[Federal Register Volume 80, Number 63 (Thursday, April 2, 2015)]
[Rules and Regulations]
[Pages 17918-17971]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-06397]



[[Page 17917]]

Vol. 80

Thursday,

No. 63

April 2, 2015

Part IV





Department of Commerce





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 United States Patent and Trademark Office





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37 CFR Parts 1, 3, 5, et al.





 Changes To Implement the Hague Agreement Concerning International 
Registration of Industrial Designs; Final Rule

Federal Register / Vol. 80 , No. 63 / Thursday, April 2, 2015 / Rules 
and Regulations

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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.

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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 
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

[[Page 17919]]

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 
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 
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.

[[Page 17920]]

    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 
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 
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

[[Page 17921]]

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 
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 
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

[[Page 17922]]

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 Sec.  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 Web 
site, 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 
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 Sec. Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  1.11(a) to which 
Sec.  1.14(a)(1)(ii) refers. In addition, the term ``published 
application'' is defined in Sec.  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 Sec.  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 
Agreement that designates the United

[[Page 17923]]

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 Sec.  1.215. The Office will not publish international 
design applications under Sec.  1.215 (see Sec.  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 Sec.  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 
Sec. Sec.  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 Sec. Sec.  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 
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 Sec. Sec.  
1.14(a)(ii)-(iii). The provisions of Sec.  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 (Sec.  1.1002), the records of the 
international design application may be available under Sec.  
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 (Sec.  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 Sec.  
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 
application 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

[[Page 17924]]

U.S.C. chapter 16). The other provisions of Sec.  1.16 are not changed.
    Section 1.17: Section 1.17(f) is amended to specify the fee for 
filing a petition under Sec.  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 
Sec.  1.1023, discussed infra, which requires, inter alia, the fee set 
forth in Sec.  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 
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 Sec.  1.1023 is the same as the fee for filing 
a petition to accord a filing date in a national application (see Sec.  
1.53(e)).
    Section 1.17(g) is amended to specify the fee for filing a petition 
under Sec.  1.55(g) for acceptance of a belated certified copy of a 
foreign application in a design application. See discussion of Sec.  
1.55(g).
    Section 1.17(i)(1) is amended to remove the processing fee under 
Sec.  1.55 for entry of a priority claim or certified copy of a foreign 
application after payment of the issue fee. See discussion of Sec.  
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 Sec.  
1.1051, discussed infra. These requirements include, inter alia, the 
requirement to pay the fee set forth in Sec.  1.17(m). The fee set 
forth in Sec.  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 
Sec.  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 Sec.  1.1052 to convert an international design application to a 
design application under 35 U.S.C. chapter 16. See discussion of Sec.  
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 
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

[[Page 17925]]

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 Sec.  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 Sec.  
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 Sec.  1.1031 will only be effective for the transmittal fee 
(Sec.  1.1031(a)). The international fees set forth in Sec.  1.1031, 
other than the transmittal fee set forth in Sec.  1.1031(a), are not 
required to be paid to the Office as an office of indirect filing. See 
Sec.  1.1031(d).
    Section 1.27: The introductory text of Sec.  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 Sec.  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 Sec.  
1.1041 before the International Bureau where the micro entity 
certification is filed with the International Bureau.
    Section 1.32: The introductory text of Sec.  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 Sec.  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 Sec.  1.48.
    Section 1.46: The introductory text of Sec.  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 Sec.  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 Sec.  
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 Sec.  1.46(c), including the 
requirements of Sec. Sec.  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 Sec.  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 Sec.  1.46 and further 
provides that a change in the name of the applicant under Sec.  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 Sec.  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 
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 Sec.  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 Sec.  1.46 and provides that any request to change the 
applicant under Sec.  1.46 after an original applicant has been 
specified must include an application data sheet under Sec.  1.76 
specifying the applicant in the applicant information section (Sec.  
1.76(b)(7)) in accordance with Sec.  1.76(c)(2) and comply with 
Sec. Sec.  3.71 and 3.73. The language of Sec.  1.46(c)(2) is amended 
to clarify that any change in the applicant under Sec.  1.46 once an 
applicant has been specified requires identification of the new 
applicant in an application data sheet in accordance with Sec.  
1.76(c)(2) and comply with Sec. Sec.  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

[[Page 17926]]

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 Sec. Sec.  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 Sec.  1.48.
    Section 1.53: The introductory text of Sec.  1.53(b) is amended to 
include a reference to 35 U.S.C. 386(c), as added by the PLTIA. Thus, 
Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  1.55 
made therein applicable to any patent application filed before, on, or 
after December 18, 2013, except for the changes to Sec.  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 Sec.  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 Sec.  1.55(b)(1) or (b)(2) is the application required to be 
filed within the period set forth in Sec.  1.55(b)(1). For purposes of 
Sec.  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, Sec.  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 Sec.  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 Sec.  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 Sec.  1.55(c) to restore the right of 
priority is granted, a further petition under Sec.  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 
which the right of priority was restored.
    Requiring the filing of the petition under Sec.  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

[[Page 17927]]

