17918 Federal Register / Vol. 80, No. 63 / Thursday, April 2, 2015 / Rules and Regulations 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

37 CFR Parts 1, 3, 5, 11, and 41 

[Docket No.: PTO–P–2013–0025] 

RIN 0651–AC87 

Changes To Implement the Hague 

Agreement Concerning International 

Registration of Industrial Designs 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Final rule. 

SUMMARY:

Title I of the Patent Law Treaties 

Implementation Act of 2012 (‘‘PLTIA’’) 

amends the United States patent laws to 

implement the provisions of the Geneva 

Act of the Hague Agreement Concerning 

the International Registration of 

Industrial Designs, July 2, 1999, 

(hereinafter ‘‘Hague Agreement’’) and is 

to take effect on the entry into force of 

the Hague Agreement with respect to 

the United States. Under the Hague 

Agreement, qualified applicants may 

apply for design protection in the 

Contracting Parties to the Hague 

Agreement by filing a single, 

standardized international design 

application in a single language. The 

United States Patent and Trademark 

Office is revising the rules of practice to 

implement title I of the PLTIA. 

DATES: Effective date: The changes in 

this final rule take effect on May 13, 

2015. 

Applicability date: The changes to 37 

CFR 1.32, 1.46, 1.63, 1.76, and 1.175 in 

this final rule apply only to patent 

applications filed under 35 U.S.C. 111, 

363, or 385 on or after September 16, 

2012. The changes to 37 CFR 1.53(b) 

and (c) and 1.57(a)(4) in this final rule 

apply only to patent applications filed 

under 35 U.S.C. 111 on or after 

December 18, 2013. 

FOR FURTHER INFORMATION CONTACT: 

Boris Milef, Senior PCT Legal Examiner, 

International Patent Legal 

Administration, at (571) 272–3288 or 

David R. Gerk, Patent Attorney, Office of 

Policy and International Affairs, at (571) 

272–9300. 

SUPPLEMENTARY INFORMATION: 

Executive Summary: Purpose: Under 

the Hague Agreement available at http:// 

www.wipo.int/treaties/en/registration/

hague/, qualified applicants may apply 

for design protection in the Contracting 

Parties to the Hague Agreement by filing 

a single, standardized international 

design application in a single language. 

Title I of the PLTIA amends title 35, 

United States Code, to implement the 

provisions of the Hague Agreement and 

is to take effect on the entry into force 

of the Hague Agreement with respect to 

the United States. This final rule revises 

the relevant rules of practice in title 37, 

chapter I, of the Code of Federal 

Regulations to implement title I of the 

PLTIA. 

Summary of Major Changes to U.S. 

Practice: The major changes to U.S. 

practice in title I of the PLTIA pertain 

to: (1) Standardizing formal 

requirements for international design 

applications; (2) establishing the United 

States Patent and Trademark Office 

(‘‘USPTO’’ or ‘‘Office’’) as an office 

through which international design 

applications may be filed; (3) providing 

a right of priority with respect to 

international design applications; (4) 

treating an international design 

application that designates the United 

States as having the same effect from its 

filing date as that of a national design 

application; (5) providing provisional 

rights for published international design 

applications that designate the United 

States; (6) setting the patent term for 

design patents issuing from both 

national design applications under 

chapter 16 and international design 

applications designating the United 

States to 15 years from the date of 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 


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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. 


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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 


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


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statements or documents specified in 

that declaration.’’ 

Under Article 17 of the Hague 

Agreement, an ‘‘international design 

registration shall be effected for an 

initial term of five years counted from 

the date of international registration’’ 

and ‘‘may be renewed for additional 

terms of five years, in accordance with 

the prescribed procedure and subject to 

payment of the prescribed fees.’’ The 

initial term of protection and additional 

terms may be replaced by a maximum 

period of protection allowed by a 

Contracting Party. See Article 7(2). The 

PLTIA amends 35 U.S.C. 173 to set the 

term of a design patent to 15 years from 

date of grant. 126 Stat. at 1532. 

The PLTIA adds 35 U.S.C. 387 to 

allow the Director to establish 

procedures, including a requirement for 

payment of the fee specified in 35 

U.S.C. 41(a)(7), to excuse as to the 

United States ‘‘[a]n applicant’s failure to 

act within prescribed time limits in 

connection with requirements 

pertaining to an international design 

application’’ upon a showing of 

unintentional delay. 126 Stat. at 1530. 

Hague Agreement Regulations Rule 8 

provides for certain requirements 

concerning the applicant and the 

creator. Under Rule 8(1)(a)(ii), ‘‘[w]here 

the law of a Contracting Party bound by 

the 1999 Act requires the furnishing of 

an oath or declaration of the creator, 

that Contracting Party may, in a 

declaration, notify the Director General 

of that fact.’’ Rule 8(1)(b) provides that 

the declarations referred to in Rules 

8(1)(a)(i) and (a)(ii) shall specify the 

form and mandatory contents of any 

required statement, document, oath, or 

declaration. Rule 8(3) provides that 

‘‘[w]here an international application 

contains the designation of a 

Contracting Party that has made the 

declaration referred to in paragraph 

(1)(a)(ii) it shall also contain indications 

concerning the identity of the creator of 

the industrial design.’’ See discussion of 

§ 1.1021(d). 

Relevant documents, including the 

implementing legislation (title I of the 

PLTIA), Senate Committee Reports, and 

the Transmittal Letter, are available on 

the USPTO Web site at http://

www.uspto.gov/patents/int_protect/

index.jsp. This Web site also contains a 

link to WIPO’s 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 §§ 5.1 through 5.5. 

Section 1.8: Section 1.8(a)(2)(i) is 

amended to add a new paragraph (K) to 

include the filing of an international 

design application among the 

correspondence that will not receive 

benefit from a Certificate of Mailing or 

Transmission. See discussion of 

§ 1.6(d)(3), supra. 

