2930 Corrections and Other Changes in the International Register [R-07.2022]

I. CORRECTIONS UNDER HAGUE RULE 22

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

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

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

II. RECORDING OF CHANGES UNDER HAGUE ARTICLE 16

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

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

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

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

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

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

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