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 Sec.  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 Sec.  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 Sec.  
1.55(d) or (m) during pendency and within the time period provided by 
Sec.  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 Sec.  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 Sec.  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 Sec.  
1.55(h) to the requirement for a certified copy of the prior foreign 
application. See discussion of Sec.  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 Sec.  
1.55(e) or (f) or with a petition accompanied by the fee set forth in 
Sec.  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 Sec.  1.323 along with, 
where applicable, a petition under Sec.  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 Sec.  1.55 to be filed in the application with a 
petition under Sec.  1.55(f) or as provided in Sec.  1.55(g), together 
with the fee set forth in Sec.  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 
Sec.  1.55 was not timely made, Sec.  1.55(g) as amended in this final 
rule allows the priority claim and certified copy required under Sec.  
1.55 to be filed pursuant to a petition under Sec.  1.55(e) even if the 
application is not pending (e.g., a patented application). Furthermore, 
where the priority claim required under Sec.  1.55 was timely filed in 
the application but was not included on the patent because the 
requirement under Sec.  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 Sec.  1.323, 
accompanied by a grantable petition under Sec.  1.55(f) or (g), without 
the need for a petition under Sec.  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 Sec.  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 Sec.  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 Sec.  1.323.
    Section 1.55(h) provides that the requirement in Sec.  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 Sec.  
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 Sec.  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 Sec.  1.55(f). See AIA Frequently Asked Questions, Question 
FITF3500,

[[Page 17928]]

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) (Sec.  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 
Sec.  1.55(f). Id. Nonprovisional international design applications are 
also excluded from the transition provision of Sec.  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 (Sec.  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 Sec.  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 
Sec.  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 Sec.  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 ``Sec.  1.55(h)'' to ``Sec.  1.55(i)'' in light of the changes to 
Sec.  1.55 in this final rule. The introductory text of Sec.  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 Sec.  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 Sec.  1.55 or benefit claim under Sec.  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 Sec.  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 Sec.  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 Sec.  1.57(b)(2), which 
applies to international applications.
    Section 1.63: Section 1.63(d)(1) is amended to add references to 
Sec.  1.1021(d) and 35 U.S.C. 386(c) so as to provide that a newly 
executed oath or declaration under Sec.  1.63, or substitute statement 
under Sec.  1.64, is not required under Sec. Sec.  1.51(b)(2) and 
1.53(f), or under Sec. Sec.  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 Sec.  1.78 of an earlier-
filed application, provided that an oath or declaration in compliance 
with this section, or substitute statement under Sec.  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 Sec.  
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 
Sec.  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 Sec.  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

[[Page 17929]]

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 Sec.  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 Sec.  
1.78(a)(1)(i) or (a)(1)(ii) is the application required to be filed 
within the period set forth in Sec.  1.78(a)(1)(i). For purposes of 
Sec.  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 Sec.  1.55. See 
discussion of Sec.  1.55(c), supra. If a petition under Sec.  1.78(b) 
to restore benefit of a provisional application is granted, a further 
petition under Sec.  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 Sec.  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 Sec.  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 Sec.  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 
Sec.  1.9), the required reference can identify the nonprovisional 
application number instead of the international registration number and 
filing date under Sec.  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 Sec.  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 Sec.  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 Sec.  1.78. Section 1.78(d)(3)(iii) provides that, 
except as provided in Sec.  1.78(e), the failure to timely submit the 
reference required by 35 U.S.C. 120 and Sec.  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 Sec.  1.78(d)(3) in this 
final rule would make the procedures under Sec.  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 Sec.  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 
international design application pursuant to Sec.  1.78(d)(7). Rather, 
the Office foresees use of Sec.  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

[[Page 17930]]

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 Sec.  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 Sec.  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 Sec.  1.84(a)(2)(ii) and that the specification 
contain the reference to the color drawings or photographs set forth in 
Sec.  1.84(a)(2)(iii) are maintained. The reference set forth in Sec.  
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 Sec.  1.1026.
    Section 1.85: Section 1.85(c) is amended to provide that if an 
amended drawing submitted under Sec.  1.121(d) in a nonprovisional 
international design application does not comply with Sec.  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) 
(``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 Sec.  1.105(a)(1) is 
amended to make a requirement for information under Sec.  1.105 
applicable to international design applications and to clarify that the 
requirement under Sec.  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 Sec.  
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 Sec.  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 Sec.  1.114(e)(3) to clarify that the request for continued 
examination practice set forth in Sec.  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 
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 Sec. Sec.  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 Sec.  1.109, rather than the 
definition of ``effective filing date'' in 35 U.S.C. 100(i). The 
definition of ``effective filing date'' in Sec.  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 Sec.  1.109. See Sec. Sec.  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

[[Page 17931]]

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 Sec.  1.109, rather than the 
definition of ``effective filing date'' in 35 U.S.C. 100(i). The 
definition of ``effective filing date'' in Sec.  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 Sec.  1.109. See Sec. Sec.  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, Sec.  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 Sec.  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 Sec.  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 Sec.  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.
    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 Sec.  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), Sec.  1.1011(a) specifies that 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

[[Page 17932]]