Section 1.9: Sections 1.9(a)(1) and 

(a)(3) are amended to include in the 

definitions of ‘‘national application’’ 

and ‘‘nonprovisional application,’’ 

respectively, an international design 

application filed under the Hague 

Agreement for which the Office has 

received a copy of the international 

registration pursuant to Hague 

Agreement Article 10. Pursuant to 35 

U.S.C. 385, added by section 101(a) of 

the PLTIA, an international design 

application that designates the United 

States has the effect from its filing date 

under 35 U.S.C. 384 of an application 

for patent filed in the United States 

Patent and Trademark Office pursuant 

to 35 U.S.C. chapter 16. 126 Stat. at 

1529. The filing date of an international 

design application is, subject to review, 

the international registration date. 

See discussion of § 1.1023, infra. 

Under Article 10, the International 

Bureau will send a copy of the 

international registration to each 

designated office after publication 

(Article 10(3)) or, upon notification by 

the Contracting Party, immediately after 

international registration (Article 10(5)). 

Consequently, the Office will receive a 

copy of the international registration 

pursuant to Article 10 only if the United 

States has been designated. The Office 

notes that, while the definition of 

‘‘nonprovisional application’’ in 

§ 1.9(a)(3) may include international 

applications under the PCT and 

international design applications under 

the Hague Agreement satisfying certain 

conditions, neither the PCT, the Hague 

Agreement, nor U.S. law provides for 

provisional international applications or 

international design applications. 

Sections 1.9(l) and 1.9(m) are added 

to define ‘‘Hague Agreement,’’ ‘‘Hague 

Agreement Article,’’ ‘‘Hague Agreement 

Regulations,’’ and ‘‘Hague Agreement 

Rule’’ as used in chapter I of title 37 of 

the Code of Federal Regulations 

(‘‘CFR’’). 

Section 1.9(n) is added to define 

‘‘international design application’’ as 

used in chapter I of title 37 of the CFR. 

Section 1.9(n) further provides that 

unless otherwise clear from the 

wording, reference to ‘‘design 

application’’ or ‘‘application for a design 

patent’’ in chapter I of the CFR includes 

an international design application that 

designates the United States. 

Section 1.14: Section 1.14(a)(1) 

introductory text is amended to add a 

reference to added paragraph (j) 

concerning international design 

applications. 

Section 1.14(a)(1)(ii) is amended to 

replace the reference to ‘‘abandoned 

application that has been published as 

a patent application publication’’ with a 

reference to ‘‘abandoned published 

application.’’ This change is consistent 

with the language of § 1.11(a) to which 

§ 1.14(a)(1)(ii) refers. In addition, the 

term ‘‘published application’’ is defined 

in § 1.9(c) as ‘‘an application for patent 

which has been published under 35 

U.S.C. 122(b).’’ Pursuant to 35 U.S.C. 

374 and 35 U.S.C. 390, international 

applications and international design 

applications that designate the United 

States and are published under the 

respective treaty, ‘‘shall be deemed a 

publication under section 122(b).’’ 

Accordingly, a published application for 

purposes of § 1.14 will include a 

publication by the International Bureau 

of either an international application 

under the PCT or an international 

design application under the Hague 

Agreement that designates the United 


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States. Access to such published 

applications is permitted under PCT 

Article 30 and Hague Agreement Article 

10. In contrast, the term ‘‘patent 

application publication’’ refers to a 

publication by the Office under § 1.215. 

The Office will not publish 

international design applications under 

§ 1.215 (see § 1.211), as international 

design applications are published in 

English by the International Bureau 

under the Hague Agreement. See Hague 

Agreement Article 10(3) and Rule 6(2). 

See also 35 U.S.C. 390, added by the 

PLTIA, deeming a publication under the 

Hague Agreement as a publication 

under 35 U.S.C. 122(b). 126 Stat. at 

1531. In addition, the Office does not 

publish applications for design patents 

under 35 U.S.C. chapter 16. See 

§ 1.211(b). 

Sections 1.14(a)(1)(iv)–(vi) are 

amended to include a publication of an 

international registration under Hague 

Agreement Article 10(3) of an 

international design application 

designating the United States among the 

publications for which access to an 

unpublished application may be 

obtained. Section 1.14(a)(1)(iv) is 

amended to permit access to the file 

contents of an unpublished abandoned 

application where the application is 

identified in the publication of an 

international registration under Hague 

Agreement Article 10(3) of an 

international design application 

designating the United States, or where 

benefit of the application is claimed 

under 35 U.S.C. 119(e), 120, 121, 365(c), 

or 386(c) in an application that has 

issued as a U.S. patent or has published 

as a statutory invention registration, a 

U.S. patent application publication, an 

international publication of an 

international application under PCT 

Article 21(2), or a publication of an 

international registration under Hague 

Agreement Article 10(3). Section 

1.14(a)(1)(v) is amended to permit 

access to the file contents of an 

unpublished pending application where 

benefit of the application is claimed 

under 35 U.S.C. 119(e), 120, 121, 365(c), 

or 386(c) in an application that has 

issued as a U.S. patent or has published 

as a statutory invention registration, a 

U.S. patent application publication, an 

international publication under PCT 

Article 21(2), or a publication of an 

international registration under Hague 

Agreement Article 10(3). Section 

1.14(a)(1)(vi) is amended to permit 

access to a copy of the application as 

originally filed of an unpublished 

pending application if the application is 

incorporated by reference or otherwise 

identified in a U.S. patent, a statutory 

invention registration, a U.S. patent 

application publication, an international 

publication under PCT Article 21(2), or 

a publication of an international 

registration under Hague Agreement 

Article 10(3) of an international design 

application designating the United 

States. 

Section 1.14(a)(1)(vii) is amended 

consistent with amendments to 

§§ 1.14(a)(1)(iv)–(vi). 

