.S. patent issued on an international design
application will include information on the front page that will
indicate that the patent issued on an international design application.
But identifying a U.S. patent issued on an international design
application as an "international design patent" may lead to confusion
among the public and others as to the scope of protection arising under
the patent. A patent issued on an international design application
designating the United States has the force and effect of a patent
issued on an application filed under 35 U.S.C. chapter 16. See 35
U.S.C. 389(d).
Continuing Applications, Continued Prosecution Applications, and
Converted Applications
Comment 3: One comment requested that the Office provide for
continued prosecution applications (CPAs) in international design
applications. The comment asserts that CPAs provide for quick
resolution of remaining issues in prosecution, have lower filing fees
than continuation applications, provide provisional rights, and are
required under the PLTIA. Alternatively, the comment requests that the
Office either expedite or prioritize examination of a continuation
application claiming priority to an international design application in
limited circumstances, or provide a conditional petition procedure
whereby a petition could be filed after allowance that would permit
consideration of an information disclosure statement or other matter
after allowance and the petition would constitute the filing of a
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continuation application if the examiner determines that new issues are
raised.
Response: The final rules do not provide for the filing of a CPA in
an international design application. The Office created CPAs for all
applications following the change in patent term for utility
applications from 17 years from issuance to 20 years from filing. The
primary reason for creating CPAs was to minimize any reduction in
patent term for continuing utility applications caused by new
application processing by eliminating the need to assign the continuing
application a new application number and filing date. See 1996 Changes
to Patent Practice and Procedure, 61 FR 49820, 49825 (Sept. 23, 1996).
A CPA is a streamlined continuation or divisional application under 35
U.S.C. 120 whose filing date is the date on which the request for a CPA
is filed. See § 1.53(d)(2) (providing that the filing date of a
continued prosecution application is the date on which a request on a
separate paper for an application under this paragraph is filed). A
request for a CPA constitutes a request to expressly abandon the
earlier application and to use the file jacket and contents of the
prior application. See § 1.53(d)(2)(iv), (v).
Subsequently, in the American Inventors Protection Act, Congress
added request for continued examination (RCE) practice for utility and
plant applications, while simultaneously providing for publication of
applications 18 months from filing and provisional rights from the date
of publication. See Request for Continued Examination Practice and
Changes to Provisional Application Practice, 65 FR 50092-101 (Aug. 16,
2000); 35 U.S.C. 132(b). Since an RCE is not a new application that is
separately published, the provisional rights period continues from the
original publication date. See 35 U.S.C. 154(d)(1). RCE practice was
not extended to U.S. design applications, which are not published. See
35 U.S.C. 132 ed. note. The Office eventually eliminated CPA practice
for all applications except U.S. design applications. See Elimination
of Continued Prosecution Application Practice as to Utility and Plant
Patent Applications, 68 FR 32376-81 (May 30, 2003).
A patent issuing on a CPA would not be entitled to provisional
rights based on the prior publication of the international design
application under the treaty, as asserted in the comment. Pursuant to
35 U.S.C. 154(d)(1), provisional rights begin on "the date of
publication of the application for such patent" under 35 U.S.C.
122(b). As previously explained, a CPA is a continuation or divisional
application of the prior application. See § 1.53(d)(1) (providing
that a continuation or divisional application (but not a continuation-
in-part) of a prior nonprovisional application may be filed as a
continued prosecution application under the paragraph); § 1.78(d)(4)
(providing that 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 filing of a CPA operates as an express
abandonment of the prior application as of the filing date of the CPA
request. See § 1.53(d)(2)(v) (providing that a CPA is a request to
expressly abandon the prior application as of the filing date of the
request for a CPA). Accordingly, a patent issuing on a CPA obtains
provisional rights only from the date of its publication, not from the
date of publication of the earlier application. U.S. design applications
are not published and do not qualify for provisional rights. See 35 U.S.C.
122(b)(2)(A)(iv); 35 U.S.C. 154(d)(1). Thus, even if the filing of a CPA
from an international design application were permitted, a design patent
issuing from the CPA would not be entitled to provisional rights because
the CPA is not published. While an RCE is not a new application, and thus
permits extension of the provisional rights period from the date of the
earlier publication, RCE practice is not available for U.S. design
applications.
A CPA of an earlier U.S. design application is possible because the
prior application has already been reviewed by the Office for compliance
with the same statutory and regulatory requirements applicable to the CPA,
thus eliminating the need for a separate review of the CPA. See § 1.53(d)
(1)(ii) (providing that the prior nonprovisional application is a design
application that is complete as defined by § 1.51(b)). No such efficiencies
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exist so as to permit the filing of a CPA from an international design
application. The Office will not be performing a formalities review of
international design applications designating the United States prior to
examination. Instead, the International Bureau will review international
design applications for compliance with the applicable treaty requirements.
A CPA is a U.S. design application under 35 U.S.C. chapter 16, not an
international design application under the Hague Agreement.
Consequently, a CPA is subject to different statutory and regulatory
requirements than international design applications. Compare 35 U.S.C.
171-173 with 35 U.S.C. 381-390; compare 37 CFR 1.151-1.155 with final
rules §§ 1.1001-1.1071. For example, an international design
application and CPA are subject to different filing date requirements
(compare 35 U.S.C. 171(c) with 35 U.S.C. 384) and different content
requirements (e.g., regular U.S. design applications are required under
§ 1.153 to include a title; no such formal requirement applies to
international design applications). In addition, as discussed above, an
international design application is published and entitles the holder
to provisional rights, whereas a CPA does not. Compare 35 U.S.C. 390
with 35 U.S.C. 122(b)(2)(A)(iv); see also 35 U.S.C. 154(d). Given these
differing requirements, the same opportunity for streamlined
continuation practice does not exist.
Furthermore, international design applications filed with the
Office will be assigned a U.S. application number having a series code
unique to international design applications to distinguish such
applications from other applications filed with the Office. Allowing a
design application filed under 35 U.S.C. chapter 16 to use an
application number associated with international design applications
may lead to confusion and errors in processing the application under
the different requirements applicable to international design
applications and applications filed under 35 U.S.C. chapter 16. In
addition, use of the same application number for both the CPA and the
international design application would significantly complicate the
changes needed to the Office's IT systems to support the small number
of applications that would be affected. For example, the notice of
allowance, processing of issue fee payments, and formal objections that
may be applicable under examination differ between international design
applications and design applications filed under 35 U.S.C. chapter 16.
The fees associated with the filing of a CPA are not lower than the
fees associated with the filing of a continuing design application, as
stated in the comment. Rather, the fees are the same. See § 1.53(d)(3)
(providing that the filing fee, search fee, and examination fee for a
continued prosecution application filed under this paragraph are the
basic filing fee as set forth in § 1.16(b), the search fee as set forth
in § 1.16(l), and the examination fee as set forth in § 1.16(p)).
The comment asserts that not permitting CPAs appears to be contrary
to the explicit language and intent of 35 U.S.C. chapter 38 and the
other portions of the proposed rules. The comment points to, inter
alia, 35 U.S.C. 382(c), 35 U.S.C. 384(a), and the proposed rules with
respect to examination and general filing requirements, which are
modeled after the current treatment of 35 U.S.C. chapter 16
applications before the Office. The PLTIA, including the provisions
cited to in the comment, generally provides for applicability of the
requirements of 35 U.S.C. chapter 16 to international design
applications designating the United States except where otherwise
provided under title 35, United States Code, or required by the Hague
Agreement or Hague Agreement Regulations. CPA practice, however, is not
a requirement of 35 U.S.C. chapter 16. Rather, as previously explained,
CPAs were created by regulation as a streamlined continuation practice
under 35 U.S.C. 120. A CPA is a U.S. application and is just like any
other design application filed under 35 U.S.C. chapter 16. Not
permitting CPAs claiming priority to international design applications
is not inconsistent with any provision of 35 U.S.C. chapter 38.
The Office has not adopted, as recommended by the commentor, rules
to prioritize or expedite examination of a continuation application of
an international design application in limited circumstances.
Prioritizing or expediting examination of continuation applications
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would present an administrative burden for the Office in identifying
those continuation applications that qualify for expedited treatment.
Furthermore, Office records show that CPAs are currently filed in less
than 3% of design applications. Also, the number of international
design applications is anticipated to be, at least initially, a small
fraction of total design applications filed with the Office. In 2013,
2,990 international design applications were filed via the Hague
system, whereas 35,077 design applications were filed with the Office
under 35 U.S.C. chapter 16. The Office is reluctant to develop new and
complicated procedures at this time to accommodate a handful of
applications, especially since the procedures could negatively impact
administrative efficiency in processing all continuing applications
filed with the Office. Applicants desiring expedited examination in
continuation applications may utilize the "rocket docket" procedure
pursuant to § 1.155.
The Office also has not adopted rules to provide for a conditional
petition procedure to allow for consideration of an information
disclosure statement (or other issue) after allowance wherein the
petition would constitute the filing of a continuation application if
the examiner determines a new issue is raised. Section 1.97 currently
provides for consideration of an information disclosure statement filed
after allowance but on or before payment of the issue fee, when
accompanied by the fee set forth in § 1.17(p) and statement
required under § 1.97(e). See § 1.97(d). Office records
indicate that in 2012, only 14 CPAs were filed with an information
disclosure statement on or after the date of payment of the issue fee.
Further, this number corresponds to the larger pool of regular design
applications and would be expected to be even less for the smaller pool
of international design applications. As with the suggestion to
expedite continuations, the Office is hesitant to develop new and
complicated procedures at this time to account for a nominal number of
potentially affected international design applications, as this may
negatively impact administrative efficiency in processing all design
applications. The Office intends to reconsider the need for further
procedures after the Office gains more experience in processing
international design applications and as the number of filings
increases.
Comment 4: One comment questioned whether the filing of a
divisional application of an international design application (or
electing not to file a divisional application) will have a "file
wrapper estoppel" impact on interpretation of the claim of a patent on
the international design application, given the recent Federal Circuit
decision in the Pacific Coast Marine Windshields Ltd. v. Malibu Boats,
LLC, No. 13-1199 (Fed. Cir. Jan. 8, 2014), holding that principles of
file wrapper estoppel are applicable to design patents.
Response: The doctrine of file wrapper estoppel is applied by
courts to limit the application of the doctrine of equivalents in
determining patent infringement. The doctrine of file wrapper estoppel
prohibits a patent owner from recapturing subject matter deliberately
surrendered during the course of proceedings in the Office to obtain
the patent. Since it is the courts, not the Office, that determine the
reach of file wrapper estoppel, the Office cannot predict whether
courts will apply file wrapper estoppel where an applicant files a
divisional application of an international design application or elects
not to file a divisional application. The Office notes, however, that
the PLTIA generally provides for parity in treatment between design
applications filed under 35 U.S.C. chapter 16 and international design
applications designating the United States. See, e.g., 35 U.S.C. 389(d)
("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.").
Local Representation
Comment 5: Several comments expressed concern that unscrupulous
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persons not registered to practice before the Office ("non-
practitioners") may utilize the Hague system to procure U.S. design
patents and not be subject to the U.S. disciplinary rules set forth in
37 CFR part 11 concerning representation of others before the Office.
One comment encouraged the Office to work with the International Bureau
to implement procedures for disciplining and sanctioning
representatives filing international design applications through the
International Bureau. The comment also suggested that even if
unscrupulous non-practitioners are subject to the disciplinary rules
set forth in 37 CFR part 11 or other judicial discipline or sanction,
the effectiveness of appropriate discipline or sanction could be
reduced where such non-practitioners are based outside the United
States. Accordingly, the comment recommends the promotion of high
standards of conduct for practitioners and non-practitioners in all
jurisdictions. One comment requested the Office to be mindful of new
scams that may arise to exploit the Hague Agreement and to work with
the International Bureau and Federal Trade Commission to address
strategies for stopping such scams if and when they arise.
Response: The Office appreciates the concerns raised in the
comment. The Office notes that a party presenting a paper to the
Office, whether a practitioner or non-practitioner, certifies, among
other things, that statements made are true and formed after an inquiry
reasonable under the circumstances. See § 11.18(b). The Office
maintains jurisdiction over persons not registered or recognized to
practice before the Office who provide or offer to provide any legal
services before the Office. See § 11.19(a). Such jurisdiction
extends to practice that may include presentation to the Office or any
of its officers or employees relating to a client's rights, privileges,
duties, or responsibilities under the laws or regulations administered
by the Office for the grant of a patent and includes preparing
necessary documents in contemplation of filing the documents with the
Office, corresponding and communicating with the Office, and
representing a client through documents or at interviews, hearings, and
meetings, as well as communicating with and advising a client
concerning matters pending or contemplated to be presented before the
Office. See § 11.5(b).
The Office recognizes that the provisions of 37 CFR part 11 may not
serve to deter all improper activity or conduct in connection with
applications filed under the Hague Agreement. The Office will endeavor
to explore with the International Bureau steps that may be taken to
address the concerns raised in the comment and to promote high
standards of conduct for practitioners and non-practitioners in all
jurisdictions.
The Office also notes that it maintains a Scam Prevention page on
its Web site (http://www.uspto.gov/inventors/scam_prevention/index.jsp),
which contains relevant information regarding scam prevention and includes
links to the Federal Trade Commission Web site where individuals may find
information regarding consumer protection resources. Furthermore, under
the American Inventors Protection Act of 1999, the Office does provide,
through this Web site, a public forum for the publication of complaints
concerning invention promoters/promotion firms. In addition, the Web site
identifies known scams concerning non-Office solicitations. Warnings of
scam solicitations have also been published by the International Bureau
in connection with international applications filed under the Patent
Cooperation Treaty. See, e.g., WIPO, Warning: Requests for Payment of Fees,
http://www.wipo.int/pct/en/warning/pct_warning.html.
Comment 6: One comment questioned whether the duty of disclosure
under § 1.56 is applicable to non-practitioners and the applicants
they represent who obtain U.S. design patents on international design
applications through dealings exclusively with the International
Bureau.
Response: Section 1.56(a) provides that each individual associated
with the filing and prosecution of a patent application has a duty of
candor and good faith in dealing with the Office, which includes a duty
to disclose to the Office all information known to that individual to
be material to patentability. Section 1.56(c) further provides that
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individuals associated with the filing or prosecution of a patent
application for purposes of § 1.56 are: each inventor named in the
application; each attorney or agent who prepares or prosecutes the
application; and 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.