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 Sec.  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 
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 Sec.  1.1021(a), an international design 
application that designates the United States shall contain or be 
accompanied by: (1) A claim (Sec. Sec.  1.1021(b)(1)(iii) and 1.1025); 
(2) indications concerning the

[[Page 17933]]

identity of the creator (i.e., the inventor, see Sec.  1.9(d)) in 
accordance with Rule 11(1); and (3) the inventor's oath or declaration 
(Sec. Sec.  1.63 and 1.64). Section 1.1021(d)(3) further provides that 
the requirements in Sec. Sec.  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 Sec.  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 
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 Sec.  
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 (Sec. Sec.  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. 
381(a)(5) as ``the date of international registration determined by the 
International Bureau under the treaty.'' 126 Stat. at 1528. 
Accordingly, Sec.  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 Sec.  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, Sec.  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 Sec.  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

[[Page 17934]]

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 
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., Sec.  1.153(b) (``No description, other than a reference to the 
drawing, is ordinarily required. . . .); Sec.  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 
Sec.  1.1067, infra.
    Thus, Sec.  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).
    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, Sec.  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

[[Page 17935]]

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 Sec.  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 
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 Sec.  
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 Sec.  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 Sec.  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 
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

[[Page 17936]]

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 Sec.  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, Sec. Sec.  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, Sec.  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, Sec.  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 (Sec.  
11.6) or granted limited recognition (Sec.  11.9(a) or (b)) to practice 
before the Office (Sec.  11.6). Section 1.1041(b) further provides that 
such practitioner may act pursuant to Sec.  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 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 Sec.  1.9(a)(1)), the regulations governing national applications 
shall apply. See Sec.  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 (Sec.  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, Sec.  1.1045(a) 
is added to provide that, subject to Sec.  1.1045(b) and payment of the 
transmittal fee set forth in Sec.  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, Sec.  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, Sec.  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

[[Page 17937]]

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 
delay was unintentional. 126 Stat. at 1530; see discussion of Sec.  
1.17(m), supra. Under Sec.  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 Sec.  1.1051(c), unless previously 
filed; (3) the fee as set forth in Sec.  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 Sec.  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 Sec.  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 Sec.  
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 Sec.  1.1023(b) to accord the international 
design application a filing date; or (2) a grantable petition under 
Sec.  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. 
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, Sec.  1.1051(c) provides that the reply may be a 
grantable petition under Sec.  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 Sec.  1.1051 
must be accompanied by a terminal disclaimer and fee as set forth in 
Sec.  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 Sec.  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 Sec.  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 Sec.  1.53(b). Accordingly, Sec.  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 Sec.  1.53(b) for a filing date for an 
application for a design patent may, on

[[Page 17938]]

petition under this section, be converted to an application for a 
design patent under Sec.  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 Sec.  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 Sec.  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 Sec.  1.53(b). In 
addition, Sec.  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 (Sec.  1.16(b)), the search fee 
(Sec.  1.16(l)), the examination fee (Sec.  1.16(p)), the inventor's 
oath or declaration (Sec. Sec.  1.63 or 1.64), and a surcharge if 
required by Sec.  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 Sec.  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 Sec.  
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 Sec.  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 Sec.  1.53(b) only for purposes of the designation of the United 
States. Thus, pursuant to Sec.  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 Sec.  1.53(b). Once transmittal of the application under Sec.  
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 Sec.  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 Sec.  1.1052 will 
not be granted in an abandoned international design application absent 
a grantable petition under Sec.  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 Sec.  
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 Sec.  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 
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,

[[Page 17939]]

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 Sec.  
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 (Sec.  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 Sec.  
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 Sec.  1.1062(b) to confer 
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 Sec. Sec.  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 Sec.  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 Sec. Sec.  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 
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 Sec.  1.111 shall apply to a reply to a 
notification of refusal. As described above, the notification of 
refusal may be

[[Page 17940]]

a non-final Office action, including a non-final Office action on the 
merits, after a first examination under Sec.  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 Sec. Sec.  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, Sec.  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 Sec.  
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 Sec. Sec.  
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, 
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, Sec.  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, Sec.  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 Sec.  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, Sec.  1.1066(a) sets forth how the 
Office will

[[Page 17941]]

establish the correspondence address for a nonprovisional international 
design application in the absence of a communication from the applicant 
changing the correspondence address. Specifically, Sec.  1.1066(a) 
provides that, unless the correspondence address is changed in 
accordance with Sec.  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 Sec.  1.1042; (ii) the address of the 
applicant's representative identified in the publication of the 
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 Sec.  1.33(a) shall be 
construed to include a reference to Sec.  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 Sec.  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 Sec.  1.74 for a description of the drawings. 
Instead, a requirement for a brief description of the drawings is 
provided for in Sec.  1.1067(a) in this final rule. The description 
requirement in Sec.  1.1067(a) is consistent with the description 
requirement applicable to design applications filed under 35 U.S.C. 
chapter 16. See Sec.  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 
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 Sec.  1.63, or a substitute statement in compliance 
with Sec.  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 Sec.  1.63, or substitute statement in 
compliance with Sec.  1.64, no later than the date on which the issue 
fee is paid to avoid abandonment. This time period is not extendable 
under Sec.  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 Sec.  1.48(a) and 
an executed an oath or declaration from the inventor has not been 
received. See Sec.  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 Sec.  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