Section 1.14(a)(2)(iv) is amended to 

add a reference to benefit claims under 

35 U.S.C. 386, as provided by the 

PLTIA. 126 Stat. 1529–30. 

Section 1.14(j) is added to set forth 

the conditions under which the records 

of an international design application 

maintained by the Office will be made 

available to the public. 

Section 1.14(j)(1) provides that, with 

respect to an international design 

application maintained by the Office in 

its capacity as a designated office for 

national processing, the records 

associated with the international design 

application may be made available as 

provided under §§ 1.14(a)–(i). Under 

Hague Agreement Article 10(5), the 

Office is to keep international design 

registrations confidential until 

publication of the international 

registration by the International Bureau. 

This provision does not alter the 

Office’s long-standing practice to make 

application files available to the public 

to satisfy the constitutionally mandated 

quid pro quo requiring public disclosure 

of patented inventions. See United 

States ex rel. Pollok v. Hall, 1889 Dec. 

Comm’r Pat. 582, 48 O.G. 1263 (D.C. 

1888) (recognizing that the rights of 

exclusivity and confidentiality stem 

from Article I, Section 8, clause 8, of the 

Constitution in holding that the Office 

must make available to the public an 

abandoned application specifically 

referenced in a patent); P.J. Federico, 

Commentary on the New Patent Act, 

reprinted in 75 J. Pat. & Trademark Off. 

Soc’y 161, 196–97 (1993) (as 

background discussion to the addition 

of section 122 to the 1952 Patent Act, 

noting that for nearly 100 years the 

Office has had regulations requiring that 

applications be maintained confidential 

while recognizing public accessibility 

when an abandoned application is 

referenced in a later issued patent); see 

also Metropolitan West Side Elevated 

Railroad Co. et al. v. Siemans, 1898 Dec. 

Comm’r Pat. 220, 222, 85 O.G. 290 

(Comm’r Pat. 1898); In re Reed 

Manufacturing Co., 1900 Dec. Comm’r 

Pat. 140, 92 O.G. 2001 (Comm’r Pat. 

1900); Ex parte Lewis and Unger, 1903 

Dec. Comm’r Pat. 303, 106 O.G. 543 

(Comm’r Pat. 1903); In re Doman, 1905 

Dec. Comm’r Pat. 101, 115 O.G. 804 

(Comm’r Pat. 1905). As a designated 

office, the Office will establish a file for 

national processing upon receipt of the 

published international registration 

from the International Bureau. In such 

cases, the records of the application file 

will be available pursuant to 

§§ 1.14(a)(ii)–(iii). The provisions of 

§ 1.14(j)(1) provide for access to such 

international design applications 

maintained by the Office for national 

processing, thus treating international 

design applications the same as regular 

national applications. 

Section 1.14(j)(2) provides that, with 

respect to an international design 

application maintained by the Office in 

its capacity as an office of indirect filing 

(§ 1.1002), the records of the 

international design application may be 

available under § 1.14(j)(1) when they 

are contained in the file of the 

international design application 

maintained by the Office for national 

processing. Also, if benefit of the 

international design application is 

claimed under 35 U.S.C. 386(c) in a U.S. 

patent or published application, the file 

contents of the application may be made 

available to the public, or the file 

contents of the application, a copy of 

the application-as-filed, or a specific 

document in the file of the application 

may be provided to any person upon 

written request and payment of the 

appropriate fee (§ 1.19(b)). The Office 

will place the application filed with the 

Office as an office of indirect filing in 

the file used for national processing as 

a designated office. Consequently, the 

records maintained by the Office as an 

office of indirect filing may be available 

where the records are part of the file 

maintained by the Office as a designated 

office and are available pursuant to 

§ 1.14(j)(1). The records maintained by 

the Office as an office of the indirect 

filing may also be available where 

benefit to the international design 

application is claimed under 35 U.S.C. 

386(c) in a U.S. patent or published 

application. Under the provisions of 35 

U.S.C. 386(c) and 35 U.S.C. 388, 

applicants may claim benefit to an 

international design application that 

designates the United States provided 

the application claiming benefit of the 

international design 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 


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U.S.C. chapter 16). The other provisions 

of § 1.16 are not changed. 

Section 1.17: Section 1.17(f) is 

amended to specify the fee for filing a 

petition under § 1.1023 to review the 

filing date of an international design 

application in the United States. Section 

101(a) of the PLTIA adds 35 U.S.C. 384, 

which provides that the filing date of an 

international application in the United 

States is the effective registration date 

(35 U.S.C. 384(a)), and authorizes the 

Director to establish procedures, 

including the payment of a surcharge, to 

review the filing date, which may result 

in a determination that the application 

has a filing date in the United States 

other than the effective registration date 

(35 U.S.C. 384(b)). 126 Stat. at 1529. The 

review procedure authorized under 35 

U.S.C. 384(b) is set forth in § 1.1023, 

discussed infra, which requires, inter 

alia, the fee set forth in § 1.17(f). Under 

35 U.S.C. 389(b), added by the PLTIA, 

all questions of procedures regarding an 

international design application 

designating the United States, unless 

required by the Hague Agreement and 

Hague Agreement Regulations, shall be 

determined as in the case of 

applications filed under 35 U.S.C. 

chapter 16. 126 Stat. at 1530. 

Accordingly, pursuant to the authority 

under 35 U.S.C. 389(b), the fee for filing 

a petition to review the filing date of an 

international design application under 

§ 1.1023 is the same as the fee for filing 

a petition to accord a filing date in a 

national application (see § 1.53(e)). 

Section 1.17(g) is amended to specify 

the fee for filing a petition under 

§ 1.55(g) for acceptance of a belated 

certified copy of a foreign application in 

a design application. See discussion of 

§ 1.55(g). 

Section 1.17(i)(1) is amended to 

remove the processing fee under § 1.55 

for entry of a priority claim or certified 

copy of a foreign application after 

payment of the issue fee. See discussion 

of § 1.55(g). 