An international design application designating the United States
has the effect of a U.S. patent application and thus is subject to
§ 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."). Thus, pursuant to §
1.56(c), non-practitioners 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 § 1.56. The
duty under § 1.56 does not apply to applicants per se, as an
applicant may be a legal entity and thus not an "individual" as
required under § 1.56(a), but the duty does apply to inventors (who
may be applicants) and to every 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. See also MPEP 2001.01 ("The word
`with' appears before `the assignee' and `anyone to whom there is an
obligation to assign' to make clear that the duty applies only to
individuals, not to organizations. For instance, the duty of disclosure
would not apply to a corporation or institution as such. However, it would
apply to individuals within the corporation or institution who were
substantively involved in the preparation or prosecution of the
application, and actions by such individuals may affect the rights of
the corporation or institution.").
Examination
Comment 7: One comment suggested that a rule should be added to
confirm the Office's ability to continue to prosecute an international
design application after the Office sends a notification of refusal,
for example, where new prior art is discovered after the notification
of refusal is sent.
Response: The Office agrees that prosecution may continue in an
international design application after the Office sends a notification
of refusal and that the Office may, where appropriate, apply newly
discovered prior art to reject the claimed invention in a subsequent
Office action. International design applications that designate the
United States are required to be examined pursuant to title 35, United
States Code. See 35 U.S.C. 389(a); § 1.1062(a). Reexamination of
the application, if applicant persists in his or her claim for a patent
after receiving notice of a rejection, is provided by statute. See 35
U.S.C. 132. Further, a patent shall issue only if on examination it
appears that the applicant is entitled to a patent under the law. See
35 U.S.C. 131. Examination procedures and rules applicable to domestic
applications apply to international design applications that designate
the United States, except as otherwise provided in the rules or
required by the Hague Agreement Articles or Regulations. See 35 U.S.C.
389(b); § 1.1061. Thus, for example, any reply under § 1.111 to
a notification of refusal rejecting the claimed design will be
considered and the application again examined, and the applicant
notified in an Office action which, if appropriate, may be made final.
See §§ 1.112, 1.113. Accordingly, no rule changes are
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necessary.
Comment 8: One comment questioned whether consideration has been
given as to whether an improper broadening of the disclosure would
result where formal drawings are provided to the Office in compliance
with U.S. practice that do not include a portion of the design as shown
in a photograph (or other depiction) that was originally filed in the
international design application, or show a portion of the photograph
content in dotted lines. The comment also asked whether guidelines will
be forthcoming.
Response: International design applications designating the United
States are subject to the same substantive conditions for patentability
as regular U.S. applications, including the written description
requirement under 35 U.S.C. 112(a). The Office will consider whether an
amendment to the specification, drawings, or claim is improper under 35
U.S.C. 112(a) or 132 for reasons of new matter in accordance with the
MPEP 1504.04 ("An amendment to the claim which has no antecedent basis
in the specification and/or drawings as originally filed introduces new
matter because that subject matter is not described in the application
as originally filed. The claim must be rejected under 35 U.S.C. 112(a)
(or for applications [filed] prior to September 16, 2012, 35 U.S.C.
112, first paragraph). An amendment to the disclosure not affecting the
claim (such as environment in the title or in broken lines in the
drawings), which has no antecedent basis in the application as
originally filed, must be objected to under 35 U.S.C. 132 as lacking
support in the application as originally filed and a requirement must
be made to cancel the new matter."). The Office will consider whether
a particular design application, including any amended drawings, meets
the written description requirements on a case-by-case basis.
The Office recently hosted a roundtable discussion regarding
application of the written description requirement to amended or
continuation design claims. See Request for Comments and Notice of
Roundtable Event on the Written Description Requirement for Design
Applications, 79 FR 7171 (Feb. 6, 2014). The notice and roundtable
sought public input regarding specific instances where an amendment in
a design application may raise a question as to whether the applicant
had possession of the newly claimed design at the time of filing the
original application. The Office will consider the written comments
received in response to that notice and roundtable and will evaluate
when drafting any further guidance.
Comment 9: One comment questioned what operative dates will be used
for response times for communications transmitted to the International
Bureau for forwarding to the applicant.
Response: Communications transmitted by the Office to the
International Bureau for forwarding to the applicant will indicate a
time period for reply, where a reply to the communication is required
by the Office. See, e.g., § 1.1063(a)(4).
Comment 10: One comment requested that the Office clarify that the
rules applicable to design applications filed under chapter 16 apply to
design applications that are converted from international design
applications pursuant to § 1.1052.
Response: This final rule revises § 1.1052 to include a new
paragraph (d) to clarify that an international design application
converted under § 1.1052 is subject to the regulations applicable
to a design application filed under 35 U.S.C. chapter 16.
Comment 11: Several comments requested that the Office clarify that
continuing applications, including divisional applications, that claim
benefit to an international design application under § 1.78 are
subject to the rules governing domestic national applications.
Response: A continuing application that claims benefit under
§ 1.78 to an international design application may be filed as a national
application or as an international design application. See 35 U.S.C.
386(c). A continuing design application, including a divisional design
application, filed under 35 U.S.C. chapter 16 is subject to the rules
governing domestic national design applications, e.g., §§
1.151-1.155. In contrast, a continuing application filed as an
international design application is subject to the requirements of the
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Hague Agreement and the rules applicable to international design
applications.
Comment 12: One comment requested that the Office notify the
applicant of the need to file a certified copy of a foreign priority
document required under § 1.55 and the time limit to furnish the
certified copy. The comment indicated that many applicants may not have
retained U.S. counsel and may be unaware of the requirement to provide
the certified copy prior to payment of the issue fee.
Response: Where an application includes a priority claim under
§ 1.55 but the required certified copy of the priority document has
not been filed, examination procedures provide for applicant
notification that the certified copy has not been filed as required by
§ 1.55. See MPEP 214.03, 1302.06. In addition, the requirement in former
§ 1.55(g) for payment of the processing fee set forth in § 1.17(i) where
the certified copy is filed after the date the issue fee is paid has been
eliminated from § 1.55 in this final rule. Furthermore, § 1.55(g) in this
final rule sets forth a petition procedure to permit the filing of the
certified copy in a patented design application upon a showing of good
and sufficient cause for the delay and petition fee set forth in
§ 1.17(g). The petition procedure in § 1.55(g) corresponds to the
petition procedure under § 1.55(f) applicable to utility applications.
Comment 13: One comment requested that a continuing application
from an international design application not be subject to the petition
requirement under § 1.84(a)(2) to accept color drawings and/or
photographs, as the drawings and/or photographs would have already been
accepted in the international design application. The comment further
requests that the Office consider eliminating the petition requirement
under § 1.84(a)(2) altogether.
Response: This comment has been adopted as to design applications.
Section 1.84(a)(2) has been amended to remove the requirement for a
petition in order for the Office to accept color drawings or
photographs in design applications. Applicants will still be required
to include the reference to the color drawings or photographs in the
specification as set forth in § 1.84(a)(2)(iii) to provide notice
in the patent of the submission of color drawings or photographs.
Because there is rarely a need to file color drawings or photographs in
utility applications, and there are operational concerns with
permitting color drawings or photographs in utility applications, the
Office has not eliminated the petition requirement for color drawings
or photographs in utility applications at this time but may reconsider
the matter at a later date.
International Fees
Comment 14: Several comments requested that the Office quickly
transfer international fees paid through the Office to the
International Bureau to minimize the risk of currency fluctuations. One
comment further requested that the Office receive same-day confirmation
of fees received by WIPO in Swiss currency, indicating a concern that
fee deficiency may result in a delayed registration date and,
consequently, a delayed filing date in the United States under § 1.1023.
Response: The Office intends to transfer international fees to the
International Bureau as quickly as possible. The Office plans to
transmit international design application fees once the Office receives
the international design application, the applicant has paid the Office
the transmittal fee, and the Office has transmitted the international
design application to the International Bureau. The Office does not
transmit fees directly to the International Bureau in Swiss currency.
Rather, such fees are forwarded to the Department of Treasury for
transmission to the International Bureau. Accordingly, the Office
cannot receive same-day confirmation of fees received by the
International Bureau in Swiss currency. Applicants may establish a
debit account directly with the International Bureau (see Response to
Comment 15) and receive confirmation upon electronic payment of fees.
Alternatively, applicants may simply wait for the invitation from the
International Bureau and pay the international fees directly to the
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International Bureau. The international registration date is not
dependent upon the date of payment of the prescribed fees. See Article
10(2); Rule 14(2). Accordingly, the later payment of a fee deficiency
will not result in a later international registration date and,
consequently, will not affect the filing date in the United States
under § 1.1023.
Comment 15: One comment requested that applicants be advised as to
any options pertaining to a deposit account with WIPO to account for
fee discrepancies.
Response: Section 1.1031(d)(1) provides for payment of
international fees directly to the International Bureau and references
Administrative Instruction 801, which sets forth the various methods of
payment accepted by the International Bureau, including payment by
deposit account established with the International Bureau. In addition,
the international design application DM/1 form includes a fee payment
section that informs applicants of the option to use a deposit account
established with the International Bureau.
Comment 16: One comment requested that the Office prompt applicants
filing international design applications through the Office with a link
to pay fees directly to WIPO to avoid fee discrepancies.
Response: The system used by the International Bureau to process
international design applications and applicable fees does not
currently have the capability to electronically accept fees except
where applicants file the application directly with the International
Bureau through its e-filing interface. The Office will endeavor to work
with the International Bureau to provide for such functionality in the
future.
Comment 17: One comment requested that the Office amend § 1.1031 to
include a provision that international registration renewal fees are not
required to maintain a U.S. design patent in force. In addition, to avoid
public confusion and detrimental reliance by giving the impression that a
U.S. design patent may have lapsed or expired if the registration is not
renewed, the comment requests that the Office encourage the International
Bureau to adjust its current Certificate of Renewal and renewal system to
reflect U.S. practice.
Response: This comment is adopted. The final rule revises § 1.1031 to
include a new paragraph (e) to provide that payment of the fees referred
to in Article 17 and Rule 24 for renewing an international registration
("renewal fees") is not required to maintain a U.S. patent issuing on an
international design application in force. The Office appreciates the
concerns with respect to the current Certificate of Renewal process as it
relates to U.S. practice and will endeavor to work with the International
Bureau on this matter.
Comment 18: One comment suggests that the Office provide a new rule
expressly stating that the International Bureau handles international
registration renewal fees and that the Office will not process those
fees.
Response: This comment is adopted. The final rule revises § 1.1031 to
include a new paragraph (e) to provide that renewal fees, if required,
must be submitted directly to the International Bureau and that any renewal
fee submitted to the Office will not be transmitted to the International
Bureau. Any renewal fee paid to the Office will be refunded.
Miscellaneous
Comment 19: One comment requested the Office to modify proposed
rule § 1.1027 by moving the second sentence concerning the
prohibition on deferment of publication to a new rule so that the
prohibition is made more prominent. The comment also requested that the
Office promptly inform applicants of improper requests for deferment of
publication.
Response: This final rule revises § 1.1027 as suggested and
adds a new rule § 1.1028 ("Deferment of publication") to make
more prominent that a request for deferment of publication is not
permitted in an international design application that designates the
United States or other country that does not permit deferment of
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publication. With regard to review of requests for deferment and
notification to applicants of improper requests under the Hague Agreement,
the International Bureau performs this function. See Article 11(3).
Comment 20: One comment requested that the Office consider the
option under the Hague Agreement of receiving all deferred
international registrations at the time of international registration.
The comment suggested that a copy of the international registration may
be useful in making a determination as to whether the design is
"patented" for purposes of 35 U.S.C. 102(a). The comment also raises
as a further consideration the prior art effect of a deferred
international registration under 35 U.S.C. 102 (pre-AIA and AIA) and
suggests that the international registration may be prior art at the
time of publication, and consequently, no advance notice of the
deferred international registration would be needed for examination as
U.S. design examiners have access to the WIPO Bulletin online for
search purposes.
Response: Where publication of the international registration has
been deferred, the Office cannot receive a copy of the international
registration at the time of international registration from the
International Bureau. While Article 10(5) allows a designated office to
obtain a copy of the international registration immediately after
registration, the United States cannot be designated where publication
has been deferred. See § 1.1028.
Where the United States is designated (and thus there is no
deferment of publication), the Office will receive the published
international registration approximately six months from the date of
international registration, or immediately after international
registration where immediate publication was requested. See Rule 17(1).
At the present time, the Office does not plan to obtain a copy of the
international registration from the International Bureau prior to
publication pursuant to Article 10(5), as the Office is prohibited from
sending a notification of refusal prior to publication of the
international registration, thus limiting the usefulness in obtaining a
copy of the international registration prior to publication. With
regard to use of an unpublished international registration as a
"patented" invention for purposes of 35 U.S.C. 102(a), a secret
patent is not available as prior art under 35 U.S.C. 102(a) until it is
available to the public. See In re Carlson, 983 F.2d 1032, 1037 (Fed.
Cir. 1992); MPEP 2126; Examination Guidelines for Implementing the
First-Inventor-to-File Provisions of the Leahy-Smith America Invents
Act, 77 FR 43759, 43764 (July 26, 2012) ("The phrase `patented' in AIA
35 U.S.C. 102(a)(1) has the same meaning as `patented' in pre-AIA 35
U.S.C. 102(a) and (b).").
Comment 21: One comment complimented the Office on its road show
educational programs in general, and particularly the Forum that was
held January 14, 2014, to discuss the proposed rule changes to
implement the Hague Agreement. The comment suggested that the Office
should have more frequent road shows, education programs, and webinars
concerning the Hague Agreement.
Response: The Office will endeavor to have additional public
outreach concerning implementation of the Hague Agreement.
Comment 22: One comment requested that the Office provide a rule
that states that no design rights under an international design
application that designates the United States exist until a U.S. design
patent actually issues from the international design application. The
comment asserts that there could be instances where a patent does not
issue within the period set forth in Rule 18(c), or a refusal is
inadvertently not sent during the refusal period, raising an
inconsistency between the lack of issuance of a U.S. design patent and
Article 14(2)(a).
Response: This final rule adds § 1.1071 to clarify that a grant
of protection for an industrial design that is the subject of an
international registration shall only arise in the United States
through the issuance of a patent pursuant to 35 U.S.C. 389(d) or 171,
and in accordance with 35 U.S.C. 153. As explained in the notice of
proposed rulemaking (see 78 FR 71870, 71886) and in this final rule,
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the Office does not regard the failure to send a notification of
refusal within the period referenced in § 1.1062(b) to confer
patent rights or other effect under Article 14(2). The PLTIA provides
for enforceable rights upon issuance of a patent. See 35 U.S.C. 389(d);
35 U.S.C. 385.
Comment 23: Two comments suggested that U.S. law should be amended
to provide for publication of design applications filed under 35 U.S.C.
chapter 16 and that patent term for design patents should be 20 years
from filing rather than 15 years from issuance.