[[Page 17942]]

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 Sec.  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 
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, Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  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 
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 Sec.  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 Sec.  5.14 under the conditions set 
forth in Sec.  5.14(c). The copy of the application required under 
Sec.  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 Sec. Sec.  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 Sec.  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

[[Page 17943]]

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 
Sec.  1.46(c) (pertaining to a change in the applicant), Sec. Sec.  
3.21 and 3.24 (pertaining to assignments), and all rules pertaining to 
actions by the patent owner (e.g., Sec. Sec.  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.
    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., Sec.  3.1 (defining 
``application'' for purposes of the rules governing assignments to 
broadly include ``international [PCT] applications that designate the 
United States''); Sec.  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., 
Sec.  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 
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 Sec.  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

[[Page 17944]]

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 Sec.  1.46(c). This is also consistent with applicant 
changes made pursuant to Sec.  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 
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 Sec.  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 Sec.  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 Sec.  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); Sec.  
1.78(d)(4) (providing that the request for a continued prosecution 
application under Sec.  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 Sec.  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

[[Page 17945]]

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 Sec.  1.53(d)(1)(ii) (providing that 
the prior nonprovisional application is a design application that is 
complete as defined by Sec.  1.51(b)). No such efficiencies 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 Sec. Sec.  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 
Sec.  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 Sec.  
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 Sec.  1.16(b), the search fee 
as set forth in Sec.  1.16(l), and the examination fee as set forth in 
Sec.  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 
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 Sec.  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 Sec.  1.17(p) and statement 
required under Sec.  1.97(e). See Sec.  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

[[Page 17946]]

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 
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 Sec.  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 Sec.  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 Sec.  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 Sec.  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 
individuals associated with the filing or prosecution of a patent 
application for purposes of Sec.  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 
Sec.  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 Sec.  
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 Sec.  1.56. The 
duty under Sec.  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 Sec.  1.56(a), but the duty does apply to inventors (who 
may be applicants) and to every person who is

[[Page 17947]]

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); Sec.  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); Sec.  1.1061. Thus, for example, any reply under Sec.  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 Sec. Sec.  1.112, 1.113. Accordingly, no rule changes are 
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., Sec.  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 Sec.  1.1052.
    Response: This final rule revises Sec.  1.1052 to include a new 
paragraph (d) to clarify that an international design application 
converted under Sec.  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 Sec.  1.78 are 
subject to the rules governing domestic national applications.
    Response: A continuing application that claims benefit under Sec.  
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., Sec. Sec.  
1.151-1.155. In contrast, a continuing application filed as an 
international design application is subject to the requirements of the 
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 Sec.  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 
Sec.  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 
Sec.  1.55. See MPEP 214.03, 1302.06. In

[[Page 17948]]

addition, the requirement in former Sec.  1.55(g) for payment of the 
processing fee set forth in Sec.  1.17(i) where the certified copy is 
filed after the date the issue fee is paid has been eliminated from 
Sec.  1.55 in this final rule. Furthermore, Sec.  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 Sec.  
1.17(g). The petition procedure in Sec.  1.55(g) corresponds to the 
petition procedure under Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  
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 
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 Sec.  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 Sec.  
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 Sec.  
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 Sec.  
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 Sec.  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 Sec.  1.1027 as suggested and 
adds a new rule Sec.  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

[[Page 17949]]

designates the United States or other country that does not permit 
deferment of 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 Sec.  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 Sec.  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, 
the Office does not regard the failure to send a notification of 
refusal within the period referenced in Sec.  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

[[Page 17950]]

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 
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, 
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

[[Page 17951]]

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 
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 (Sec.  1.1022)
    (2) Claim and Reproductions (Sec.  1.1021)
    (3) Transmittal Letter (Sec. Sec.  1.4, 1.5)
    (4) Appointment of a Representative (Sec.  1.1041)
    (5) Petition to Excuse a Failure to Comply with a Time Limit (Sec.  
1.1051)
    (6) Petition to Convert to a Design Application under 35 U.S.C. 
chapter 16 (Sec.  1.1052)
    (7) Petition to Review a Filing Date (Sec.  1.1023(b))
    (8) Fee Authorization (Sec.  1.25)
    (9) Petition to the Commissioner (Sec. Sec.  1.181, 1.182, and 
1.183)
    (10) Transmittal of Issue Fee to USPTO for an International Design 
Application (Sec.  1.311)
    (11) Declaration of Inventorship for Purposes of Designation of the 
United States (Sec.  1.63)
    (12) Substitute Statement in Lieu of a Declaration of Inventorship 
for the Purpose of Designating the United States (Sec.  1.64)
    (13) Assignment Cover Sheet (Sec. Sec.  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 
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

[[Page 17952]]

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, 
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

0
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.