Section 1.17(m) is amended to set 

forth the fee for filing a petition to 

excuse an applicant’s failure to act 

within prescribed time limits in an 

international design application. 

Section 101(a) of the PLTIA adds 35 

U.S.C. 387 to provide that an applicant’s 

failure to act within prescribed time 

limits in connection with requirements 

pertaining to an international design 

application may be excused as to the 

United States upon a showing 

satisfactory to the Director of 

unintentional delay and under such 

conditions, including a requirement for 

payment of the fee specified in 35 

U.S.C. 41(a)(7), as may be prescribed by 

the Director. 126 Stat. at 1530. The 

conditions for excusing an applicant’s 

failure to act within the prescribed time 

limits in an international design 

application are set forth in § 1.1051, 

discussed infra. These requirements 

include, inter alia, the requirement to 

pay the fee set forth in § 1.17(m). The 

fee set forth in § 1.17(m) does not 

include a micro entity amount as this 

fee is set under 35 U.S.C. 41(a)(7) as 

amended by section 202(b)(1)(A) of the 

PLTIA, and not section 10(a) of the AIA. 

Section 10(b) of the AIA provides that 

the micro entity discount applies to fees 

set under section 10(a) of the AIA. See 

Public Law 112–29, 125 Stat. 284, 316– 

17 (2011). The Office will consider 

including a micro entity amount in 

§ 1.17(m) in the event that patent fees 

are again set or adjusted under section 

10(a) of the AIA. 

Section 1.17(t) is amended to specify 

the fee for filing a petition under 

§ 1.1052 to convert an international 

design application to a design 

application under 35 U.S.C. chapter 16. 

See discussion of § 1.1052, infra. The 

petition fee is not being set pursuant to 

section 10(a) of the AIA. Rather, the 

Office is setting this fee in this 

rulemaking pursuant to its authority 

under 35 U.S.C. 41(d)(2), which 

provides that fees for all processing, 

services, or materials relating to patents 

not specified in 35 U.S.C. 41 are to be 

set at amounts to recover the estimated 

average cost to the Office of such 

processing, services, or materials. 

The Office uses an Activity Based 

Information (‘‘ABI’’) methodology to 

determine the estimated average costs 

(or expense) on a per process, service, 

or material basis including the 

particular processes and services 

addressed in this rulemaking. The ABI 

analysis includes compiling the Office 

costs for a specified activity, including 

the direct-expense (e.g., direct personnel 

compensation, contract services, 

maintenance and repairs, 

communications, utilities, equipment, 

supplies, materials, training, rent, and 

program-related information technology 

(‘‘IT’’) automation), an appropriate 

allocation of allocated direct expense 

(e.g., rent, program-related automation, 

and personnel compensation benefits 

such as medical insurance and 

retirement), and an appropriate 

allocation of allocated indirect expense 

(e.g., general financial and human 

resource management, nonprogram 

specific IT automation, and general 

Office expenses). The direct expense for 

an activity plus its allocated direct 

expense and allocated indirect expense 

is the ‘‘fully burdened’’ expense for that 

activity. The ‘‘fully burdened’’ expense 

for an activity is then divided by 

production measures (number of that 

activity completed) to arrive at the fully 

burdened per-unit cost for that activity. 

The cost for a particular process is then 

determined by ascertaining which 

activities occur for the process and how 

often each such activity occurs for the 

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 


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year 2012 to review and prepare a 

decision for the petition is $172 ($86 

fully burdened labor cost per hour 

multiplied by 2). Thus, the Office 

estimates that the fiscal year prospective 

unit cost to review the petition and draft 

a decision, using the estimated CPI–U 

increase for fiscal years 2013, 2014, and 

2015, is $181 ($172 multiplied by 

1.051), which, when rounded to the 

nearest ten dollars, is a petition fee for 

conversion of $180. Additional 

information concerning the Office’s 

analysis of the estimated fiscal year 

2015 costs for converting an 

international design application to a 

design application under 35 U.S.C. 

chapter 16 is available upon request. 

Section 1.18: Section 1.18(b)(3) is 

added to provide that an issue fee paid 

through the International Bureau in an 

international design application 

designating the United States shall be in 

the amount specified on the Web site of 

WIPO, currently available at http://

www.wipo.int/hague, at the time the fee 

is paid. The option for applicants to pay 

the issue fee through the International 

Bureau is provided for in Hague 

Agreement Rule 12(3)(c) and is in lieu 

of paying the issue fee under 

§ 1.18(b)(1). Article 7(2) permits a 

Contracting Party to declare that the 

prescribed designation fee shall be 

replaced by an individual designation 

fee, whose amounts can be changed in 

further declarations. The International 

Bureau accepts payment only in Swiss 

currency (see Hague Agreement Rule 

28(1)) and all fee amounts specified on 

the WIPO Web site are in Swiss 

currency. 

Section 1.25: Section 1.25(b) is 

amended to provide that international 

design application fees may be charged 

to a deposit account. International 

design application fees are set forth in 

§ 1.1031. Section 1.25(b) is also 

amended to provide that a general 

authorization to charge fees in an 

international design application set 

forth in § 1.1031 will only be effective 

for the transmittal fee (§ 1.1031(a)). The 

international fees set forth in § 1.1031, 

other than the transmittal fee set forth 

in § 1.1031(a), are not required to be 

paid to the Office as an office of indirect 

filing. See § 1.1031(d). 

Section 1.27: The introductory text of 

§ 1.27(c)(3) is amended to provide that 

the payment, by any party, of the small 

entity first part of the individual 

designation fee for the United States to 

the International Bureau will be treated 

as a written assertion of entitlement to 

small entity status. The change to 

§ 1.27(c)(3) will permit international 

design applicants to establish small 

entity status for the purpose of the 

United States by payment to the 

International Bureau of the small entity 

first part of the individual designation 

fee for the United States. 