Response: As the exclusion from publication of design applications
filed under 35 U.S.C. chapter 16 and patent term are statutory
provisions (see 35 U.S.C. 122(b)(2)(A)(iv); 35 U.S.C. 173), any changes
would require legislation.
Rulemaking Considerations
A. Administrative Procedure Act: This rulemaking implements title I
of the PLTIA and the Hague Agreement. The changes in this rulemaking
(except for the setting of some fees) establish procedures for the
filing, processing, and examination of international design
applications and revise existing rules of practice to account for
international design applications in accordance with title I of the
PLTIA and to ensure that the rules of practice are consistent with the
Hague Agreement. In addition, as to the applicability dates for certain
provisions in existing rules, this final rule makes those applicability
dates more accessible by stating them directly in the body of those
rules. Therefore, the changes in this rulemaking involve rules of
agency practice and procedure, and/or interpretive rules. See Bachow
Commc'ns, Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (Rules
governing an application process are procedural under the
Administrative Procedure Act.); Inova Alexandria Hosp. v. Shalala, 244
F.3d 342, 350 (4th Cir. 2001) (Rules for handling appeals are
procedural where they do not change the substantive standard for
reviewing claims.); Nat'l Org. of Veterans' Advocates v. Sec'y of
Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (Rule that
clarifies interpretation of a statute is interpretive.).
Accordingly, prior notice and opportunity for public comment for
these changes are not required pursuant to 5 U.S.C. 553(b) or (c) (or
any other law). See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37
(Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C.
2(b)(2)(B), does not require notice and comment rulemaking for
"interpretative rules, general statements of policy, or rules of
agency organization, procedure, or practice" (quoting 5 U.S.C.
553(b)(A))). The Office, however, published the proposed changes for
comment because it sought the benefit of the public's views on the
Office's implementation of title I of the PLTIA and the Hague
Agreement.
B. Regulatory Flexibility Act: This final rule revises the rules of
practice to implement title I of the PLTIA. The changes to the rules of
practice in this final rule involve: (1) The establishment of
procedures for the filing, processing, and examination of international
design applications; and (2) the revision of existing rules of practice
to account for international design applications. In addition, as to the
applicability dates for certain provisions in existing rules, this final
rule makes those applicability dates more accessible by stating them
directly in the body of those rules. The final rules impose no additional
required burdens on any applicant, since seeking design protection by
filing an international design application is merely an optional
alternative to seeking design protection by filing a national design
application. The final rules will benefit applicants by streamlining the
process for obtaining international protection of an industrial design in
Contracting Parties to the Hague Agreement by the filing of a single,
standardized international design application in a single language.
As of 2014, there are over 60 Contracting Parties that are members
to the Hague system. In 2013, the most recent year available, 2,990
international design applications were filed via the Hague system. In
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that same year, 2,734 international design registrations issued through
the Hague system. In comparison, in fiscal year 2013, the USPTO
received 35,077 design applications and issued 22,453 design patents.
Approximately 50% of the design applications filed in 2013 were filed
by an entity claiming small entity status. None of the final rules
disproportionately affect small entities.
The fees and requirements referenced in this final rulemaking do
not have a significant economic impact because they are comparable to
the fees and requirements an applicant has in a national design
application. Section 385 requires that an "international design
application designating the United States shall have the effect, for
all purposes from its filing date . . . of an application for patent
filed in the Patent and Trademark Office pursuant to chapter 16." Such
fees include an issue fee, if applicable, paid directly to the USPTO,
and a petition fee for review of a filing date.
The USPTO sets only two new fees based on cost recovery: (i) A
transmittal fee, payable to the USPTO for transmitting the
international design application to WIPO when an applicant files the
application through the USPTO as an office of indirect filing, and (ii)
a petition fee when an applicant seeks to have the Office convert an
international design application to a national design application under
35 U.S.C. chapter 16. The transmittal fee is set at $120. The USPTO
estimates that approximately 1,000 applications designating the United
States will be filed annually either through the USPTO as an office of
indirect filing or with WIPO. The USPTO estimates that 900 of these
applications will be filed through the USPTO as an office of indirect
filing and will require payment of a transmittal fee. Of these, the
Office estimates that approximately 450 will be filed by an entity that
is a small entity based on USPTO design application filings in 2013.
The petition fee is set at $180. The USPTO estimates that approximately
20 applicants will pay the petition fee annually, and of these,
approximately 10 will be filed by an applicant that is a small entity.
The other fees mentioned in this final rulemaking are not USPTO
fees at all, but rather, are created through the treaty process and
WIPO's Common Regulations. For example, the USPTO does not collect and
retain at the time of payment the following fees: WIPO Basic Fee, WIPO
Publication Fee, WIPO Extra Word Fee, and Designation Fees (including
the United States individual designation fee first part). Thus, the
final rules referencing non-USPTO fees impose no economic impact upon
applicants. The petition fee for excusable delay is set forth by
statute, 35 U.S.C. 41(a)(7), as amended by 202(b)(1)(A) of the PLTIA,
126 Stat. 1535, at $850 for small entities and $1,700 for all other
entities, beginning on December 18, 2013.
Finally, it is noted that the Office published a certification
under the Regulatory Flexibility Act in the notice of proposed
rulemaking. See 78 FR 71870, 71888-89 (Nov. 29, 2013). The Office
received no public comments concerning the certification under the
Regulatory Flexibility Act. For the reasons set forth herein, the
Deputy General Counsel for General Law of the United States Patent and
Trademark Office has certified to the Chief Counsel for Advocacy of the
Small Business Administration that changes in this final rule will not
have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b).
C. Executive Order 12866 (Regulatory Planning and Review): This
final rule has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on
society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
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affected stakeholders in the private sector, and the public as a whole,
and provided on-line access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not effect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the United
States Patent and Trademark Office will submit a report containing the
final rule and other required information to the United States Senate,
the United States House of Representatives, and the Comptroller General of
the Government Accountability Office. The changes in this document are not
expected to result in an annual effect on the economy of 100 million
dollars or more, a major increase in costs or prices, or significant
adverse effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign-based enterprises in domestic and export markets.
Therefore, this document is not expected to result in a "major rule"
as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes set forth in
this document do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501 et seq.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions that involve the use of
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technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995
(PRA) (44 U.S.C. 3501 et seq.) requires that the Office consider the
impact of paperwork and other information collection burdens imposed on
the public. This rulemaking involves information collection
requirements which are subject to review by the Office of Management
and Budget (OMB) under the PRA. The collection of information involved
in this final rule has been submitted as a new information collection
under OMB control number 0651-0075 ("International Design Applications
(Hague Agreement)"). The collection will be available at the OMB's
Information Collection Review Web site (www.reginfo.gov/public/do/PRAMain).
The Office is submitting this information collection to OMB for its
review and approval because this notice of final rulemaking will add
the following collections of information for an international design
application filed through the Office or filed with the International
Bureau and designating the United States as a Contracting Party in
which the applicant would like protection:
(1) Application for International Registration (§ 1.1022)
(2) Claim and Reproductions (§ 1.1021)
(3) Transmittal Letter (§§ 1.4, 1.5)
(4) Appointment of a Representative (§ 1.1041)
(5) Petition to Excuse a Failure to Comply with a Time Limit (§ 1.1051)
(6) Petition to Convert to a Design Application under 35 U.S.C.
chapter 16 (§ 1.1052)
(7) Petition to Review a Filing Date (§ 1.1023(b))
(8) Fee Authorization (§ 1.25)
(9) Petition to the Commissioner (§§ 1.181, 1.182, and 1.183)
(10) Transmittal of Issue Fee to USPTO for an International Design
Application (§ 1.311)
(11) Declaration of Inventorship for Purposes of Designation of the
United States (§ 1.63)
(12) Substitute Statement in Lieu of a Declaration of Inventorship
for the Purpose of Designating the United States (§ 1.64)
(13) Assignment Cover Sheet (§§ 3.11, 3.21, 3.24, 3.26, 3.28, 3.31,
3.34, and 3.41)
I. Summary
This final rule will collect information necessary to process and
examine international design applications pursuant to the Hague
Agreement and the PLTIA. The Hague Agreement facilitates intellectual
property protection for industrial designs through a single
standardized application filed directly with the International Bureau
of WIPO or indirectly through an appropriate Contracting Party's
Office, such as the USPTO. The Hague Agreement is administered by the
International Bureau of WIPO located in Geneva, Switzerland.
When an applicant files an international design application
pursuant to this rulemaking, the International Bureau ascertains
whether the international design application complies with the
requirements of the treaty, records the international design
application in the international register, and publishes the
international registration in the International Designs Bulletin. The
International Bureau then provides a copy of the publication of the
international registration to each Contracting Party designated by the
applicant, and thus will provide a copy to the USPTO when the United
States is designated by the applicant. When the USPTO receives the
international registration from the International Bureau, the USPTO
will perform the substantive examination of the international design
application in the same manner that it examines a domestic design
application filed under 35 U.S.C. chapter 16.
Because the new application procedure for international design
applications created through this final rule merely provides applicants
with a new avenue by which they may file a design application, several
items in this collection displace responses that the USPTO counts in
other information collections, specifically Information Collections
0651-0032 (Initial Patent Applications), 0651-0043 (Patent and
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Trademark Financial Transactions), and 0651-0072 (America Invents Act
Section 10 Patent Fee Adjustments). As such, the USPTO will temporarily
double count those responses in both this collection and their original
collections. The USPTO will update the burden inventories of the
existing information collections to correct the double counting with
the appropriate adjustments to the number of responses.
II. Data
Needs and Uses: This information collection is necessary for design
applicants to file an international design application under the Hague
Agreement. An applicant may file through the Office as an office of
indirect filing pursuant 35 U.S.C. 382, or with the International
Bureau directly. In either case, the applicant will designate the
Contracting Party(ies) in which the applicant desires protection for
the industrial design(s). The Office uses this information to process
international design applications designating the United States and
filed under the Hague Agreement.
Title of Collection: International Design Applications (Hague
Agreement).
OMB Control Number: 0651-0075.
Form Number(s): WIPO DM/1. WIPO is in the process of creating forms
for three items covered by this collection of information (declaration
of inventorship, substitute statement in lieu of declaration, and
assignment cover sheet). Once the USPTO receives copies of these forms,
the Office will provide those forms to OMB for review.
Type of Review: New Collection.
Method of Collection: By mail, hand delivery, or electronically to
the Office.
Affected Public: Individuals or households, businesses or other
for-profits, not-for-profit institutions, farms, Federal Government,
and state, local or tribal governments.
Estimated Number of Respondents: 4935 per year.
Estimated Time per Response: The Office estimates that the
responses in this collection will take the public approximately 15
minutes (0.25 hours) to 6 hours.
Estimated Total Annual Respondent Burden Hours: 13,128 hours per year.
Estimated Total Annual (Hour) Respondent Cost Burden: $4,987,992
per year.
Estimated Total Annual (Non-hour) Respondent Cost Burden:
$2,740,011 per year. Of the non-hour costs added by this burden,
$2,739,350 are filing fees and $661 are postage fees. Of the $2,739,350
filing fees, $2,130,270 are fees new to this rulemaking, whereas
$609,080 are fees that the USPTO currently counts in other information
collections and which the USPTO temporarily double-counts in this
collection until it can update its existing collections.
III. Solicitation
The Office solicited comments to (1) Evaluate whether the proposed
information requirement is necessary for the proper performance of the
functions of the Office, including whether the information will have
practical utility; (2) evaluate the accuracy of the Office's estimate
of the burden; (3) enhance the quality, utility, and clarity of the
information to be collected; and (4) minimize the burden of collecting
the information on those who are to respond, including by using
appropriate automated, electronic, mechanical, or other technological
collection techniques or other forms of information technology.
The Office received no comments from the members of the public
regarding the PRA.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Inventions and patents,
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Reporting and recordkeeping requirements, Small businesses.
37 CFR Part 3
Administrative practice and procedure, Patents, Trademarks.
37 CFR Part 5
Classified information, Foreign relations, Inventions and patents.
37 CFR Part 11
Administrative practice and procedure, Inventions and patents, Lawyers,
Reporting and recordkeeping requirements.
37 CFR Part 41
Administrative practice and procedure, Inventions and patents, Lawyers.
For the reasons set forth in the preamble, 37 CFR parts 1, 3, 5, 11,
and 41 are amended as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
. 1. The authority citation for 37 CFR part 1 is revised to read as
follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
. 2. Section 1.4 is amended by revising paragraph (a)(2) to read as
follows:
§ 1.4 Nature of correspondence and signature requirements.
(a) * * *
(2) Correspondence in and relating to a particular application or
other proceeding in the Office. See particularly the rules relating to
the filing, processing, or other proceedings of national applications
in subpart B of this part; of international applications in subpart C
of this part; of ex parte reexaminations of patents in subpart D of
this part; of supplemental examination of patents in subpart E of this
part; of extension of patent term in subpart F of this part; of inter
partes reexaminations of patents in subpart H of this part; of
international design applications in subpart I of this part; and of the
Patent Trial and Appeal Board in parts 41 and 42 of this chapter.
* * * * *
. 3. Section 1.5 is amended by revising paragraph (a) to read as follows:
§ 1.5 Identification of patent, patent application, or patent-
related proceeding.
(a) No correspondence relating to an application should be filed
prior to receipt of the assigned application number (i.e., U.S.
application number, international application number, or international
registration number as appropriate). When correspondence directed to
the Patent and Trademark Office concerns a previously filed application
for a patent, it must identify on the top page in a conspicuous
location, the application number (consisting of the series code and the
serial number; e.g., 07/123,456), or the serial number and filing date
assigned to that application by the Patent and Trademark Office, or the
international application number of the international application, or
the international registration number of an international design
application. Any correspondence not containing such identification will
be returned to the sender where a return address is available. The
returned correspondence will be accompanied with a cover letter, which
will indicate to the sender that if the returned correspondence is
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resubmitted to the Patent and Trademark Office within two weeks of the
mail date on the cover letter, the original date of receipt of the
correspondence will be considered by the Patent and Trademark Office as
the date of receipt of the correspondence. Applicants may use either
the Certificate of Mailing or Transmission procedure under § 1.8 or
the Priority Mail Express[supreg] procedure under § 1.10 for
resubmissions of returned correspondence if they desire to have the
benefit of the date of deposit in the United States Postal Service. If
the returned correspondence is not resubmitted within the two-week
period, the date of receipt of the resubmission will be considered to
be the date of receipt of the correspondence. The two-week period to
resubmit the returned correspondence will not be extended. In addition
to the application number, all correspondence directed to the Patent
and Trademark Office concerning applications for patent should also
state the name of the first listed inventor, the title of the
invention, the date of filing the same, and if known, the group art
unit or other unit within the Patent and Trademark Office responsible
for considering the correspondence and the name of the examiner or
other person to which it has been assigned.