0
2. Section 1.4 is amended by revising paragraph (a)(2) to read as 
follows:


Sec.  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.
* * * * *
0
3. Section 1.5 is amended by revising paragraph (a) to read as follows:


Sec.  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 
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 Sec.  1.8 or 
the Priority Mail Express[supreg] procedure under Sec.  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.
* * * * *
0
4. Section 1.6 is amended by revising paragraphs (d)(3), (4), and (6) 
to read as follows:


Sec.  1.6  Receipt of correspondence.

* * * * *
    (d) * * *
    (3) Correspondence that cannot receive the benefit of the 
certificate of mailing or transmission as specified in Sec.  
1.8(a)(2)(i)(A) through (D), (F), (I), and (K) and Sec.  
1.8(a)(2)(iii)(A), except that a continued prosecution application 
under Sec.  1.53(d) may be transmitted to the Office by facsimile;

[[Page 17953]]

    (4) Color drawings submitted under Sec. Sec.  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 Sec. Sec.  5.1 through 5.5 of this chapter and 
directly related to the secrecy order content of the application;
* * * * *
0
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:


Sec.  1.8  Certificate of mailing or transmission.

    (a) * * *
    (2) * * *
    (i) * * *
    (I) The filing of a third-party submission under Sec.  1.290;
    (J) The calculation of any period of adjustment, as specified in 
Sec.  1.703(f); and
    (K) The filing of an international design application.
* * * * *
0
6. Section 1.9 is amended by revising paragraphs (a)(1) and (3) and 
adding paragraphs (l), (m), and (n) to read as follows:


Sec.  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.
* * * * *
    (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.
0
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:


Sec.  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 Sec.  
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 Sec.  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 
Sec.  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 
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 
(Sec.  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 (Sec.  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 (Sec.  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.

[[Page 17954]]

    (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 (Sec.  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 
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 (Sec.  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 (Sec.  
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 (Sec.  1.19(b)).
0
8. Section 1.16 is amended by revising the introductory text of 
paragraphs (b), (l), and (p) to read as follows:


Sec.  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:
* * * * *
0
9. Section 1.17 is amended by revising paragraphs (f), (g), (i)(1), and 
(m) and adding paragraph (t) to read as follows:


Sec.  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 (Sec.   1.29)............................      $100.00
By a small entity (Sec.   1.27(a)).........................       200.00
By other than a small or micro entity......................       400.00
 

    Sec.  1.36(a)--for revocation of a power of attorney by fewer than 
all of the applicants.
    Sec.  1.53(e)--to accord a filing date.
    Sec.  1.182--for decision on a question not specifically provided 
for in an application for patent.
    Sec.  1.183--to suspend the rules in an application for patent.
    Sec.  1.741(b)--to accord a filing date to an application under 
Sec.  1.740 for extension of a patent term.
    Sec.  1.1023--to review the filing date of an international design 
application.
    (g) For filing a petition under one of the following sections which 
refers to this paragraph:

 
 
 
By a micro entity (Sec.   1.29)............................       $50.00
By a small entity (Sec.   1.27(a)).........................       100.00
By other than a small or micro entity......................       200.00
 

    Sec.  1.12--for access to an assignment record.
    Sec.  1.14--for access to an application.
    Sec.  1.46--for filing an application on behalf of an inventor by a 
person who otherwise shows sufficient proprietary interest in the 
matter.
    Sec.  1.55(f)--for filing a belated certified copy of a foreign 
application.
    Sec.  1.55(g)--for filing a belated certified copy of a foreign 
application.
    Sec.  1.57(a)--for filing a belated certified copy of a foreign 
application.
    Sec.  1.59--for expungement of information.
    Sec.  1.103(a)--to suspend action in an application.
    Sec.  1.136(b)--for review of a request for extension of time when 
the provisions of Sec.  1.136(a) are not available.
    Sec.  1.377--for review of decision refusing to accept and record 
payment of a maintenance fee filed prior to expiration of a patent.
    Sec.  1.550(c)--for patent owner requests for extension of time in 
ex parte reexamination proceedings.
    Sec.  1.956--for patent owner requests for extension of time in 
inter partes reexamination proceedings.
    Sec.  5.12--for expedited handling of a foreign filing license.
    Sec.  5.15--for changing the scope of a license.
    Sec.  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 (Sec.   1.29)............................       $35.00
By a small entity (Sec.   1.27(a)).........................        70.00
By other than a small or micro entity......................       140.00
 

    Sec.  1.28(c)(3)--for processing a non-itemized fee deficiency 
based on an error in small entity status.