Section 1.29: Section 1.29(e) is 

amended to provide that a micro entity 

certification filed in an international 

design application may be signed by a 

person authorized to represent the 

applicant under § 1.1041 before the 

International Bureau where the micro 

entity certification is filed with the 

International Bureau. 

Section 1.32: The introductory text of 

§ 1.32(d) is amended to add a reference 

to benefit claims under 35 U.S.C. 386(c), 

as provided by the PLTIA. 126 Stat. 

1529–30. Thus, a power of attorney from 

a prior national application for which 

benefit is claimed under 35 U.S.C. 

386(c) in a continuing international 

design application may have effect in 

the continuing application if a copy of 

the power of attorney from the prior 

application is filed in the continuing 

application, subject to the conditions set 

forth in § 1.32(d). 

Section 1.41: Section 1.41(f) is added 

to set forth the inventorship in an 

international design application 

designating the United States. 

Specifically, the inventorship of an 

international design application 

designating the United States is the 

creator or creators set forth in the 

publication of the international 

registration under Hague Agreement 

Article 10(3). Section 1.41(f) further 

provides that any correction of 

inventorship must be pursuant to § 1.48. 

Section 1.46: The introductory text of 

§ 1.46(b) is amended to provide that if 

an application entering the national 

stage under 35 U.S.C. 371 or a 

nonprovisional international design 

application is applied for by a person 

other than the inventor under § 1.46(a) 

(i.e., the assignee, person to whom the 

inventor is under an obligation to assign 

the invention, or person who otherwise 

shows sufficient proprietary interest in 

the matter, as provided under 35 U.S.C. 

118), that person must have been 

identified as the applicant for the 

United States in the international stage 

of the international application or as the 

applicant in the publication of the 

international registration under Hague 

Agreement Article 10(3). The 

amendment does not change the current 

practice with respect to national stage 

applications under 35 U.S.C. 371, where 

a person seeking to become an applicant 

under § 1.46 in the national phase was 

not named as an applicant for the 

United States in the international phase. 

In such case, that person must comply 

with the requirements under § 1.46(c), 

including the requirements of §§ 3.71 

and 3.73, to be an applicant in the 

national phase. The amendment treats 

international design applications in the 

same manner as international 

applications under the PCT. See 

discussion of § 1.1011(b), infra 

(regarding who may be an applicant for 

an international design application 

designating the United States). 

Section 1.46(c) is amended to provide 

for the correction or update in the name 

of the applicant in paragraph (c)(1) and 

a change in the applicant in paragraph 

(c)(2). Section 1.46(c)(1) corresponds to 

the first sentence of paragraph (c) of 

former § 1.46 and further provides that 

a change in the name of the applicant 

under § 1.46 recorded pursuant to 

Hague Agreement Article 16(1)(ii) will 

be effective to change the name of the 

applicant in a nonprovisional 

international design application. Article 

16(1)(ii) provides for recording in the 

International Register by the 

International Bureau of a change in the 

name of the holder. Under Article 16(2), 

such recording has the same effect as if 

made in the office of each of the 

designated Contracting Parties. Thus, 

where the applicant in a nonprovisional 

international design application under 

§ 1.46 is the holder of the international 

registration, correction or update of the 

applicant’s name may be made through 

the mechanism under Article 16(1)(ii). 

Section 1.46(c)(1) also clarifies that a 

correction or update of the name of the 

applicant using an application data 

sheet must be made in accordance with 

§ 1.76(c)(2), which requires that the 

information that is changed be indicated 

by underlining, strike-though, or 

brackets, as appropriate. 

Section 1.46(c)(2) corresponds to the 

second sentence of paragraph (c) of 

former § 1.46 and provides that any 

request to change the applicant under 

§ 1.46 after an original applicant has 

been specified must include an 

application data sheet under § 1.76 

specifying the applicant in the applicant 

information section (§ 1.76(b)(7)) in 

accordance with § 1.76(c)(2) and comply 

with §§ 3.71 and 3.73. The language of 

§ 1.46(c)(2) is amended to clarify that 

any change in the applicant under § 1.46 

once an applicant has been specified 

requires identification of the new 

applicant in an application data sheet in 

accordance with § 1.76(c)(2) and comply 

with §§ 3.71 and 3.73. There was some 

confusion with respect to the proper 

way to change the applicant where (1) 

the inventor was the original applicant 

or (2) the applicant is being changed 

from a second (or subsequent) applicant 

to a new applicant. Specifying the 

applicant in an application filed under 

35 U.S.C. 111 may be accomplished 


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either by the person who has made the 

application or by the Office where the 

applicant has not been specified by the 

time the filing receipt is issued. The 

Office previously indicated that the 

inventors may be considered the 

applicant where an applicant has not 

otherwise been specified and that 

compliance with §§ 3.71 and 3.73 is 

required for any change in the applicant 

from the inventors. See Changes To 

Implement the Inventor’s Oath or 

Declaration Provisions of the LeahySmith America Invents Act, 77 FR 

48775, 48785 (Aug. 14, 2012). In an 

application entering the national stage 

under 35 U.S.C. 371, the original 

applicant specified is the person 

identified as the applicant for the 

United States in the international stage 

of the international application. In a 

nonprovisional international design 

application, the original applicant 

specified is the person identified as the 

applicant in the publication of the 

international registration under Hague 

Agreement Article 10(3). Section 1.46 

does not govern changes in 

inventorship. Rather, any request to add 

or delete an inventor, or to correct or 

update the name of an inventor, must be 

made in accordance with the provisions 

of § 1.48. 

Section 1.53: The introductory text of 

§ 1.53(b) is amended to include a 

reference to 35 U.S.C. 386(c), as added 

by the PLTIA. Thus, § 1.53(b) provides 

that a continuing application, which 

may be a continuation, divisional, or 

continuation-in-part application, may be 

filed under the conditions specified in 

35 U.S.C. 120, 121, 365(c), or 386(c) and 

§ 1.78. 