* * * * *
. 4. Section 1.6 is amended by revising paragraphs (d)(3), (4), and (6)
to read as follows:
§ 1.6 Receipt of correspondence.
* * * * *
(d) * * *
(3) Correspondence that cannot receive the benefit of the
certificate of mailing or transmission as specified in
§ 1.8(a)(2)(i)(A) through (D), (F), (I), and (K) and § 1.8(a)(2)(iii)(A),
except that a continued prosecution application
under § 1.53(d) may be transmitted to the Office by facsimile;
(4) Color drawings submitted under §§ 1.81, 1.83 through
1.85, 1.152, 1.165, 1.173, 1.437, or 1.1026;
* * * * *
(6) Correspondence to be filed in an application subject to a
secrecy order under §§ 5.1 through 5.5 of this chapter and
directly related to the secrecy order content of the application;
* * * * *
. 5. Section 1.8 is amended by revising paragraphs (a)(2)(i)(I) and (J)
and adding paragraph (a)(2)(i)(K) to read as follows:
§ 1.8 Certificate of mailing or transmission.
(a) * * *
(2) * * *
(i) * * *
(I) The filing of a third-party submission under § 1.290;
(J) The calculation of any period of adjustment, as specified in
§ 1.703(f); and
(K) The filing of an international design application.
* * * * *
. 6. Section 1.9 is amended by revising paragraphs (a)(1) and (3) and
adding paragraphs (l), (m), and (n) to read as follows:
§ 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.
* * * * *
(l) Hague Agreement as used in this chapter means the Geneva Act of
the Hague Agreement Concerning the International Registration of
Industrial Designs adopted at Geneva, Switzerland, on July 2, 1999, and
Hague Agreement Article as used in this chapter means an Article under
the Hague Agreement.
(m) Hague Agreement Regulations as used in this chapter means the
Common Regulations Under the 1999 Act and the 1960 Act of the Hague
Agreement, and Hague Agreement Rule as used in this chapter means one
of the Hague Agreement Regulations.
(n) An international design application as used in this chapter
means an application for international registration of a design filed
under the Hague Agreement. Unless otherwise clear from the wording,
reference to "design application" or "application for a design
patent" in this chapter includes an international design application
that designates the United States.
. 7. Section 1.14 is amended by revising the introductory text of
paragraph (a)(1), revising paragraphs (a)(1)(ii) through (vii) and
(a)(2)(iv), and adding paragraph (j) to read as follows:
§ 1.14 Patent applications preserved in confidence.
(a) * * *
(1) Records associated with patent applications (see paragraph (g)
of this section for international applications and paragraph (j) of
this section for international design applications) may be available in
the following situations:
* * * * *
(ii) Published abandoned applications. The file of an abandoned
published application is available to the public as set forth in
§ 1.11(a). A copy of the application-as-filed, the file contents of the
published application, or a specific document in the file of the
published application may be provided to any person upon request and
payment of the appropriate fee set forth in § 1.19(b).
(iii) Published pending applications. A copy of the application-as-
filed, the file contents of the application, or a specific document in
the file of a pending published application may be provided to any
person upon request and payment of the appropriate fee set forth in
§ 1.19(b). If a redacted copy of the application was used for the
patent application publication, the copy of the specification,
drawings, and papers may be limited to a redacted copy. The Office will
not provide access to the paper file of a pending application that has
been published, except as provided in paragraph (c) or (i) of this
section.
(iv) Unpublished abandoned applications (including provisional
applications) that are identified or relied upon. The file contents of
an unpublished, abandoned application may be made available to the
public if the application is identified in a U.S. patent, a statutory
invention registration, a U.S. patent application publication, an
international publication of an international application under PCT
Article 21(2), or a publication of an international registration under
Hague Agreement Article 10(3) of an international design application
designating the United States. An application is considered to have
been identified in a document, such as a patent, when the application
number or serial number and filing date, first named inventor, title,
and filing date or other application specific information are provided
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in the text of the patent, but not when the same identification is made
in a paper in the file contents of the patent and is not included in
the printed patent. Also, the file contents may be made available to
the public, upon a written request, if benefit of the abandoned
application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or
386(c) in an application that has issued as a U.S. patent, or has
published as a statutory invention registration, a U.S. patent
application publication, an international publication of an
international application under PCT Article 21(2), or a publication of
an international registration under Hague Agreement Article 10(3). A
copy of the application-as-filed, the file contents of the application,
or a specific document in the file of the application may be provided
to any person upon written request and payment of the appropriate fee
(§ 1.19(b)).
(v) Unpublished pending applications (including provisional
applications) whose benefit is claimed. A copy of the file contents of
an unpublished pending application may be provided to any person, upon
written request and payment of the appropriate fee (§ 1.19(b)), if
the benefit of the application is claimed under 35 U.S.C. 119(e), 120,
121, 365(c), or 386(c) in an application that has issued as a U.S.
patent, or in an application that has published as a statutory
invention registration, a U.S. patent application publication, an
international publication of an international application under PCT
Article 21(2), or a publication of an international registration under
Hague Agreement Article 10(3). A copy of the application-as-filed or a
specific document in the file of the pending application may also be
provided to any person upon written request and payment of the
appropriate fee (§ 1.19(b)). The Office will not provide access to
the paper file of a pending application, except as provided in
paragraph (c) or (i) of this section.
(vi) Unpublished pending applications (including provisional
applications) that are incorporated by reference or otherwise
identified. A copy of the application as originally filed of an
unpublished pending application may be provided to any person, upon
written request and payment of the appropriate fee (§ 1.19(b)), if
the application is incorporated by reference or otherwise identified in
a U.S. patent, a statutory invention registration, a U.S. patent
application publication, an international publication of an
international application under PCT Article 21(2), or a publication of
an international registration under Hague Agreement Article 10(3) of an
international design application designating the United States. The
Office will not provide access to the paper file of a pending
application, except as provided in paragraph (c) or (i) of this
section.
(vii) When a petition for access or a power to inspect is required.
Applications that were not published or patented, that are not the
subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, 365(c), or
386(c) in an application that has issued as a U.S. patent, an
application that has published as a statutory invention registration, a
U.S. patent application publication, an international publication of an
international application under PCT Article 21(2), or a publication of
an international registration under Hague Agreement Article 10(3), or
are not identified in a U.S. patent, a statutory invention
registration, a U.S. patent application publication, an international
publication of an international application under PCT Article 21(2), or
a publication of an international registration under Hague Agreement
Article 10(3) of an international design application designating the
United States, are not available to the public. If an application is
identified in the file contents of another application, but not the
published patent application or patent itself, a granted petition for
access (see paragraph (i)) or a power to inspect (see paragraph (c) of
this section) is necessary to obtain the application, or a copy of the
application.
(2) * * *
(iv) Whether another application claims the benefit of the
application (i.e., whether there are any applications that claim the
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benefit of the filing date under 35 U.S.C. 119(e), 120, 121, 365, or
386 of the application), and if there are any such applications, the
numerical identifier of the application, the specified relationship
between the applications (e.g., continuation), whether the application
is pending, abandoned or patented, and whether the application has been
published under 35 U.S.C. 122(b).
* * * * *
(j) International design applications. (1) With respect to an
international design application maintained by the Office in its
capacity as a designated office (§ 1.1003) for national processing,
the records associated with the international design application may be
made available as provided under paragraphs (a) through (i) of this
section.
(2) With respect to an international design application maintained
by the Office in its capacity as an office of indirect filing (§
1.1002), the records of the international design application may be
made available under paragraph (j)(1) of this section where contained
in the file of the international design application maintained by the
Office for national processing. Also, if benefit of the international
design application is claimed under 35 U.S.C. 386(c) in a U.S. patent
or published application, the file contents of the application may be
made available to the public, or the file contents of the application,
a copy of the application-as-filed, or a specific document in the file
of the application may be provided to any person upon written request
and payment of the appropriate fee (§ 1.19(b)).
. 8. Section 1.16 is amended by revising the introductory text of
paragraphs (b), (l), and (p) to read as follows:
§ 1.16 National application filing, search, and examination fees.
* * * * *
(b) Basic fee for filing each application under 35 U.S.C. 111 for
an original design patent:
* * * * *
(l) Search fee for each application under 35 U.S.C. 111 for an
original design patent:
* * * * *
(p) Examination fee for each application under 35 U.S.C. 111 for an
original design patent:
* * * * *
. 9. Section 1.17 is amended by revising paragraphs (f), (g), (i)(1), and
(m) and adding paragraph (t) to read as follows:
§ 1.17 Patent application and reexamination processing fees.
* * * * *
(f) For filing a petition under one of the following sections which
refers to this paragraph:
By a micro entity (§ 1.29)............................ $100.00
By a small entity (§ 1.27(a))......................... 200.00
By other than a small or micro entity.................. 400.00
§ 1.36(a) - for revocation of a power of attorney by fewer than
all of the applicants.
§ 1.53(e) - to accord a filing date.
§ 1.182 - for decision on a question not specifically provided
for in an application for patent.
§ 1.183 - to suspend the rules in an application for patent.
§ 1.741(b) - to accord a filing date to an application under § 1.740
for extension of a patent term.
§ 1.1023 - to review the filing date of an international design
application.
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(g) For filing a petition under one of the following sections which
refers to this paragraph:
By a micro entity (§ 1.29)............................ $50.00
By a small entity (§ 1.27(a))......................... 100.00
By other than a small or micro entity.................. 200.00
§ 1.12 - for access to an assignment record.
§ 1.14 - for access to an application.
§ 1.46 - for filing an application on behalf of an inventor by a
person who otherwise shows sufficient proprietary interest
in the matter.
§ 1.55(f) - for filing a belated certified copy of a foreign
application.
§ 1.55(g) - for filing a belated certified copy of a foreign
application.
§ 1.57(a) - for filing a belated certified copy of a foreign
application.
§ 1.59 - for expungement of information.
§ 1.103(a) - to suspend action in an application.
§ 1.136(b) - for review of a request for extension of time when
the provisions of § 1.136(a) are not available.
§ 1.377 - for review of decision refusing to accept and record
payment of a maintenance fee filed prior to expiration of
a patent.
§ 1.550(c) - for patent owner requests for extension of time in
ex parte reexamination proceedings.
§ 1.956 - for patent owner requests for extension of time in
inter partes reexamination proceedings.
§ 5.12 - for expedited handling of a foreign filing license.
§ 5.15 - for changing the scope of a license.
§ 5.25 - for retroactive license.
* * * * *
(i) Processing fees. (1) For taking action under one of the
following sections which refers to this paragraph:
By a micro entity (§ 1.29)............................ $35.00
By a small entity (§ 1.27(a))......................... 70.00
By other than a small or micro entity.................. 140.00
§ 1.28(c)(3) - for processing a non-itemized fee deficiency based
on an error in small entity status.
§ 1.29(k)(3) - for processing a non-itemized fee deficiency based
on an error in micro entity status.
§ 1.41(b) - for supplying the name or names of the inventor or
joint inventors in an application without either an
application data sheet or the inventor's oath or
declaration, except in provisional applications.
§ 1.48 - for correcting inventorship, except in provisional
applications.
§ 1.52(d) - for processing a nonprovisional application filed
with a specification in a language other than English.
§ 1.53(c)(3) - t convert a provisional application filed under
§ 1.53(c) into a nonprovisional application under
§ 1.53(b).
§ 1.71(g)(2) - for processing a belated amendment under § 1.71(g).
§ 1.102(e) - for requesting prioritized examination of an
application.
§ 1.103(b) - for requesting limited suspension of action,
continued prosecution application for a design patent
(§ 1.53(d)).
§ 1.103(c) - for requesting limited suspension of action, request
for continued examination (§ 1.114).
§ 1.103(d) - for requesting deferred examination of an application.
§ 1.291(c)(5) - for processing a second or subsequent protest by the
same real party in interest.
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§ 3.81 - for a patent to issue to assignee, assignment submitted
after payment of the issue fee.
* * * * *
(m) For filing a petition for the revival of an abandoned
application for a patent, for the delayed payment of the fee for
issuing each patent, for the delayed response by the patent owner in
any reexamination proceeding, for the delayed payment of the fee for
maintaining a patent in force, for the delayed submission of a priority
or benefit claim, for the extension of the twelve-month (six-month for
designs) period for filing a subsequent application (§§
1.55(c), 1.55(e), 1.78(b), 1.78(c), 1.78(e), 1.137, 1.378, and 1.452),
or for filing a petition to excuse applicant's failure to act within
prescribed time limits in an international design application
(§ 1.1051):
By a small entity (§ 1.27(a)) or micro entity (§ 1.29).... $850.00
By other than a small or micro entity...................... 1,700.00
* * * * *
(t) For filing a petition to convert an international design
application to a design application under 35 U.S.C. chapter 16
(§ 1.1052): $180.00.
. 10. Section 1.18 is amended by adding paragraph (b)(3) to read as
follows:
§ 1.18 Patent post allowance (including issue) fees.
* * * * *
(b) * * *
(3) For an international design application designating the United
States, where an issue fee is paid through the International Bureau
(Hague Agreement Rule 12(3)(c)) as an alternative to paying the issue
fee under paragraph (b)(1) of this section: The amount specified on the
Web site of the World Intellectual Property Organization, currently
available at http://www.wipo.int/hague, at the time the fee is paid.
* * * * *
. 11. Section 1.25 is amended by revising paragraph (b) to read as
follows:
§ 1.25 Deposit accounts.
* * * * *
(b) Filing, issue, appeal, international-type search report,
international application processing, international design application
fees, petition, and post-issuance fees may be charged against these
accounts if sufficient funds are on deposit to cover such fees. A
general authorization to charge all fees, or only certain fees, set
forth in §§ 1.16 through 1.18 to a deposit account containing
sufficient funds may be filed in an individual application, either for
the entire pendency of the application or with a particular paper
filed. A general authorization to charge fees in an international
design application set forth in § 1.1031 will only be effective for
the transmittal fee (§ 1.1031(a)). An authorization to charge fees
under § 1.16 in an international application entering the national
stage under 35 U.S.C. 371 will be treated as an authorization to charge
fees under § 1.492. An authorization to charge fees set forth in
§ 1.18 to a deposit account is subject to the provisions of §
1.311(b). An authorization to charge to a deposit account the fee for a
request for reexamination pursuant to § 1.510 or 1.913 and any
other fees required in a reexamination proceeding in a patent may also
be filed with the request for reexamination, and an authorization to
charge to a deposit account the fee for a request for supplemental
examination pursuant to § 1.610 and any other fees required in a
supplemental examination proceeding in a patent may also be filed with
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the request for supplemental examination. An authorization to charge a
fee to a deposit account will not be considered payment of the fee on
the date the authorization to charge the fee is effective unless
sufficient funds are present in the account to cover the fee.