[[Page 17955]]

    Sec.  1.29(k)(3)--for processing a non-itemized fee deficiency 
based on an error in micro entity status.
    Sec.  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.
    Sec.  1.48--for correcting inventorship, except in provisional 
applications.
    Sec.  1.52(d)--for processing a nonprovisional application filed 
with a specification in a language other than English.
    Sec.  1.53(c)(3)--t convert a provisional application filed under 
Sec.  1.53(c) into a nonprovisional application under Sec.  1.53(b).
    Sec.  1.71(g)(2)--for processing a belated amendment under Sec.  
1.71(g).
    Sec.  1.102(e)--for requesting prioritized examination of an 
application.
    Sec.  1.103(b)--for requesting limited suspension of action, 
continued prosecution application for a design patent (Sec.  1.53(d)).
    Sec.  1.103(c)--for requesting limited suspension of action, 
request for continued examination (Sec.  1.114).
    Sec.  1.103(d)--for requesting deferred examination of an 
application.
    Sec.  1.291(c)(5)--for processing a second or subsequent protest by 
the same real party in interest.
    Sec.  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 (Sec. Sec.  
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 (Sec.  
1.1051):

 
 
 
By a small entity (Sec.   1.27(a)) or micro entity (Sec.         $850.00
 1.29).....................................................
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 (Sec.  
1.1052): $180.00.
0
10. Section 1.18 is amended by adding paragraph (b)(3) to read as 
follows:


Sec.  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.
* * * * *
0
11. Section 1.25 is amended by revising paragraph (b) to read as 
follows:


Sec.  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 Sec. Sec.  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 Sec.  1.1031 will only be effective for 
the transmittal fee (Sec.  1.1031(a)). An authorization to charge fees 
under Sec.  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 Sec.  1.492. An authorization to charge fees set forth in 
Sec.  1.18 to a deposit account is subject to the provisions of Sec.  
1.311(b). An authorization to charge to a deposit account the fee for a 
request for reexamination pursuant to Sec.  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 Sec.  1.610 and any other fees required in a 
supplemental examination proceeding in a patent may also be filed with 
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.
* * * * *
0
12. Section 1.27 is amended by revising paragraph (c)(3) introductory 
text to read as follows:


Sec.  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 Sec.  1.16(a), (b), (c), (d), or (e), 
the small entity transmittal fee set forth in Sec.  1.445(a)(1), the 
small entity international search fee set forth in Sec.  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 Sec.  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 (Sec.  1.1031) will 
be treated as a written assertion of entitlement to small entity 
status.
* * * * *
0
13. Section 1.29 is amended by revising paragraph (e) to read as 
follows:


Sec.  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 Sec.  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 Sec.  1.455, or in 
an international design application by a person authorized to represent 
the applicant under Sec.  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

[[Page 17956]]

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 Sec.  
1.53 as a continuation, divisional, or continuation-in-part application 
(including a continued prosecution application under Sec.  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.
* * * * *
0
14. Section 1.32 is amended by revising paragraph (d) introductory text 
to read as follows:


Sec.  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:
* * * * *
0
15. Section 1.41 is amended by adding paragraph (f) to read as follows:


Sec.  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 Sec.  
1.48.
0
16. Section 1.46 is amended by revising paragraph (b) introductory text 
and paragraph (c) to read as follows:


Sec.  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 Sec.  1.76 specifying in 
the applicant information section (Sec.  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 Sec.  1.76 
specifying the correct or updated name of the applicant in the 
applicant information section (Sec.  1.76(b)(7)) in accordance with 
Sec.  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 Sec.  1.76 specifying the 
applicant in the applicant information section (Sec.  1.76(b)(7)) in 
accordance with Sec.  1.76(c)(2) and comply with Sec. Sec.  3.71 and 
3.73 of this title.
* * * * *
0
17. Section 1.53 is amended by revising paragraph (b) introductory text 
and paragraphs (c)(4) and (d)(1)(ii) to read as follows:


Sec.  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 Sec.  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 Sec.  1.55, or to 
the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), 
or 386(c) or Sec.  1.78 of any other application. No claim for priority 
under 35 U.S.C. 119(e) or Sec.  1.78(a) may be made in a design 
application based on a provisional application. The requirements of 
Sec. Sec.  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 Sec.  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 Sec.  1.53(f)(3)(i); and
* * * * *
0
18. Section 1.55 is revised to read as follows:


Sec.  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

[[Page 17957]]

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 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 (Sec.  
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 Sec.  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 (Sec.  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 (Sec.  
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 Sec.  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 
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) (Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  
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 Sec.  
41.202 of this chapter) or derivation (see part 42 of this chapter) 
proceeding;

[[Page 17958]]

    (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 
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 (Sec.  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) (Sec.  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) (Sec.  
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
    (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 Sec.  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 Sec.  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 Sec.  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

[[Page 17959]]

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 (Sec.  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 (Sec.  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 Sec.  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.
    (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 Sec.  1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
0
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:


Sec.  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 Sec.  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 Sec.  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 
Sec.  1.55 for priority of a prior-filed foreign application or a claim 
under Sec.  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 Sec.  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.
* * * * *
0
20. Section 1.63 is amended by revising paragraph (d)(1) to read as 
follows:


Sec.  1.63  Inventor's oath or declaration.