Section 1.53(c)(4) is amended to 

include a reference to 35 U.S.C. 386(a) 

and 386(c), as added by the PLTIA, thus 

making clear that a provisional 

application is not entitled to a right of 

priority or to the benefit of the filing 

date of an international design 

application. 

Section 1.53(d)(1)(ii) is amended to 

provide that a continued prosecution 

application (‘‘CPA’’) of a prior 

nonprovisional application may be filed 

where the prior nonprovisional 

application is a design application, but 

not an international design application, 

that is complete as defined by § 1.51(b), 

except for the inventor’s oath or 

declaration if the application is filed on 

or after September 16, 2012, and the 

prior nonprovisional application 

contains an application data sheet 

meeting the conditions specified in 

§ 1.53(f)(3)(i). 

Section 1.55: Section 1.55 is revised 

to provide for a right of priority under 

35 U.S.C. 386 with respect to 

international design applications and 

for other matters, as discussed below. In 

addition, as to the applicability dates for 

certain provisions in existing rules, this 

final rule makes those applicability 

dates more accessible by stating them 

directly in the body of those rules. In 

particular, the requirements of § 1.55 set 

forth in the following final rules have 

been consolidated in this final rule: 

Changes To Implement the Patent Law 

Treaty, 78 FR 62368, 62399 (Oct. 21, 

2013) (changes to § 1.55 made therein 

applicable to any patent application 

filed before, on, or after December 18, 

2013, except for the changes to § 1.55(f), 

which is applicable to patent 

applications filed under 35 U.S.C. 111 

on or after December 18, 2013, and 

international patent applications in 

which the national stage commenced 

under 35 U.S.C. 371 on or after 

December 18, 2013); Changes To 

Implement the First Inventor To File 

Provisions of the Leahy-Smith America 

Invents Act, 78 FR 11024 (Feb. 14, 2013) 

(applicable to any application filed 

under 35 U.S.C. 111 or 363 on or after 

March 16, 2013); Changes To Implement 

the Inventor’s Oath or Declaration 

Provisions of the Leahy-Smith America 

Invents Act, 77 FR 48776 (Aug. 14, 

2012) (applicable to patent applications 

filed under 35 U.S.C. 111(a) or 363 on 

or after September 16, 2012); and 

Changes to Implement Eighteen-Month 

Publication of Patent Applications, 65 

FR 57024 (Sept. 20, 2000) (applicable to 

patent applications filed on or after 

November 29, 2000). 

Section 1.55(a) is amended to provide 

that an applicant in a nonprovisional 

application may claim priority to one or 

more prior foreign applications under 

the conditions specified in 35 U.S.C. 

386(a) and (b) and this section. 

Section 1.55(b) is amended to clarify 

which application is the ‘‘subsequent 

application’’ for purposes of § 1.55. 

Section 1.55(b) provides that the 

nonprovisional application must be: 

Filed not later than twelve months (six 

months in the case of a design 

application) after the date on which the 

foreign application was filed, subject to 

paragraph (c) of the section (a 

subsequent application); or entitled to 

claim the benefit under 35 U.S.C. 120, 

121, 365(c), or 386(c) of a subsequent 

application that was filed within the 

period set forth in paragraph (b)(1) of 

the section. Thus, the subsequent 

application in either § 1.55(b)(1) or 

(b)(2) is the application required to be 

filed within the period set forth in 

§ 1.55(b)(1). For purposes of § 1.55(b)(2), 

the subsequent application may be a 

nonprovisional application, an 

international application designating 

the United States, or international 

design application designating the 

United States. 

Section 1.55(c) is amended to provide 

for restoration of priority claims under 

35 U.S.C. 386(a) or (b). Restoration of 

the right of priority is provided for 

under 35 U.S.C. 119(a), as amended by 

title II of the PLTIA. 126 Stat. 1534. 

Section 1.55 was previously amended to 

implement the provisions of 35 U.S.C. 

119, as amended by title II of the PLTIA. 

See Changes To Implement the Patent 

Law Treaty, 78 FR 62368, 62399 (Oct. 

21, 2013). Under 35 U.S.C. 386(a) and 

(b), entitlement to priority to a prior 

application shall be ‘‘[i]n accordance 

with the conditions and requirements of 

subsections (a) through (d) of section 

119 and section 172 . . . .’’ 

Consequently, § 1.55(c) is amended in 

this final rule to provide that restoration 

of the right of priority is available for 

priority claims under 35 U.S.C. 386(a) 

and (b). 

Section 1.55(c) is also amended to 

provide that a petition to restore the 

right of priority filed on or after May 13, 

2015 (the effective date of this final rule) 

must be filed in the subsequent 

application or in the earliest 

nonprovisional application claiming 

benefit under 35 U.S.C. 120, 121, 365(c), 

or 386(c) to the subsequent application, 

if such subsequent application is not a 

nonprovisional application. The Office 

has received inquiries from the public 

asking in which application the petition 

to restore the right of priority under 

§ 1.55(c) must be filed where there is a 

chain of applications claiming benefit 

under 35 U.S.C. 120, 121, or 365(c) to 

the application for which filing was 

unintentionally delayed. The 

amendment to § 1.55(c) is intended to 

provide clarification by requiring that, 

on or after May 13, 2015, a petition to 

restore the right of priority under this 

paragraph be filed in the subsequent 

application or in the earliest 

nonprovisional application claiming 

benefit under 35 U.S.C. 120, 121, 365(c), 

or 386(c) to the subsequent application, 

if such subsequent application is not a 

nonprovisional application. If a petition 

under § 1.55(c) to restore the right of 

priority is granted, a further petition 

under § 1.55(c) is not required in an 

application entitled to claim the benefit 

under 35 U.S.C. 120, 121, 365(c), or 

386(c) of the subsequent application for 

which the right of priority was restored. 

