2905.01 Filing Through the USPTO as an Office of Indirect Filing [R-01.2024]

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 United States may file international design applications through the USPTO. See 35 U.S.C. 382(a) and 37 CFR 1.1011(a). In addition, in order to file an international design application through the USPTO, the United States must be applicant’s Contracting Party. See 37 CFR 1.1012 and Hague Agreement Article 4. Thus, an international design application may be filed through the USPTO only if: (1) the applicant, or each applicant if there is more than one applicant, 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; and (2) the United States is the applicant’s Contracting Party, or each applicant’s Contracting Party if there is more than one applicant.

The official form for presenting the international design application, “Application for International Registration” (form DM/1), includes boxes to indicate both applicant’s entitlement to file the international design application and applicant’s Contracting Party. See MPEP § 2909.01.

International design applications may be filed through the USPTO as an office of indirect filing via the USPTO patent electronic filing system, mail, or hand-delivery to the Customer Service Window at the USPTO’s Alexandria headquarters. See MPEP § 501, subsection III for information regarding hand-delivery of papers. The mailing address for delivery by the U.S. Postal Service is: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450. It should be noted that the Priority Mail Express^® provisions of 37 CFR 1.10 apply to the filing of all applications and papers filed in the U.S. Patent and Trademark Office, including international design applications and related papers and fees. It should be further noted, however, that the filing of an international design application is excluded from the Certificate of Mailing or Transmission procedures under 37 CFR 1.8. Facsimile transmission may not be used for the filing of an international design application or the filing of color drawings under 37 CFR 1.1026. See 37 CFR 1.6(d)(3) and (4), 37 CFR 1.8(a)(2)(i)(K). See MPEP § 502 for more information on depositing correspondence with the USPTO.

Payment of the transmittal fee specified in 37 CFR 1.1031(a) is required for international design applications filed through the USPTO as an office of indirect filing. In addition, international design applications filed with the USPTO are subject to national security review. See 35 U.S.C. 382(b). The international design application will not be transmitted to the International Bureau if the transmittal fee has not been paid or the necessary national security clearance has not been obtained. See 37 CFR 1.1045.

Upon receipt of an international design application, the USPTO will review the application for the required indications establishing each applicant’s entitlement to file the international design application through the USPTO, payment of the transmittal fee, and national security. If the indications are not sufficient to establish each applicant’s entitlement to file the international design application through the USPTO, the transmittal fee has not been paid, or the necessary national security clearance has not been obtained, the Office will notify the applicant accordingly via Form PTO-2320, “Notification Regarding Receipt And Transmittal Of The International Design Application To The International Bureau.” Form PTO-2320 does not set a time period to cure the deficiency but instead warns the applicant that an international design application that is not received by the International Bureau within six months from receipt of the application by the USPTO will receive a filing date as of the date on which the International Bureau receives the application, rather than the USPTO receipt date, subject to Hague Agreement Rule 14(2).

If the conditions for transmitting the international design application to the International Bureau have been satisfied, the application will be transmitted to the International Bureau. The applicant will be notified via Form PTO-2320 of the transmittal of the application to the International Bureau and of the receipt date of the international design application by the USPTO.

Because the international design application must be received by the International Bureau within six months of receipt of the application by the USPTO in order to obtain the receipt date at the USPTO as the filing date, the applicant should contact the USPTO for a status update well in advance of the expiration of this six month period if the applicant has not received Form PTO-2320 indicating transmittal of the application to the International Bureau.

Applicants are reminded, when electronically filing an international design application through the USPTO as an office of indirect filing, to attach reproductions via the “Reproductions” section of the “Upload documents” screen of the USPTO patent electronic filing system rather than via the “Upload documents” section of the “Upload documents” screen. Failure to attach the reproductions via the “Reproductions” section may result in additional per page publication fees being required by the International Bureau.

The Office will generally not forward any submission filed in an international design application to the International Bureau that is received after the application has been transmitted to the International Bureau. Applicants are cautioned 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 Hague Agreement Article 8. See 37 CFR 1.1045(c).