* * * * *
    (d)(1) A newly executed oath or declaration under Sec.  1.63, or 
substitute statement under Sec.  1.64, is not required under Sec. Sec.  
1.51(b)(2) and 1.53(f), or under Sec. Sec.  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 Sec.  1.78 of an 
earlier-filed application, provided that an oath or declaration in 
compliance with this section, or substitute statement under Sec.  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.
* * * * *
0
21. Section 1.76 is amended by revising paragraphs (a), (b)(5), and 
(b)(6) to read as follows:


Sec.  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 
Sec.  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 Sec.  
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 Sec.  1.55.
* * * * *
0
22. Section 1.78 is revised to read as follows:


Sec.  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

[[Page 17960]]

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 Sec.  
1.53(c), and the basic filing fee set forth in Sec.  1.16(d) must have 
been paid for such provisional application within the time period set 
forth in Sec.  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 (Sec.  1.76(b)(5)).
    (4) The reference required by paragraph (a)(3) of this section must 
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) (Sec.  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 (Sec.  
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 Sec.  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 Sec.  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 Sec.  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 
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 (Sec.  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 Sec.  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

[[Page 17961]]

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 Sec.  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 Sec.  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 Sec.  1.53(b) or (d) for 
which the basic filing fee set forth in Sec.  1.16 has been paid within 
the pendency of the application.
    (2) Except for a continued prosecution application filed under 
Sec.  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 
Sec.  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 (Sec.  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) (Sec.  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 Sec.  
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 Sec.  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 (Sec.  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 Sec.  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 Sec.  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 
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 Sec.  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 Sec.  1.56(c) that the 
later filed application does not, and did not at any time, contain a 
claim to a claimed invention

[[Page 17962]]

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 Sec.  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 Sec.  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 Sec.  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 
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 (Sec.  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 Sec.  1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
0
23. Section 1.84 is amended by revising paragraphs (a)(2) and (y) to 
read as follows:


Sec.  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 Sec.  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 Sec.  1.152 for design drawings, Sec.  
1.1026 for international design reproductions, Sec.  1.165 for plant 
drawings, and Sec.  1.173(a)(2) for reissue drawings.
0
24. Section 1.85 is amended by revising paragraph (c) to read as 
follows:


Sec.  1.85  Corrections to drawings.

* * * * *
    (c) If a corrected drawing is required or if a drawing does not 
comply with Sec.  1.84 or an amended drawing submitted under Sec.  
1.121(d) in a nonprovisional international design application does not 
comply with

[[Page 17963]]

Sec.  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 
Sec.  1.84 or 1.1026, as applicable, to avoid abandonment. This time 
period is not extendable under Sec.  1.136 (see Sec.  1.136(c)).
0
25. Section 1.97 is amended by revising paragraphs (b)(3) and (4) and 
adding paragraph (b)(5) to read as follows:


Sec.  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 Sec.  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.
* * * * *
0
26. Section 1.105 is amended by revising the introductory text of 
paragraph (a)(1) to read as follows:


Sec.  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 
Sec.  1.56(c), or any assignee, of such information as may be 
reasonably necessary to properly examine or treat the matter, for 
example:
* * * * *
0
27. Section 1.109 is revised to read as follows:


Sec.  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.
0
28. Section 1.114 is amended by revising paragraphs (e)(3) through (5) 
and adding paragraph (e)(6) to read as follows:


Sec.  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.
0
29. Section 1.121 is amended by revising paragraph (d) introductory 
text to read as follows:


Sec.  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 Sec.  1.84 or, for a nonprovisional international 
design application, in compliance with Sec. Sec.  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.
* * * * *
0
30. Section 1.130 is amended by revising paragraph (d) to read as 
follows:


Sec.  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 Sec.  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 Sec.  1.109 that is on or after March 16, 2013.
0
31. Section 1.131 is amended by revising paragraph (d) to read as 
follows:


Sec.  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 Sec.  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 Sec.  1.109 that is before March 16, 2013.
* * * * *
0
32. Section 1.137 is amended by revising paragraphs (d)(1)(ii) and 
(d)(2) to read as follows:


Sec.  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.
* * * * *
0
33. Section 1.155 is amended by revising paragraph (a)(1) to read as 
follows:


Sec.  1.155  Expedited examination of design applications.

    (a) * * *

[[Page 17964]]

    (1) The application must include drawings in compliance with Sec.  
1.84, or for an international design application that designates the 
United States, must have been published pursuant to Hague Agreement 
Article 10(3);
* * * * *
0
34. Section 1.175 is amended by revising paragraph (f)(1) introductory 
text to read as follows:


Sec.  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 Sec.  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:
* * * * *
0
35. Section 1.211 is amended by revising paragraph (b) to read as 
follows:


Sec.  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.
* * * * *
0
36. Subpart I to part 1 is added to read as follows:
Subpart I--International Design Application

General Information

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

General Information


Sec.  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.


Sec.  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.


Sec.  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.


Sec.  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;

[[Page 17965]]

    (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 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.


Sec.  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


Sec.  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.


Sec.  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


Sec.  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 
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,

[[Page 17966]]

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));
    (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 (Sec. Sec.  1.1021(b)(1)(iii) and 1.1025);
    (2) Indications concerning the identity of the creator (i.e., the 
inventor, see Sec.  1.9(d)) in accordance with Rule 11(1); and
    (3) The inventor's oath or declaration (Sec. Sec.  1.63 and 1.64). 
The requirements in Sec. Sec.  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 Sec.  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.


Sec.  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.


Sec.  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 Sec.  1.17(f) and include a 
showing to the satisfaction of the Director that the international 
design application is entitled to such filing date.