* * * * *
. 12. Section 1.27 is amended by revising paragraph (c)(3) introductory
text to read as follows:
§ 1.27 Definition of small entities and establishing status as a
small entity to permit payment of small entity fees; when a
determination of entitlement to small entity status and notification of
loss of entitlement to small entity status are required; fraud on the
Office.
* * * * *
(c) * * *
(3) Assertion by payment of the small entity basic filing, basic
transmittal, basic national fee, international search fee, or
individual designation fee in an international design application. The
payment, by any party, of the exact amount of one of the small entity
basic filing fees set forth in § 1.16(a), (b), (c), (d), or (e),
the small entity transmittal fee set forth in § 1.445(a)(1), the
small entity international search fee set forth in § 1.445(a)(2) to
a Receiving Office other than the United States Receiving Office in the
exact amount established for that Receiving Office pursuant to PCT Rule
16, or the small entity basic national fee set forth in § 1.492(a),
will be treated as a written assertion of entitlement to small entity
status even if the type of basic filing, basic transmittal, or basic
national fee is inadvertently selected in error. The payment, by any
party, of the small entity first part of the individual designation fee
for the United States to the International Bureau (§ 1.1031) will
be treated as a written assertion of entitlement to small entity
status.
* * * * *
. 13. Section 1.29 is amended by revising paragraph (e) to read as
follows:
§ 1.29 Micro entity status.
* * * * *
(e) Micro entity status is established in an application by filing
a micro entity certification in writing complying with the requirements
of either paragraph (a) or (d) of this section and signed either in
compliance with § 1.33(b), in an international application filed in
a Receiving Office other than the United States Receiving Office by a
person authorized to represent the applicant under § 1.455, or in
an international design application by a person authorized to represent
the applicant under § 1.1041 before the International Bureau where
the micro entity certification is filed with the International Bureau.
Status as a micro entity must be specifically established in each
related, continuing and reissue application in which status is appropriate
and desired. Status as a micro entity in one application or patent does not
affect the status of any other application or patent, regardless of the
relationship of the applications or patents. The refiling of an application
under § 1.53 as a continuation, divisional, or continuation-in-part
application (including a continued prosecution application under § 1.53
(d)), or the filing of a reissue application, requires a new certification
of entitlement to micro entity status for the continuing or reissue
application.
* * * * *
. 14. Section 1.32 is amended by revising paragraph (d) introductory text
to read as follows:
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§ 1.32 Power of attorney.
* * * * *
(d) A power of attorney from a prior national application for which
benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) in a
continuing application may have effect in the continuing application if
a copy of the power of attorney from the prior application is filed in
the continuing application unless:
* * * * *
. 15. Section 1.41 is amended by adding paragraph (f) to read as follows:
§ 1.41 Inventorship.
* * * * *
(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.
. 16. Section 1.46 is amended by revising paragraph (b) introductory text
and paragraph (c) to read as follows:
§ 1.46 Application for patent by an assignee, obligated assignee,
or a person who otherwise shows sufficient proprietary interest in the
matter.
* * * * *
(b) If an application under 35 U.S.C. 111 is made by a person other
than the inventor under paragraph (a) of this section, the application
must contain an application data sheet under § 1.76 specifying in
the applicant information section (§ 1.76(b)(7)) 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. If an application entering the national stage
under 35 U.S.C. 371, or a nonprovisional international design
application, is applied for by a person other than the inventor under
paragraph (a) of this section, 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 must have
been identified as the applicant for the United States in the
international stage of the international application or as the
applicant in the publication of the international registration under
Hague Agreement Article 10(3).
* * * * *
(c)(1) Correction or update in the name of the applicant. Any
request to correct or update the name of the applicant under this
section must include an application data sheet under § 1.76
specifying the correct or updated name of the applicant in the
applicant information section (§ 1.76(b)(7)) in accordance with
§ 1.76(c)(2). A change in the name of the applicant recorded
pursuant to Hague Agreement Article 16(1)(ii) will be effective to
change the name of the applicant in a nonprovisional international
design application.
(2) Change in the applicant. Any request to change the applicant
under this section after an original applicant has been specified must
include an application data sheet under § 1.76 specifying the
applicant in the applicant information section (§ 1.76(b)(7)) in
accordance with § 1.76(c)(2) and comply with §§ 3.71 and
3.73 of this title.
* * * * *
. 17. Section 1.53 is amended by revising paragraph (b) introductory text
and paragraphs (c)(4) and (d)(1)(ii) to read as follows:
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§ 1.53 Application number, filing date, and completion of
application.
* * * * *
(b) Application filing requirements - Nonprovisional application.
The filing date of an application for patent filed under this section,
other than an application for a design patent or a provisional
application under paragraph (c) of this section, is the date on which a
specification, with or without claims, is received in the Office. The
filing date of an application for a design patent filed under this
section, except for a continued prosecution application under paragraph
(d) of this section, is the date on which the specification as
prescribed by 35 U.S.C. 112, including at least one claim, and any
required drawings are received in the Office. No new matter may be
introduced into an application after its filing date. A continuing
application, which may be a continuation, divisional, or continuation-
in-part application, may be filed under the conditions specified in 35
U.S.C. 120, 121, 365(c), or 386(c) and § 1.78.
* * * * *
(c) * * *
(4) A provisional application is not entitled to the right of
priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to
the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c),
or 386(c) or § 1.78 of any other application. No claim for priority
under 35 U.S.C. 119(e) or § 1.78(a) may be made in a design
application based on a provisional application. The requirements of
§§ 1.821 through 1.825 regarding application disclosures
containing nucleotide and/or amino acid sequences are not mandatory for
provisional applications.
(d) * * *
(1) * * *
(ii) The prior nonprovisional application is a design application,
but not an international design application, that is complete as
defined by § 1.51(b), except for the inventor's oath or declaration
if the application is filed on or after September 16, 2012, and the
prior nonprovisional application contains an application data sheet
meeting the conditions specified in § 1.53(f)(3)(i); and
* * * * *
. 18. Section 1.55 is revised to read as follows:
§ 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 386(a) and (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
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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
386(a) or 386(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) through (d) or (f), 365(a) or (b),
or 386(a) or 386(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 386(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
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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 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
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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
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(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.
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(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).
. 19. Section 1.57 is amended by revising paragraph (a)(4) and the
introductory text of paragraph (b) and adding paragraph (b)(4) to read as
follows:
§ 1.57 Incorporation by reference.
(a) * * *
(4) A certified copy of the previously filed application must be
filed in the Office, unless the previously filed application is an
application filed under 35 U.S.C. 111 or 363, or the previously filed
application is a foreign priority application and the conditions set
forth in § 1.55(i) are satisfied with respect to such foreign
priority application. The certified copy of the previously filed
application, if required by this paragraph, must be filed within the
later of four months from the filing date of the application or sixteen
months from the filing date of the previously filed application, or 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).
(b) Subject to the conditions and requirements of this paragraph,
if all or a portion of the specification or drawing(s) is inadvertently
omitted from an application, but the application contains a claim under
§ 1.55 for priority of a prior-filed foreign application or a claim
under § 1.78 for the benefit of a prior-filed provisional,
nonprovisional, international application, or international design
application, that was present on the filing date of the application,
and the inadvertently omitted portion of the specification or
drawing(s) is completely contained in the prior-filed application, the
claim under § 1.55 or 1.78 shall also be considered an
incorporation by reference of the prior-filed application as to the
inadvertently omitted portion of the specification or drawing(s).
* * * * *
(4) Any amendment to an international design application pursuant
to paragraph (b)(1) of this section shall be effective only as to the
United States and shall have no effect on the filing date of the
application. In addition, no request under this section to add the
inadvertently omitted portion of the specification or drawings in an
international design application will be acted upon by the Office prior
to the international design application becoming a nonprovisional
application.
* * * * *
. 20. Section 1.63 is amended by revising paragraph (d)(1) to read as
follows:
§ 1.63 Inventor's oath or declaration.
* * * * *
(d)(1) A newly executed oath or declaration under § 1.63, or
substitute statement under § 1.64, is not required under §§
1.51(b)(2) and 1.53(f), or under §§ 1.497 and 1.1021(d), for an
inventor in a continuing application that claims the benefit under 35
U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an
earlier-filed application, provided that an oath or declaration in
compliance with this section, or substitute statement under § 1.64,
was executed by or with respect to such inventor and was filed in the
earlier-filed application, and a copy of such oath, declaration, or
substitute statement showing the signature or an indication thereon
that it was executed, is submitted in the continuing application.
* * * * *
. 21. Section 1.76 is amended by revising paragraphs (a), (b)(5), and
(b)(6) to read as follows:
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§ 1.76 Application data sheet.
(a) Application data sheet. An application data sheet is a sheet or
sheets that may be submitted in a provisional application under 35
U.S.C. 111(b), a nonprovisional application under 35 U.S.C. 111(a), a
nonprovisional international design application, or a national stage
application under 35 U.S.C. 371 and must be submitted when required by
§ 1.55 or 1.78 to claim priority to or the benefit of a prior-filed
application under 35 U.S.C. 119, 120, 121, 365, or 386. An application
data sheet must be titled "Application Data Sheet." An application
data sheet must contain all of the section headings listed in paragraph
(b) of this section, except as provided in paragraph (c)(2) of this
section, with any appropriate data for each section heading. If an
application data sheet is provided, the application data sheet is part
of the application for which it has been submitted.
(b) * * *
(5) Domestic benefit information. This information includes the
application number, the filing date, the status (including patent
number if available), and relationship of each application for which a
benefit is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c).
Providing this information in the application data sheet constitutes
the specific reference required by 35 U.S.C. 119(e) or 120 and
§ 1.78.
(6) Foreign priority information. This information includes the
application number, country (or intellectual property authority), and
filing date of each foreign application for which priority is claimed.
Providing this information in the application data sheet constitutes
the claim for priority as required by 35 U.S.C. 119(b) and § 1.55.
* * * * *
. 22. Section 1.78 is revised to read as follows:
§ 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.
(1) The nonprovisional application or international application
designating the United States must be:
(i) Filed not later than twelve months after the date on which the
provisional application was filed, subject to paragraph (b) of this
section (a subsequent application); or
(ii) Entitled to claim the benefit under 35 U.S.C. 120, 121, or
365(c) of a subsequent application that was filed within the period set
forth in paragraph (a)(1)(i) of this section.
(2) Each prior-filed provisional 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 provisional
application must be entitled to a filing date as set forth in
§ 1.53(c), and the basic filing fee set forth in § 1.16(d) must have
been paid for such provisional application within the time period set
forth in § 1.53(g).
(3) Any nonprovisional application or international application
designating the United States that claims the benefit of one or more
prior-filed provisional applications must contain, or be amended to
contain, a reference to each such prior-filed provisional application,
identifying it by the provisional application number (consisting of
series code and serial number). 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)).
(4) The reference required by paragraph (a)(3) of this section must
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be submitted during the pendency of the later-filed application. 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 provisional 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 provisional
application. Except as provided in paragraph (c) of this section,
failure to timely submit the reference is considered a waiver of any
benefit under 35 U.S.C. 119(e) of the prior-filed provisional
application. The time periods in this paragraph do not apply if the
later-filed application is:
(i) An application filed under 35 U.S.C. 111(a) before November 29,
2000; or
(ii) An international application filed under 35 U.S.C. 363 before
November 29, 2000.
(5) If the prior-filed provisional application was filed in a
language other than English and both an English-language translation of
the prior-filed provisional application and a statement that the
translation is accurate were not previously filed in the prior-filed
provisional application, the applicant will be notified and given a
period of time within which to file, in the prior-filed provisional
application, the translation and the statement. If the notice is mailed
in a pending nonprovisional application, a timely reply to such a
notice must include the filing in the nonprovisional application of
either a confirmation that the translation and statement were filed in
the provisional application, or an application data sheet (§ 1.76(b)(5))
eliminating the reference under paragraph (a)(3) of this section to the
prior-filed provisional application, or the nonprovisional application will
be abandoned. The translation and statement may be filed in the provisional
application, even if the provisional application has become abandoned.
(6) If a nonprovisional application filed on or after March 16,
2013, claims the benefit of the filing date of a provisional
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-filed
provisional 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.
(b) Delayed filing of the subsequent nonprovisional application or
international application designating the United States. If the
subsequent nonprovisional application or international application
designating the United States has a filing date which is after the
expiration of the twelve-month period set forth in paragraph (a)(1)(i)
of this section but within two months from the expiration of the period
set forth in paragraph (a)(1)(i) of this section, the benefit of the
provisional 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 nonprovisional application or
international application designating the United States within the
period set forth in paragraph (a)(1)(i) of this section was
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unintentional.
(1) A petition to restore the benefit of a provisional application
under this paragraph filed on or after May 13, 2015, must be filed in
the subsequent application, and any petition to restore the benefit of
a provisional application under this paragraph must include:
(i) The reference required by 35 U.S.C. 119(e) to the prior-filed
provisional application in an application data sheet (§ 1.76(b)(5))
identifying it by provisional application number (consisting of series
code and serial number), unless previously submitted;
(ii) The petition fee as set forth in § 1.17(m); and
(iii) A statement that the delay in filing the subsequent
nonprovisional application or international application designating the
United States within the twelve-month period set forth in paragraph
(a)(1)(i) of this section was unintentional. The Director may require
additional information where there is a question whether the delay was
unintentional.
(2) The restoration of the right of priority under PCT Rule 26bis.3
to a provisional application does not affect the requirement to include
the reference required by paragraph (a)(3) of this section to the
provisional application in a national stage application under 35 U.S.C.
371 within the time period provided by paragraph (a)(4) of this section
to avoid the benefit claim being considered waived.
(c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a
prior-filed provisional application. If the reference required by
35 U.S.C. 119(e) and paragraph (a)(3) of this section is presented in an
application after the time period provided by paragraph (a)(4) of this
section, the claim under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application may be accepted if the reference identifying
the prior-filed application by provisional application number was
unintentionally delayed. A petition to accept an unintentionally
delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application must be accompanied by:
(1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3)
of this section to the prior-filed provisional 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 (a)(4) 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.
(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
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§ 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
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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.
(f) Applications containing patentably indistinct claims. Where two
or more applications filed by the same applicant or assignee contain
patentably indistinct claims, elimination of such claims from all but
one application may be required in the absence of good and sufficient
reason for their retention during pendency in more than one
application.
