2914 Conversion of an International Design Application to a Design Application Under 35 U.S.C. Chapter 16 [R-07.2015]

Pursuant to 35 U.S.C. 384(a), “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.” 37 CFR 1.1052 sets forth a procedure for converting an international design application designating the United States to a design application under 35 U.S.C. chapter 16. The requirements for a filing date for a design application under 35 U.S.C. chapter 16 are set forth in 37 CFR 1.53(b). 37 CFR 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 37 CFR 1.53(b) for a filing date for an application for a design patent may, on petition, be converted to an application for a design patent under 37 CFR 1.53(b) and accorded a filing date as provided therein.

A grantable petition to convert under 37 CFR 1.1052(a) must be accompanied by the fee set forth in 37 CFR 1.17(t) and be filed prior to publication of the international registration under Article 10(3) of the Hague Agreement. The conversion of an international design application to an application for a design patent under 37 CFR 1.53(b) will not entitle applicant to a refund of the transmittal fee or any fee forwarded to the International Bureau, and such fees will not be applied toward the filing fee, or any other fee, required for the application for a design patent under 37 CFR 1.53(b). Conversion will not be granted unless the application for a design patent resulting from conversion of an international design application includes the applicable basic filing fee, search fee, examination fee, inventor’s oath or declaration, and any required surcharge. In addition, a petition to convert under 37 CFR 1.1052(a) will not be granted in an abandoned application absent a grantable petition for relief from prescribed time limits under 37 CFR 1.1051. See 37 CFR 1.1052(c). An international design application converted under 37 CFR 1.1052 is subject to the regulations applicable to a design application filed under 35 U.S.C. chapter 16. See 37 CFR 1.1052(d).

Pursuant to 37 CFR 1.1052(b), if a decision granting a petition to convert under 37 CFR 1.1052(a) is issued prior to transmittal of the international design application to the International Bureau under 37 CFR 1.1045, then the decision will be effective to convert the international design application to an application for a design patent under 37 CFR 1.53(b) for all purposes. In such case, the application materials will not be communicated to the International Bureau, and the USPTO will treat the international design application submission as an application for a design patent filed under 37 CFR 1.53(b). If, however, a decision granting a petition to convert under 37 CFR 1.1052(a) is issued after the application materials have been communicated to the International Bureau under 37 CFR 1.1045, then the decision 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 37 CFR 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.

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