Sec.  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.


Sec.  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.


Sec.  1.1026  Reproductions.

    Reproductions shall comply with the requirements of Rule 9 and Part 
Four of the Administrative Instructions.


Sec.  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.


Sec.  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


Sec.  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


Sec.  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 (Sec.  11.6) or granted limited recognition 
(Sec.  11.9(a) or (b)) to practice before the Office in patent matters. 
Such practitioner may act pursuant to Sec.  1.34 or pursuant to 
appointment by the applicant. The appointment must be in writing signed

[[Page 17967]]

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.


Sec.  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 (Sec.  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


Sec.  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 Sec.  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


Sec.  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 
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 Sec.  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 Sec.  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 Sec.  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 Sec.  1.1023(b) 
to accord the international design application a filing date; or
    (2) A grantable petition under Sec.  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 Sec.  
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.


Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  1.53(b). The application for a design patent resulting from 
conversion of an international design application must also include the 
basic filing fee (Sec.  1.16(b)), the search fee (Sec.  1.16(l)), the 
examination fee (Sec.  1.16(p)), the inventor's oath or declaration 
(Sec.  1.63 or 1.64), and a surcharge if required by Sec.  1.16(f).
    (b) An international design application will be converted to an

[[Page 17968]]

application for a design patent under Sec.  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 Sec.  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 Sec.  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 Sec.  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


Sec.  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 Sec.  1.74, Sec.  1.84, except for Sec.  
1.84(c), and Sec. Sec.  1.152 through 1.154 shall not apply to 
international design applications.


Sec.  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 (Sec.  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.


Sec.  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 Sec. Sec.  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 Sec.  1.111 shall apply to a reply to a notification of 
refusal.


Sec.  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 
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 
Sec. Sec.  1.143 and 1.144.


Sec.  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.


Sec.  1.1066  Correspondence address for a nonprovisional international 
design application.

    (a) Unless the correspondence address is changed in accordance with 
Sec.  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 Sec.  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 Sec.  1.33(a) shall be construed to include a reference to this 
section for a nonprovisional international design application.


Sec.  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 Sec.  
1.1021(d). If the applicant is notified in a notice of allowability 
that an oath or declaration in compliance with Sec.  1.63, or 
substitute statement in compliance with Sec.  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 Sec.  1.63, 
or substitute statement in compliance with Sec.  1.64, no later than 
the date on which the issue fee is paid to avoid abandonment. This time 
period is not extendable under Sec.  1.136 (see Sec.  1.136(c)).


Sec.  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.


Sec.  1.1070  Notification of Invalidation.

    (a) Where a design patent that was granted from an international 
design

[[Page 17969]]

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.


Sec.  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

0
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).

0
38. Section 3.1 is amended by revising the definition of 
``Application'' to read as follows:


Sec.  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.
* * * * *
0
39. Section 3.21 is revised to read as follows:


Sec.  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 Sec.  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 Sec.  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.

PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND 
FILE APPLICATIONS IN FOREIGN COUNTRIES

0
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).

0
41. Section 5.1 is amended by revising paragraph (b) to read as 
follows:


Sec.  5.1  Applications and correspondence involving national security.

* * * * *
    (b) Definitions. (1) Application as used in this part includes 
provisional applications (Sec.  1.9(a)(2) of this chapter), 
nonprovisional applications (Sec.  1.9(a)(3)), international 
applications (Sec.  1.9(b)), or international design applications 
(Sec.  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, Sec.  1.412) or as an office of indirect filing for 
international design applications (35 U.S.C. 382, Sec.  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.
* * * * *
0
42. Section 5.3 is amended by revising paragraph (d) to read as 
follows:


Sec.  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.
* * * * *
0
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:


Sec.  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 
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, Sec.  1.412) or as an office 
of indirect filing for international design applications (35 U.S.C. 
382, Sec.  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

[[Page 17970]]

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 Sec.  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.
0
44. Section 5.12 is amended by revising paragraph (a) to read as 
follows:


Sec.  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.
* * * * *
0
45. Section 5.13 is revised to read as follows:


Sec.  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 Sec.  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.
0
46. Section 5.14 is amended by revising paragraph (c) to read as 
follows:


Sec.  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.
* * * * *
0
47. Section 5.15 is amended by revising paragraphs (a) introductory 
text, (a)(3), (b), (d), and (e) to read as follows:


Sec.  5.15  Scope of license.

    (a) Applications or other materials reviewed pursuant to Sec. Sec.  
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 
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

[[Page 17971]]

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 
Sec.  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

0
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.

0
49. Section 11.10 is amended by revising paragraph (b)(3)(iii) to read 
as follows:


Sec.  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

0
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.

0
51. Section 41.200 is revised by adding paragraph (b) to read as 
follows:


Sec.  41.200  Procedure; pendency.

* * * * *
    (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.
* * * * *
0
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:


Sec.  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 Sec.  
41.202(a).

    Dated: March 16, 2015.
Michelle K. Lee,
 Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2015-06397 Filed 4-1-15; 8:45 am]
BILLING CODE 3510-16-P