(g) Applications or patents under reexamination naming different
inventors and containing patentably indistinct claims. If an
application or a patent under reexamination and at least one other
application naming different inventors are owned by the same person and
contain patentably indistinct claims, and there is no statement of
record indicating that the claimed inventions were commonly owned or
subject to an obligation of assignment to the same person on the
effective filing date (as defined in § 1.109), or on the date of
the invention, as applicable, of the later claimed invention, the
Office may require the applicant or assignee to state whether the
claimed inventions were commonly owned or subject to an obligation of
assignment to the same person on such date, and if not, indicate which
named inventor is the prior inventor, as applicable. Even if the
claimed inventions were commonly owned, or subject to an obligation of
assignment to the same person on the effective filing date (as defined
in § 1.109), or on the date of the invention, as applicable, of the
later claimed invention, the patentably indistinct claims may be
rejected under the doctrine of double patenting in view of such
commonly owned or assigned applications or patents under reexamination.
(h) Applications filed before September 16, 2012. Notwithstanding
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the requirement in paragraphs (a)(3) and (d)(2) of this section that
any specific reference to a prior-filed application be presented in an
application data sheet (§ 1.76), this requirement in paragraph
(a)(3) and (d)(2) of this section will be satisfied by the presentation
of such specific reference in the first sentence(s) of the
specification following the title 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 specific
reference submitted for a petition under paragraph (b) of this section
to restore the benefit of a provisional application.
(i) Petitions required in international applications. If a petition
under paragraph (b), (c), or (e) of this section is required in an
international application that was not filed with the United States
Receiving Office and is not a nonprovisional application, then such
petition may be filed in the earliest nonprovisional application that
claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the
international application and will be treated as having been filed in
the international application.
(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).
. 23. Section 1.84 is amended by revising paragraphs (a)(2) and (y) to
read as follows:
§ 1.84 Standards for drawings.
(a) * * *
(2) Color. Color drawings are permitted in design applications.
Where a design application contains color drawings, the application
must include the number of sets of color drawings required by paragraph
(a)(2)(ii) of this section and the specification must contain the
reference required by paragraph (a)(2)(iii) of this section. On rare
occasions, color drawings may be necessary as the only practical medium
by which to disclose the subject matter sought to be patented in a
utility patent application. The color drawings must be of sufficient
quality such that all details in the drawings are reproducible in black
and white in the printed patent. Color drawings are not permitted in
international applications (see PCT Rule 11.13). The Office will accept
color drawings in utility patent applications only after granting a
petition filed under this paragraph explaining why the color drawings
are necessary. Any such petition must include the following:
(i) The fee set forth in § 1.17(h);
(ii) One (1) set of color drawings if submitted via the Office
electronic filing system or three (3) sets of color drawings if not
submitted via the Office electronic filing system; and
(iii) An amendment to the specification to insert (unless the
specification contains or has been previously amended to contain) the
following language as the first paragraph of the brief description of
the drawings:
The patent or application file contains at least one drawing
executed in color. Copies of this patent or patent application
publication with color drawing(s) will be provided by the Office upon
request and payment of the necessary fee.
* * * * *
(y) Types of drawings. See § 1.152 for design drawings, § 1.1026 for
international design reproductions, § 1.165 for plant drawings, and
§ 1.173(a)(2) for reissue drawings.
. 24. Section 1.85 is amended by revising paragraph (c) to read as
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follows:
§ 1.85 Corrections to drawings.
* * * * *
(c) If a corrected drawing is required or if a drawing does not
comply with § 1.84 or an amended drawing submitted under § 1.121(d) in a
nonprovisional international design application does not comply with
§ 1.1026 at the time an application is allowed, the Office may
notify the applicant in a notice of allowability and set a three-month
period of time from the mail date of the notice of allowability within
which the applicant must file a corrected drawing in compliance with
§ 1.84 or 1.1026, as applicable, to avoid abandonment. This time
period is not extendable under § 1.136 (see § 1.136(c)).
. 25. Section 1.97 is amended by revising paragraphs (b)(3) and (4) and
adding paragraph (b)(5) to read as follows:
§ 1.97 Filing of information disclosure statement.
* * * * *
(b) * * *
(3) Before the mailing of a first Office action on the merits;
(4) Before the mailing of a first Office action after the filing of
a request for continued examination under § 1.114; or
(5) Within three months of the date of publication of the
international registration under Hague Agreement Article 10(3) in an
international design application.
* * * * *
. 26. Section 1.105 is amended by revising the introductory text of
paragraph (a)(1) to read as follows:
§ 1.105 Requirements for information.
(a)(1) In the course of examining or treating a matter in a pending
or abandoned application, in a patent, or in a reexamination
proceeding, including a reexamination proceeding ordered as a result of
a supplemental examination proceeding, the examiner or other Office
employee may require the submission, from individuals identified under
§ 1.56(c), or any assignee, of such information as may be
reasonably necessary to properly examine or treat the matter, for
example:
* * * * *
. 27. Section 1.109 is revised to read as follows:
§ 1.109 Effective filing date of a claimed invention under the
Leahy-Smith America Invents Act.
(a) The effective filing date for a claimed invention in a patent
or application for patent, other than in a reissue application or
reissued patent, is the earliest of:
(1) The actual filing date of the patent or the application for the
patent containing a claim to the invention; or
(2) The filing date of the earliest application for which the
patent or application is entitled, as to such invention, to a right of
priority or the benefit of an earlier filing date under 35 U.S.C. 119,
120, 121, 365, or 386.
(b) The effective filing date for a claimed invention in a reissue
application or a reissued patent is determined by deeming the claim to
the invention to have been contained in the patent for which reissue
was sought.
. 28. Section 1.114 is amended by revising paragraphs (e)(3) through (5)
and adding paragraph (e)(6) to read as follows:
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§ 1.114 Request for continued examination.
* * * * *
(e) * * *
(3) An international application filed under 35 U.S.C. 363 before
June 8, 1995, or an international application that does not comply with
35 U.S.C. 371;
(4) An application for a design patent;
(5) An international design application; or
(6) A patent under reexamination.
. 29. Section 1.121 is amended by revising paragraph (d) introductory
text to read as follows:
§ 1.121 Manner of making amendments in applications.
* * * * *
(d) Drawings. One or more application drawings shall be amended in
the following manner: Any changes to an application drawing must be in
compliance with § 1.84 or, for a nonprovisional international
design application, in compliance with §§ 1.84(c) and 1.1026
and must be submitted on a replacement sheet of drawings which shall be
an attachment to the amendment document and, in the top margin, labeled
"Replacement Sheet." Any replacement sheet of drawings shall include
all of the figures appearing on the immediate prior version of the
sheet, even if only one figure is amended. Any new sheet of drawings
containing an additional figure must be labeled in the top margin as
"New Sheet." All changes to the drawings shall be explained, in
detail, in either the drawing amendment or remarks section of the
amendment paper.
* * * * *
. 30. Section 1.130 is amended by revising paragraph (d) to read as
follows:
§ 1.130 Affidavit or declaration of attribution or prior public
disclosure under the Leahy-Smith America Invents Act.
* * * * *
(d) Applications and patents to which this section is applicable.
The provisions of this section apply to any application for patent, and
to any patent issuing thereon, that contains, or contained at any time:
(1) 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; or
(2) A specific reference under 35 U.S.C. 120, 121, 365(c), or
386(c) to any patent or application that 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.
. 31. Section 1.131 is amended by revising paragraph (d) to read as
follows:
§ 1.131 Affidavit or declaration of prior invention or to
disqualify commonly owned patent or published application as prior art.
* * * * *
(d) The provisions of this section apply to any application for
patent and to any patent issuing thereon, that contains, or contained
at any time:
(1) A claim to an invention that has an effective filing date as
defined in § 1.109 that is before March 16, 2013; or
(2) A specific reference under 35 U.S.C. 120, 121, 365(c), or
386(c) to any patent or application that contains, or contained at any
time, a claim to an invention that has an effective filing date as
defined in § 1.109 that is before March 16, 2013.
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* * * * *
. 32. Section 1.137 is amended by revising paragraphs (d)(1)(ii) and
(d)(2) to read as follows:
§ 1.137 Revival of abandoned application, or terminated or limited
reexamination prosecution.
* * * * *
(d) * * *
(1) * * *
(ii) The period extending beyond twenty years from the date on
which the application for the patent was filed in the United States or,
if the application contains a specific reference to an earlier filed
application(s) under 35 U.S.C. 120, 121, 365(c), or 386(c) from the
date on which the earliest such application was filed.
(2) Any terminal disclaimer pursuant to paragraph (d)(1) of this
section must also apply to any patent granted on a continuing utility
or plant application filed before June 8, 1995, or a continuing design
application, that contains a specific reference under 35 U.S.C. 120,
121, 365(c), or 386(c) to the application for which revival is sought.
* * * * *
. 33. Section 1.155 is amended by revising paragraph (a)(1) to read as
follows:
§ 1.155 Expedited examination of design applications.
(a) * * *
(1) The application must include drawings in compliance with
§ 1.84, or for an international design application that designates the
United States, must have been published pursuant to Hague Agreement
Article 10(3);
* * * * *
. 34. Section 1.175 is amended by revising paragraph (f)(1) introductory
text to read as follows:
§ 1.175 Inventor's oath or declaration for a reissue application.
* * * * *
(f)(1) The requirement for the inventor's oath or declaration for a
continuing reissue application that claims the benefit under 35 U.S.C.
120, 121, 365(c), or 386(c) in compliance with § 1.78 of an
earlier-filed reissue application may be satisfied by a copy of the
inventor's oath or declaration from the earlier-filed reissue
application, provided that:
* * * * *
. 35. Section 1.211 is amended by revising paragraph (b) to read as
follows:
§ 1.211 Publication of applications.
* * * * *
(b) Provisional applications under 35 U.S.C. 111(b) shall not be
published, and design applications under 35 U.S.C. chapter 16,
international design applications under 35 U.S.C. chapter 38, and
reissue applications under 35 U.S.C. chapter 25 shall not be published
under this section.
* * * * *
. 36. Subpart I to part 1 is added to read as follows:
Subpart I - International Design Application
General Information
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Sec.
1.1001 Definitions related to international design applications.
1.1002 The United States Patent and Trademark Office as an office of
indirect filing.
1.1003 The United States Patent and Trademark Office as a designated
office.
1.1004 The International Bureau.
1.1005 Display of currently valid control number under the Paperwork
Reduction Act.
Who May File an International Design Application
1.1011 Applicant for international design application.
1.1012 Applicant's Contracting Party.
The International Design Application
1.1021 Contents of the international design application.
1.1022 Form and signature.
1.1023 Filing date of an international design application in the
United States.
1.1024 The description.
1.1025 The claim.
1.1026 Reproductions.
1.1027 Specimens.
1.1028 Deferment of publication.
Fees
1.1031 International design application fees.
Representation
1.1041 Representation in an international design application.
1.1042 Correspondence respecting international design applications
filed with the Office as an office of indirect filing.
Transmittal of the International Design Application to the
International Bureau
1.1045 Procedures for transmittal of international design
application to the International Bureau.
Relief From Prescribed Time Limits; Conversion to a Design Application
Under 35 U.S.C. Chapter 16
1.1051 Relief from prescribed time limits.
1.1052 Conversion to a design application under 35 U.S.C. chapter 16.
National Processing of International Design Applications
1.1061 Rules applicable.
1.1062 Examination.
1.1063 Notification of Refusal.
1.1064 One independent and distinct design.
1.1065 Corrections and other changes in the International Register.
1.1066 Correspondence address for a nonprovisional international
design application.
1.1067 Title, description, and the inventor's oath or declaration.
1.1068 Statement of grant of protection.
1.1070 Notification of Invalidation.
1.1071 Grant of protection for an industrial design only upon
issuance of a patent.
Subpart I - International Design Application
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General Information
§ 1.1001 Definitions related to international design applications.
(a) Article as used in this subpart means an article of the Hague
Agreement;
(b) Regulations as used in this subpart, when capitalized, means
the "Common Regulations Under the 1999 Act and the 1960 Act of the
Hague Agreement";
(c) Rule as used in this subpart, when capitalized, means one of
the Regulations;
(d) Administrative Instructions as used in this subpart means the
Administrative Instructions referred to in Rule 34;
(e) 1960 Act as used in this subpart means the Act signed at the
Hague on November 28, 1960, of the Hague Agreement;
(f) Other terms and expressions in subpart I not defined in this
section are as defined in Article 1, Rule 1, and 35 U.S.C. 381.
§ 1.1002 The United States Patent and Trademark Office as an
office of indirect filing.
(a) The United States Patent and Trademark Office, as an office of
indirect filing, shall accept international design applications where
the applicant's Contracting Party is the United States.
(b) The major functions of the United States Patent and Trademark
Office as an office of indirect filing include:
(1) Receiving and according a receipt date to international design
applications;
(2) Collecting and, when required, transmitting fees due for
processing international design applications;
(3) Determining compliance with applicable requirements of part 5
of this chapter; and
(4) Transmitting an international design application to the
International Bureau, unless prescriptions concerning national security
prevent the application from being transmitted.
§ 1.1003 The United States Patent and Trademark Office as a
designated office.
(a) The United States Patent and Trademark Office will act as a
designated office ("United States Designated Office") for
international design applications in which the United States has been
designated as a Contracting Party in which protection is sought.
(b) The major functions of the United States Designated Office
include:
(1) Accepting for national examination international design
applications which satisfy the requirements of the Hague Agreement, the
Regulations, and the regulations;
(2) Performing an examination of the international design
application in accordance with 35 U.S.C. chapter 16; and
(3) Communicating the results of examination to the International
Bureau.
§ 1.1004 The International Bureau.
(a) The International Bureau is the World Intellectual Property
Organization located at Geneva, Switzerland. It is the international
intergovernmental organization which acts as the coordinating body
under the Hague Agreement and the Regulations.
(b) The major functions of the International Bureau include:
(1) Receiving international design applications directly from
applicants and indirectly from an office of indirect filing;
(2) Collecting required fees and crediting designation fees to the
accounts of the Contracting Parties concerned;
(3) Reviewing international design applications for compliance with
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prescribed formal requirements;
(4) Translating international design applications into the required
languages for recordation and publication;
(5) Registering international designs in the International Register
where the international design application complies with the applicable
requirements;
(6) Publishing international registrations in the International
Designs Bulletin; and
(7) Sending copies of the publication of the international
registration to each designated office.
§ 1.1005 Display of currently valid control number under the
Paperwork Reduction Act.
(a) Pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501
et seq.), the collection of information in this subpart has been
reviewed and approved by the Office of Management and Budget under
control number 0651-0075.