Requiring the filing of the petition 

under § 1.55(c) in the earliest 

nonprovisional application claiming 

benefit under 35 U.S.C. 120, 121, 365(c), 

or 386(c) to the subsequent application, 

when the subsequent application is not 

a nonprovisional application, is 


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appropriate because the Office may not 

have an application file established for 

the subsequent application. This would 

occur, for example, where an 

international application designating 

the United States was filed in a foreign 

Receiving office and the applicant files 

a continuation of the international 

application under 35 U.S.C. 111(a) 

rather than entering the national phase 

under 35 U.S.C. 371. Nevertheless, the 

statement required under § 1.55(c)(3) 

must still relate to the unintentional 

delay in filing the subsequent 

application, i.e., the international 

application, in such instance. 

Section 1.55(e) is amended to provide 

that unless such claim is accepted in 

accordance with the provisions of 

§ 1.55(e), any claim for priority under 35 

U.S.C. 119(a) through (d) or (f), 365(a) or 

(b), or 386(a) or 386(b) not presented in 

the manner required by § 1.55(d) or (m) 

during pendency and within the time 

period provided by § 1.55(d) (if 

applicable) is considered to have been 

waived. Section 1.55(e) is also amended 

to provide for the acceptance of a 

delayed priority claim considered to 

have been waived under § 1.55 and to 

provide for acceptance of an 

unintentionally delayed priority claim 

under 35 U.S.C. 386(a) or 386(b). 

35 U.S.C. 119(b), amended in section 

4503 of the American Inventors 

Protection Act of 1999 (AIPA), provides 

in paragraph (b)(1) that ‘‘[n]o 

application for patent shall be entitled 

to this right of priority unless a claim is 

filed in the Patent and Trademark 

Office, identifying the foreign 

application by specifying the 

application number on that foreign 

application, the intellectual property 

authority or country in or for which the 

application was filed, and the date of 

filing the application, at such time 

during the pendency of the application 

as required by the Director.’’ See Pub. L. 

106–113, 113 Stat. 1501 (1999). 35 

U.S.C. 119(b), amended under the AIPA, 

further provides, in paragraph (b)(2) that 

‘‘[t]he Director may consider the failure 

of the applicant to file a timely claim for 

priority as a waiver of any such claim. 

The Director may establish procedures, 

including the requirement for payment 

of the fee specified in section 41(a)(7), 

to accept an unintentionally delayed 

claim under this section.’’ Id. Section 

4503 of the AIPA applies ‘‘only to 

applications (including international 

applications designating the United 

States) filed on or after [November 29, 

2000].’’ See Intellectual Property and 

High Technology Technical 

Amendments Act of 2002, Public Law 

107–273, 116 Stat. 1757. 35 U.S.C. 

119(b)(2) was subsequently amended 

under title II of the PLTIA to provide for 

the payment of the fee specified in 35 

U.S.C. 41(a)(7). 126 Stat. 1536. Pursuant 

to the authority under 35 U.S.C. 

119(b)(2), the Office established 

procedures to accept an unintentionally 

delayed claim for priority in utility 

applications. See Changes to Implement 

Eighteen-Month Publication of Patent 

Applications, 65 FR 57024 (Sept. 20, 

2000). However, no procedures were 

established for accepting an 

unintentionally delayed priority claim 

in a design application. The change to 

§ 1.55(e) makes the petition procedure 

therein applicable to design 

applications, thus according design 

applicants the same remedy available to 

applicants in utility applications. 

Section 1.55(f) is amended to provide 

for an exception under § 1.55(h) to the 

requirement for a certified copy of the 

prior foreign application. See discussion 

of § 1.55(h), infra. 

Section 1.55(g) is amended to provide 

that the claim for priority and the 

certified copy of the foreign application 

specified in 35 U.S.C. 119(b) or PCT 

Rule 17 must, in any event, be filed 

within the pendency of the application, 

unless filed with a petition under 

§ 1.55(e) or (f) or with a petition 

accompanied by the fee set forth in 

§ 1.17(g), which includes a showing of 

good and sufficient cause for the delay 

in filing the certified copy of the foreign 

application in a design application. 

MPEP 216.01 provides for the 

submission of a request for certificate of 

correction under § 1.323 along with, 

where applicable, a petition under 

§ 1.55(e), to perfect a claim for priority 

under 35 U.S.C. 119(a)–(d) and (f) in a 

patent under certain conditions, 

including the case where the certified 

copy was not in the application that 

issued as a patent but was filed in a 

parent application. Where the 

conditions set forth in MPEP 216.01 do 

not apply, perfection of the claim for 

foreign priority generally required the 

filing of a reissue application. See MPEP 

1417. Section 1.55(g), as amended in 

this final rule, eliminates the need in 

many instances to file a reissue 

application in order to perfect a claim 

for foreign priority by allowing the 

certified copy of the foreign application 

required under § 1.55 to be filed in the 

application with a petition under 

§ 1.55(f) or as provided in § 1.55(g), 

together with the fee set forth in 

§ 1.17(g), that includes a showing of 

good and sufficient cause for the delay 

in filing the certified copy of the foreign 

application. In addition, where a 

priority claim under § 1.55 was not 

timely made, § 1.55(g) as amended in 

this final rule allows the priority claim 

and certified copy required under § 1.55 

to be filed pursuant to a petition under 

§ 1.55(e) even if the application is not 

pending (e.g., a patented application). 

Furthermore, where the priority claim 

required under § 1.55 was timely filed 

in the application but was not included 

on the patent because the requirement 

under § 1.55 for a certified copy was not 

satisfied, the patent may be corrected to 

include the priority claim via a 

certificate of correction under 35 U.S.C. 

255 and § 1.323, accompanied by a 

grantable petition under § 1.55(f) or (g), 

without the need for a petition under 

§ 1.55(e) to accept an unintentionally 

delayed priority claim. 