(b) Notwithstanding any other provision of law, no person is
required to respond to nor shall a person be subject to a penalty for
failure to comply with a collection of information subject to the
requirements of the Paperwork Reduction Act unless that collection of
information displays a currently valid Office of Management and Budget
control number. This section constitutes the display required by 44
U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of
information under Office of Management and Budget control number 0651-
0075 (see 5 CFR 1320.5(b)(2)(ii)(D)).
Who May File an International Design Application
§ 1.1011 Applicant for international design application.
(a) Only persons who are nationals of the United States or who have
a domicile, a habitual residence, or a real and effective industrial or
commercial establishment in the territory of the United States may file
international design applications through the United States Patent and
Trademark Office.
(b) Although the United States Patent and Trademark Office will
accept international design applications filed by any person referred
to in paragraph (a) of this section, an international design
application designating the United States may be refused by the Office
as a designated office if the applicant is not a person qualified under
35 U.S.C. chapter 11 to be an applicant.
§ 1.1012 Applicant's Contracting Party.
In order to file an international design application through the
United States Patent and Trademark Office as an office of indirect
filing, the United States must be applicant's Contracting Party
(Articles 4 and 1(xiv)).
The International Design Application
§ 1.1021 Contents of the international design application.
(a) Mandatory contents. The international design application shall
be in English, French, or Spanish (Rule 6(1)) and shall contain or be
accompanied by:
(1) A request for international registration under the Hague
Agreement (Article 5(1)(i));
(2) The prescribed data concerning the applicant (Article 5(1)(ii)
and Rule 7(3)(i) and (ii));
(3) The prescribed number of copies of a reproduction or, at the
choice of the applicant, of several different reproductions of the
industrial design that is the subject of the international design
application, presented in the prescribed manner; however, where the
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industrial design is two-dimensional and a request for deferment of
publication is made in accordance with Article 5(5), the international
design application may, instead of containing reproductions, be
accompanied by the prescribed number of specimens of the industrial
design (Article 5(1)(iii));
(4) An indication of the product or products that constitute the
industrial design or in relation to which the industrial design is to
be used, as prescribed (Article 5(1)(iv) and Rule 7(3)(iv));
(5) An indication of the designated Contracting Parties (Article
5(1)(v));
(6) The prescribed fees (Article 5(1)(vi) and Rule 12(1));
(7) The Contracting Party or Parties in respect of which the
applicant fulfills the conditions to be the holder of an international
registration (Rule 7(3)(iii));
(8) The number of industrial designs included in the international
design application, which may not exceed 100, and the number of
reproductions or specimens of the industrial designs accompanying the
international design application (Rule 7(3)(v));
(9) The amount of the fees being paid and the method of payment, or
instructions to debit the required amount of fees to an account opened
with the International Bureau, and the identification of the party
effecting the payment or giving the instructions (Rule 7(3)(vii)); and
(10) An indication of applicant's Contracting Party as required
under Rule 7(4)(a).
(b) Additional mandatory contents required by certain Contracting
Parties. (1) Where the international design application contains the
designation of a Contracting Party that requires, pursuant to Article
5(2), any of the following elements, then the international design
application shall contain such required element(s):
(i) Indications concerning the identity of the creator of the
industrial design that is the subject of that application (Rule 11(1));
(ii) A brief description of the reproduction or of the
characteristic features of the industrial design that is the subject of
that application (Rule 11(2));
(iii) A claim (Rule 11(3)).
(2) Where the international design application contains the
designation of a Contracting Party that has made a declaration under
Rule 8(1), then the international application shall contain the
statement, document, oath or declaration specified in that declaration
(Rule 7(4)(c)).
(c) Optional contents. The international design application may
contain:
(1) Two or more industrial designs, subject to the prescribed
conditions (Article 5(4) and Rule 7(7));
(2) A request for deferment of publication (Article 5(5) and Rule
7(5)(e)) or a request for immediate publication (Rule 17);
(3) An element referred to in item (i) or (ii) of Article 5(2)(b)
of the Hague Agreement or in Article 8(4)(a) of the 1960 Act even where
that element is not required in consequence of a notification in
accordance with Article 5(2)(a) of the Hague Agreement or in
consequence of a requirement under Article 8(4)(a) of the 1960 Act
(Rule 7(5)(a));
(4) The name and address of applicant's representative, as
prescribed (Rule 7(5)(b));
(5) A claim of priority of one or more earlier filed applications
in accordance with Article 6 and Rule 7(5)(c);
(6) A declaration, for purposes of Article 11 of the Paris
Convention, that the product or products which constitute the
industrial design or in which the industrial design is incorporated
have been shown at an official or officially recognized international
exhibition, together with the place where the exhibition was held and
the date on which the product or products were first exhibited there
and, where less than all the industrial designs contained in the
international design application are concerned, the indication of those
industrial designs to which the declaration relates or does not relate
(Rule 7(5)(d));
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(7) Any declaration, statement or other relevant indication as may
be specified in the Administrative Instructions (Rule 7(5)(f));
(8) A statement that identifies information known by the applicant
to be material to the eligibility for protection of the industrial
design concerned (Rule 7(5)(g));
(9) A proposed translation of any text matter contained in the
international design application for purposes of recording and
publication (Rule 6(4)).
(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:
(1) A claim (§§ 1.1021(b)(1)(iii) and 1.1025);
(2) Indications concerning the identity of the creator (i.e., the
inventor, see § 1.9(d)) in accordance with Rule 11(1); and
(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.
§ 1.1022 Form and signature.
(a) The international design application shall be presented on the
official form (Rules 7(1) and 1(vi)).
(b) The international design application shall be signed by the
applicant.
§ 1.1023 Filing date of an international design application in the
United States.
(a) Subject to paragraph (b) of this section, the filing date of an
international design application in the United States is the date of
international registration determined by the International Bureau under
the Hague Agreement (35 U.S.C. 384 and 381(a)(5)).
(b) Where the applicant believes the international design
application is entitled under the Hague Agreement to a filing date in
the United States other than the date of international registration,
the applicant may petition the Director under this paragraph to accord
the international design application a filing date in the United States
other than the date of international registration. Such petition must
be accompanied by the fee set forth in § 1.17(f) and include a
showing to the satisfaction of the Director that the international
design application is entitled to such filing date.
§ 1.1024 The description.
An international design application designating the United States
must include a specification as prescribed by 35 U.S.C. 112 and
preferably include a brief description of the reproduction pursuant to
Rule 7(5)(a) describing the view or views of the reproductions.
§ 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.
§ 1.1026 Reproductions.
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Reproductions shall comply with the requirements of Rule 9 and Part
Four of the Administrative Instructions.
§ 1.1027 Specimens.
Where a request for deferment of publication has been filed in
respect of a two-dimensional industrial design, the international
design application may include specimens of the design in accordance
with Rule 10 and Part Four of the Administrative Instructions.
Specimens are not permitted in an international design application that
designates the United States or any other Contracting Party which does
not permit deferment of publication.
§ 1.1028 Deferment of publication.
The international design application may contain a request for
deferment of publication, provided the application does not designate
the United States or any other Contracting Party which does not permit
deferment of publication.
Fees
§ 1.1031 International design application fees.
(a) International design applications filed through the Office as
an office of indirect filing are subject to payment of a transmittal
fee (35 U.S.C. 382(b) and Article 4(2)) in the amount of $120.
(b) The Schedule of Fees annexed to the Regulations (Rule 27(1)), a
list of individual designation fee amounts, and a fee calculator may be
viewed on the Web site of the World Intellectual Property Organization,
currently available at http://www.wipo.int/hague.
(c) The following fees required by the International Bureau may be
paid either directly to the International Bureau or through the Office
as an office of indirect filing in the amounts specified on the World
Intellectual Property Organization Web site described in paragraph (b)
of this section:
(1) International application fees (Rule 12(1)); and
(2) Fee for descriptions exceeding 100 words (Rule 11(2)).
(d) The fees referred to in paragraph (c) of this section may be
paid as follows:
(1) Directly to the International Bureau in Swiss currency (see
Administrative Instruction 801); or
(2) Through the Office as an office of indirect filing, provided
such fees are paid no later than the date of payment of the transmittal
fee required under paragraph (a) of this section. Any payment through
the Office must be in U.S. dollars. Applicants paying the fees in
paragraph (c) of this section through the Office may be subject to a
requirement by the International Bureau to pay additional amounts where
the conversion from U.S. dollars to Swiss currency results in the
International Bureau receiving less than the prescribed amounts.
(e) Payment of the fees referred to in Article 17 and Rule 24 for
renewing an international registration ("renewal fees") is not
required to maintain a U.S. patent issuing on an international design
application in force. Renewal fees, if required, must be submitted
directly to the International Bureau. Any renewal fee submitted to the
Office will not be transmitted to the International Bureau.
Representation
§ 1.1041 Representation in an international design application.
(a) The applicant may appoint a representative before the
International Bureau in accordance with Rule 3.
(b) Applicants of international design applications may be
represented before the Office as an office of indirect filing by a
practitioner registered (§ 11.6) or granted limited recognition
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(§ 11.9(a) or (b)) to practice before the Office in patent matters.
Such practitioner may act pursuant to § 1.34 or pursuant to
appointment by the applicant. The appointment must be in writing signed
by the applicant, must give the practitioner power to act on behalf of
the applicant, and must specify the name and registration number or
limited recognition number of each practitioner. An appointment of a
representative made in the international design application pursuant to
Rule 3(2) that complies with the requirements of this paragraph will be
effective as an appointment before the Office as an office of indirect
filing.
§ 1.1042 Correspondence respecting international design
applications filed with the Office as an office of indirect filing.
The applicant may specify a correspondence address for
correspondence sent by the Office as an office of indirect filing.
Where no such address has been specified, the Office will use as the
correspondence address the address of applicant's appointed
representative (§ 1.1041) or, where no representative is appointed,
the address as specified in Administrative Instruction 302.
Transmittal of International Design Application to the International
Bureau
§ 1.1045 Procedures for transmittal of international design
application to the International Bureau.
(a) Subject to paragraph (b) of this section and payment of the
transmittal fee set forth in § 1.1031(a), transmittal of the
international design application to the International Bureau shall be
made by the Office as provided by Rule 13(1). At the same time as it
transmits the international design application to the International
Bureau, the Office shall notify the International Bureau of the date on
which it received the application. The Office shall also notify the
applicant of the date on which it received the application and of the
transmittal of the international design application to the
International Bureau.
(b) No copy of an international design application may be
transmitted to the International Bureau, a foreign designated office,
or other foreign authority by the Office or the applicant, unless the
applicable requirements of part 5 of this chapter have been satisfied.
(c) Once transmittal of the international design application has
been effected under paragraph (a) of this section, except for matters
properly before the United States Patent and Trademark Office as an
office of indirect filing or as a designated office, all further
correspondence concerning the application should be sent directly to
the International Bureau. The United States Patent and Trademark Office
will generally not forward communications to the International Bureau
received after transmittal of the application to the International
Bureau. Any reply to an invitation sent to the applicant by the
International Bureau must be filed directly with the International
Bureau, and not with the Office, to avoid abandonment or other loss of
rights under Article 8.
Relief From Prescribed Time Limits; Conversion to a Design Application
Under 35 U.S.C. Chapter 16
§ 1.1051 Relief from prescribed time limits.
(a) If the delay in an applicant's failure to act within prescribed
time limits under the Hague Agreement in connection with requirements
pertaining to an international design application was unintentional, a
petition may be filed pursuant to this section to excuse the failure to
act as to the United States. A grantable petition pursuant to this
section must be accompanied by:
(1) A copy of any invitation sent from the International Bureau
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setting a prescribed time limit for which applicant failed to timely
act;
(2) The reply required under paragraph (c) of this section, unless
previously filed;
(3) The fee as set forth in § 1.17(m);
(4) A certified copy of the originally filed international design
application, unless a copy of the international design application was
previously communicated to the Office from the International Bureau or
the international design application was filed with the Office as an
office of indirect filing, and a translation thereof into the English
language if it was filed in another language;
(5) A statement that the entire delay in filing the required reply
from the due date for the reply until the filing of a grantable
petition pursuant to this paragraph was unintentional. The Director may
require additional information where there is a question whether the
delay was unintentional; and
(6) A terminal disclaimer (and fee as set forth in § 1.20(d))
required pursuant to paragraph (d) of this section.
(b) Any request for reconsideration or review of a decision
refusing to excuse the applicant's failure to act within prescribed
time limits in connection with requirements pertaining to an
international design application upon petition filed pursuant to this
section, to be considered timely, must be filed within two months of
the decision refusing to excuse or within such time as set in the
decision. Unless a decision indicates otherwise, this time period may
be extended under the provisions of § 1.136.
(c) Reply. The reply required may be:
(1) The filing of a continuing application. If the international
design application has not been subject to international registration,
the reply must also include a grantable petition under § 1.1023(b)
to accord the international design application a filing date; or
(2) A grantable petition under § 1.1052, where the
international design application was filed with the Office as an office
of indirect filing.
(d) Terminal disclaimer. Any petition pursuant to this section must
be accompanied by a terminal disclaimer and fee as set forth in
§ 1.321 dedicating to the public a terminal part of the term of any
patent granted thereon equivalent to the period beginning on the due
date for the reply for which applicant failed to timely act and ending
on the date of filing of the reply required under paragraph (c) of this
section and must also apply to any patent granted on a continuing
design application that contains a specific reference under 35 U.S.C.
120, 121, 365(c) or 386(c) to the application for which relief under
this section is sought.
§ 1.1052 Conversion to a design application under 35 U.S.C.
chapter 16.
(a) An international design application designating the United
States filed with the Office as an office of indirect filing and
meeting the requirements under § 1.53(b) for a filing date for an
application for a design patent may, on petition under this section, be
converted to an application for a design patent under § 1.53(b) and
accorded a filing date as provided therein. A petition under this
section must be accompanied by the fee set forth in § 1.17(t) and
be filed prior to publication of the international registration under
Article 10(3). The conversion of an international design application to
an application for a design patent under § 1.53(b) will not entitle
applicant to a refund of the transmittal fee or any fee forwarded to
the International Bureau, or the application of any such fee toward the
filing fee, or any other fee, for the application for a design patent
under § 1.53(b). The application for a design patent resulting from
conversion of an international design application must also include the
basic filing fee (§ 1.16(b)), the search fee (§ 1.16(l)), the
examination fee (§ 1.16(p)), the inventor's oath or declaration
(§ 1.63 or 1.64), and a surcharge if required by § 1.16(f).
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(b) An international design application will be converted to an
application for a design patent under § 1.53(b) if a decision on
petition under this section is granted prior to transmittal of the
international design application to the International Bureau pursuant
to § 1.1045. Otherwise, a decision granting a petition under this
section will be effective to convert the international design
application to an application for a design patent under § 1.53(b)
only for purposes of the designation of the United States.
(c) A petition under this section will not be granted in an
abandoned international design application absent a grantable petition
under § 1.1051.
(d) An international design application converted under this
section is subject to the regulations applicable to a design
application filed under 35 U.S.C. chapter 16.
National Processing of International Design Applications
§ 1.1061 Rules applicable.
(a) The rules relating to applications for patents for other
inventions or discoveries are also applicable to international design
applications designating the United States, except as otherwise
provided in this chapter or required by the Articles or Regulations.
(b) The provisions of § 1.74, § 1.84, except for §
1.84(c), and §§ 1.152 through 1.154 shall not apply to
international design applications.
§ 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.
§ 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.
§ 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
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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.
§ 1.1065 Corrections and other changes in the International
Register.
(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.
(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.
§ 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.
§ 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.
(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)).
§ 1.1068 Statement of grant of protection.
Upon issuance of a patent on an international design application
designating the United States, the Office may send to the International
Bureau a statement to the effect that protection is granted in the
United States to those industrial design or designs that are the
subject of the international registration and covered by the patent.
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§ 1.1070 Notification of Invalidation.
(a) Where a design patent that was granted from an international
design application is invalidated in the United States, and the
invalidation is no longer subject to any review or appeal, the patentee
shall inform the Office.
(b) After receiving a notification of invalidation under paragraph
(a) of this section or through other means, the Office will notify the
International Bureau in accordance with Hague Rule 20.
§ 1.1071 Grant of protection for an industrial design only upon
issuance of a patent.
A grant of protection for an industrial design that is the subject
of an international registration shall only arise in the United States
through the issuance of a patent pursuant to 35 U.S.C. 389(d) or 171,
and in accordance with 35 U.S.C. 153.
PART 3 - ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
. 37. The authority citation for part 3 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
. 38. Section 3.1 is amended by revising the definition of
"Application" to read as follows:
§ 3.1 Definitions.
* * * * *
Application means a national application for patent, an
international patent application that designates the United States of
America, an international design application that designates the United
States of America, or an application to register a trademark under
section 1 or 44 of the Trademark Act, 15 U.S.C. 1051, or 15 U.S.C.
1126, unless otherwise indicated.
* * * * *
. 39. Section 3.21 is revised to read as follows:
§ 3.21 Identification of patents and patent applications.
An assignment relating to a patent must identify the patent by the
patent number. An assignment relating to a national patent application
must identify the national patent application by the application number
(consisting of the series code and the serial number; e.g., 07/
123,456). An assignment relating to an international patent application
which designates the United States of America must identify the
international application by the international application number;
e.g., PCT/US2012/012345. An assignment relating to an international
design application which designates the United States of America must
identify the international design application by the international
registration number or by the U.S. application number assigned to the
international design application. If an assignment of a patent
application filed under § 1.53(b) of this chapter is executed
concurrently with, or subsequent to, the execution of the patent
application, but before the patent application is filed, it must
identify the patent application by the name of each inventor and the
title of the invention so that there can be no mistake as to the patent
application intended. If an assignment of a provisional application
under § 1.53(c) of this chapter is executed before the provisional
application is filed, it must identify the provisional application by
the name of each inventor and the title of the invention so that there
can be no mistake as to the provisional application intended.
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PART 5 - SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND
FILE APPLICATIONS IN FOREIGN COUNTRIES
. 40. The authority citation for 37 CFR part 5 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 41, 181-188, as amended by the
Patent Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418,
102 Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C.
2751 et seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.C.
2011 et seq.; the Nuclear Non Proliferation Act of 1978, 22 U.S.C.
3201 et seq.; and the delegations in the regulations under these
Acts to the Director (15 CFR 370.10(j), 22 CFR 125.04, and 10 CFR
810.7), as well as the Export Administration Act of 1979, 50 U.S.C.
app. 2401 et seq.; the International Emergency Economic Powers Act,
50 U.S.C. 1701 et seq.; E.O. 12938, 59 FR 59099, 3 CFR, 1994 Comp.,
p. 950; E.O. 1322, 66 FR 44025, 3 CFR, 2001 Comp., p. 783; Notice of
August 2, 2005, 70 FR 45273 (August 5, 2005).
. 41. Section 5.1 is amended by revising paragraph (b) to read as
follows:
§ 5.1 Applications and correspondence involving national security.
* * * * *
(b) Definitions. (1) Application as used in this part includes
provisional applications (§ 1.9(a)(2) of this chapter),
nonprovisional applications (§ 1.9(a)(3)), international
applications (§ 1.9(b)), or international design applications
(§ 1.9(n)).
(2) Foreign application as used in this part includes, for filing
in a foreign country, foreign patent office, foreign patent agency, or
international agency (other than the United States Patent and Trademark
Office acting as a Receiving Office for international applications (35
U.S.C. 361, § 1.412) or as an office of indirect filing for
international design applications (35 U.S.C. 382, § 1.1002)) any of
the following: An application for patent, international application,
international design application, or application for the registration
of a utility model, industrial design, or model.
* * * * *
. 42. Section 5.3 is amended by revising paragraph (d) to read as
follows:
§ 5.3 Prosecution of application under secrecy orders; withholding
patent.
* * * * *
(d) International applications and international design
applications under secrecy order will not be mailed, delivered, or
otherwise transmitted to the international authorities or the
applicant. International applications under secrecy order will be
processed up to the point where, if it were not for the secrecy order,
record and search copies would be transmitted to the international
authorities or the applicant.
* * * * *
. 43. Section 5.11 is amended by revising the section heading and
paragraphs (a) through (c), (e)(3)(i), and (f) to read as follows:
§ 5.11 License for filing in, or exporting to, a foreign country
an application on an invention made in the United States or technical
data relating thereto.
(a) A license from the Commissioner for Patents under 35 U.S.C. 184
is required before filing any application for patent including any
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modifications, amendments, or supplements thereto or divisions thereof
or for the registration of a utility model, industrial design, or
model, in a foreign country, foreign patent office, foreign patent
agency, or any international agency (other than the United States
Patent and Trademark Office acting as a Receiving Office for
international applications (35 U.S.C. 361, § 1.412) or as an office
of indirect filing for international design applications (35 U.S.C.
382, § 1.1002)), if the invention was made in the United States,
and:
(1) An application on the invention has been filed in the United
States less than six months prior to the date on which the application
is to be filed; or
(2) No application on the invention has been filed in the United
States.
(b) The license from the Commissioner for Patents referred to in
paragraph (a) of this section would also authorize the export of
technical data abroad for purposes relating to the preparation, filing
or possible filing and prosecution of a foreign application without
separately complying with the regulations contained in 22 CFR parts 120
through 130 (International Traffic in Arms Regulations of the Department
of State), 15 CFR parts 730 through 774 (Export Administration Regulations
of the Bureau of Industry and Security, Department of Commerce), and 10
CFR part 810 (Assistance to Foreign Atomic Energy Activities Regulations
of the Department of Energy).
(c) Where technical data in the form of a patent application, or in
any form, are being exported for purposes related to the preparation,
filing or possible filing and prosecution of a foreign application,
without the license from the Commissioner for Patents referred to in
paragraphs (a) or (b) of this section, or on an invention not made in
the United States, the export regulations contained in 22 CFR parts 120
through 130 (International Traffic in Arms Regulations of the
Department of State), 15 CFR parts 730 through 774 (Export
Administration Regulations of the Bureau of Industry and Security,
Department of Commerce), and 10 CFR part 810 (Assistance to Foreign
Atomic Energy Activities Regulations of the Department of Energy) must
be complied with unless a license is not required because a United
States application was on file at the time of export for at least six
months without a secrecy order under § 5.2 being placed thereon.
The term "exported" means export as it is defined in 22 CFR part 120,
15 CFR part 734, and activities covered by 10 CFR part 810.
* * * * *
(e) * * *
(3) * * *
(i) A license is not, or was not, required under paragraph (e)(2)
of this section for the foreign application;
* * * * *
(f) A license pursuant to paragraph (a) of this section can be
revoked at any time upon written notification by the United States
Patent and Trademark Office. An authorization to file a foreign
application resulting from the passage of six months from the date of
filing of a United States patent application may be revoked by the
imposition of a secrecy order.
. 44. Section 5.12 is amended by revising paragraph (a) to read as
follows:
§ 5.12 Petition for license.
(a) Filing of an application on an invention made in the United
States will be considered to include a petition for license under 35
U.S.C. 184 for the subject matter of the application. The filing
receipt or other official notice will indicate if a license is granted.
If the initial automatic petition is not granted, a subsequent petition
may be filed under paragraph (b) of this section.
* * * * *
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. 45. Section 5.13 is revised to read as follows:
§ 5.13 Petition for license; no corresponding application.
If no corresponding national, international design, or
international application has been filed in the United States, the
petition for license under § 5.12(b) must also be accompanied by a
legible copy of the material upon which a license is desired. This copy
will be retained as a measure of the license granted.
. 46. Section 5.14 is amended by revising paragraph (c) to read as
follows:
§ 5.14 Petition for license; corresponding U.S. application.
* * * * *
(c) Where the application to be filed or exported abroad contains
matter not disclosed in the United States application or applications,
including the case where the combining of two or more United States
applications introduces subject matter not disclosed in any of them, a
copy of the application as it is to be filed or exported abroad, must
be furnished with the petition. If, however, all new matter in the
application to be filed or exported is readily identifiable, the new
matter may be submitted in detail and the remainder by reference to the
pertinent United States application or applications.
* * * * *
. 47. Section 5.15 is amended by revising paragraphs (a) introductory
text, (a)(3), (b), (d), and (e) to read as follows:
§ 5.15 Scope of license.
(a) Applications or other materials reviewed pursuant to §§ 5.12
through 5.14, which were not required to be made available for
inspection by defense agencies under 35 U.S.C. 181, will be eligible
for a license of the scope provided in this paragraph. This license
permits subsequent modifications, amendments, and supplements
containing additional subject matter to, or divisions of, a foreign
application, if such changes to the application do not alter the
general nature of the invention in a manner that would require the
United States application to have been made available for inspection
under 35 U.S.C. 181. Grant of this license authorizes the export and
filing of an application in a foreign country or to any foreign patent
agency or international patent agency when the subject matter of the
foreign application corresponds to that of the domestic application.
This license includes authority:
* * * * *
(3) To take any action in the prosecution of the foreign
application provided that the adding of subject matter or taking of any
action under paragraph (a)(1) or (2) of this section does not change
the general nature of the invention disclosed in the application in a
manner that would require such application to have been made available
for inspection under 35 U.S.C. 181 by including technical data
pertaining to:
(i) Defense services or articles designated in the United States
Munitions List applicable at the time of foreign filing, the unlicensed
exportation of which is prohibited pursuant to the Arms Export Control
Act, as amended, and 22 CFR parts 120 through 130; or
(ii) Restricted Data, sensitive nuclear technology or technology
useful in the production or utilization of special nuclear material or
atomic energy, dissemination of which is subject to restrictions of the
Atomic Energy Act of 1954, as amended, and the Nuclear Non-
Proliferation Act of 1978, as implemented by the regulations for
Assistance to Foreign Atomic Energy Activities, 10 CFR part 810, in
effect at the time of foreign filing.
(b) Applications or other materials which were required to be made
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available for inspection under 35 U.S.C. 181 will be eligible for a
license of the scope provided in this paragraph. Grant of this license
authorizes the export and filing of an application in a foreign country
or to any foreign patent agency or international patent agency.
Further, this license includes authority to export and file all
duplicate and formal papers in foreign countries or with foreign and
international patent agencies and to make amendments, modifications,
and supplements to, file divisions of, and take any action in the
prosecution of the foreign application, provided subject matter
additional to that covered by the license is not involved.
* * * * *
(d) In those cases in which no license is required to file or
export the foreign application, no license is required to file papers
in connection with the prosecution of the foreign application not
involving the disclosure of additional subject matter.
(e) Any paper filed abroad or transmitted to an international
patent agency following the filing of a foreign application that
changes the general nature of the subject matter disclosed at
the time of filing in a manner that would require such application to
have been made available for inspection under 35 U.S.C. 181 or that
involves the disclosure of subject matter listed in paragraph (a)(3)(i)
or (ii) of this section must be separately licensed in the same manner
as a foreign application. Further, if no license has been granted under
§ 5.12(a) on filing the corresponding United States application,
any paper filed abroad or with an international patent agency that
involves the disclosure of additional subject matter must be licensed
in the same manner as a foreign application.
* * * * *
PART 11 - REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT
AND TRADEMARK OFFICE
. 48. The authority citation for 37 CFR part 11 continues to read as
follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32,
41.
. 49. Section 11.10 is amended by revising paragraph (b)(3)(iii) to read
as follows:
§ 11.10 Restrictions on practice in patent matters.
* * * * *
(b) * * *
(3) * * *
(iii) Particular patent or patent application means any patent or
patent application, including, but not limited to, a provisional,
substitute, international, international design, continuation,
divisional, continuation-in-part, or reissue patent application, as
well as any protest, reexamination, petition, appeal, interference, or
trial proceeding based on the patent or patent application.
* * * * *
PART 41 - PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
. 50. The authority citation for part 41 continues to read as follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134,
135, and Pub. L. 112-29.
. 51. Section 41.200 is revised by adding paragraph (b) to read as
follows:
§ 41.200 Procedure; pendency.
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* * * * *
(b) Any reference to 35 U.S.C. 102 or 135 in this subpart refers to
the statute in effect on March 15, 2013, unless otherwise expressly
indicated. Any reference to 35 U.S.C. 141 or 146 in this subpart refers
to the statute applicable to the involved application or patent.
* * * * *
. 52. Section 41.201 is amended by revising the definition of
"Constructive reduction to practice" and paragraph (2)(ii) of the
definition for "Threshold issue" to read as follows:
§ 41.201 Definitions.
* * * * *
Constructive reduction to practice means a described and enabled
anticipation under 35 U.S.C. 102(g)(1), in a patent application of the
subject matter of a count. Earliest constructive reduction to practice
means the first constructive reduction to practice that has been
continuously disclosed through a chain of patent applications including
in the involved application or patent. For the chain to be continuous,
each subsequent application must comply with the requirements of 35
U.S.C. 119-121, 365, or 386.
* * * * *
Threshold issue means an issue that, if resolved in favor of the
movant, would deprive the opponent of standing in the interference.
Threshold issues may include:
* * * * *
(2) * * *
(ii) Unpatentability for lack of written description under 35
U.S.C. 112 of an involved application claim where the applicant
suggested, or could have suggested, an interference under § 41.202(a).
March 16, 2015 MICHELLE K. LEE
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
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