Section 1.55(g) is also amended to 

remove the requirement for the 

processing fee set forth in § 1.17(i) 

where the claim for priority or the 

certified copy of the foreign application 

is filed after the date the issue fee is 

paid. Section 1.55(g), however, retains 

the provision of former § 1.55(g) that if 

the claim for priority or the certified 

copy is filed after the date the issue fee 

is paid, the patent will not include the 

priority claim unless corrected by a 

certificate of correction under 35 U.S.C. 

255 and § 1.323. 

Section 1.55(h) provides that the 

requirement in § 1.55(f) and (g) for a 

certified copy of the foreign application 

will be considered satisfied in a reissue 

application if the patent for which 

reissue is sought satisfies the 

requirement of this section for a 

certified copy of the foreign application 

and such patent is identified in the 

reissue application as containing the 

certified copy. Section 1.55(h) further 

provides that the requirement in 

paragraphs (f) and (g) of this section for 

a certified copy of the foreign 

application will also be considered 

satisfied in an application if a prior-filed 

nonprovisional application for which a 

benefit is claimed under 35 U.S.C. 120, 

121, 365(c), or 386(c) contains a 

certified copy of the foreign application 

and such prior-filed nonprovisional 

application is identified as containing a 

certified copy of the foreign application. 

The exception under § 1.55(h) to the 

requirement to provide the certified 

copy of the foreign application is in 

accord with long-standing Office policy. 

See, e.g., MPEP 215(III) (9th ed., Mar. 

2014). 

Sections 1.55(i)–(l) in this final rule 

correspond to the provisions of 

paragraphs (h)–(k) of former § 1.55. 

Section 1.55(i)(4) is also amended, 

consistent with Office practice, to 

provide that the request under that 

paragraph may be filed with a petition 

under § 1.55(f). See AIA Frequently 

Asked Questions, Question FITF3500, 


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http://www.uspto.gov/aia_

implementation/faqs_first_inventor.jsp. 

Section 1.55(j)(2) is amended to provide 

for a time period to submit the copy of 

the foreign application and separate 

cover sheet in a national stage 

application to include the later of four 

months from the date on which the 

national stage commenced under 35 

U.S.C. 371(b) or (f) (§ 1.491(a)) or four 

months from the date of the initial 

submission under 35 U.S.C. 371 to enter 

the national stage. Section 1.55(j)(2) is 

also amended to provide for the 

submission of the copy of the foreign 

application and separate cover sheet 

with a petition under § 1.55(f). Id. 

Nonprovisional international design 

applications are also excluded from the 

transition provision of § 1.55(k), as such 

applications can only be filed on or after 

the date the treaty takes effect as to the 

United States. 

Section 1.55(m) sets forth the time for 

filing a priority claim and certified copy 

of a foreign application in an 

international design application 

designating the United States. Section 

1.55(m) provides that in an international 

design application designating the 

United States, the claim for priority may 

be made in accordance with the Hague 

Agreement and the Hague Agreement 

Regulations. Section 1.55(m) further 

provides that in a nonprovisional 

international design application, the 

priority claim, unless made in 

accordance with the Hague Agreement 

and the Hague Agreement Regulations, 

must be presented in an application 

data sheet (§ 1.76(b)(6)) identifying the 

foreign application for which priority is 

claimed by specifying the application 

number, country (or intellectual 

property authority), day, month, and 

year of its filing. In a nonprovisional 

international design application, the 

priority claim and certified copy must 

be furnished in accordance with the 

time period and other conditions set 

forth in § 1.55(g). 

Section 1.55(o) provides, in 

accordance with the effective date 

provision of title I of the PTLIA, that the 

right of priority under 35 U.S.C. 386(a) 

or (b) with respect to an international 

design application is applicable only to 

nonprovisional applications, 

international applications, and 

international design applications filed 

on or after May 13, 2015, and patents 

issuing thereon. 126 Stat. 1532. 

Section 1.55(p) provides that the time 

periods set forth in this section are not 

extendable, but are subject to 35 U.S.C. 

21(b) (and § 1.7(a)), PCT Rule 80.5, and 

Hague Agreement Rule 4(4). Section 

1.55(p) in this final rule corresponds to 

the provisions contained in paragraphs 

(b) and (l) of former § 1.55 and further 

provide that the time periods are subject 

to Hague Agreement Rule 4(4). Rule 4(4) 

provides that if a period expires on a 

day on which the International Bureau 

or the office concerned is not open to 

the public, the period shall expire on 

the first subsequent day on which the 

International Bureau or the office 

concerned is open to the public. Section 

101(a) of the PLTIA adds 35 U.S.C. 

386(b), which provides: ‘‘[i]n 

accordance with the conditions and 

requirements of subsections (a) through 

(d) of section 119 and section 172 and 

the treaty and the Regulations, an 

international design application 

designating the United States shall be 

entitled to the right of priority based on 

a prior foreign application . . . .’’ 126 

Stat. at 1529. Thus, pursuant to 35 

U.S.C. 386(b), the priority period in an 

international design application 

designating the United States is subject 

to Rule 4(4). 

Section 1.57: Section 1.57(a)(4) is 

amended to change the reference from 

‘‘§ 1.55(h)’’ to ‘‘§ 1.55(i)’’ in light of the 

changes to § 1.55 in this final rule. The 

introductory text of § 1.57(b) is amended 

to include a reference to priority and 

benefit claims to international design 

applications. Section 101(a) of the 

PLTIA adds 35 U.S.C. 386 to provide for 

a right of priority or benefit with respect 

to an international design application. 

126 Stat. at 1529–30. Accordingly, the 

introductory text of § 1.57(b) is amended 

to provide for incorporation by 

reference to an inadvertently omitted 

portion of the specification or drawings 

based on a claim for priority under 

§ 1.55 or benefit claim under § 1.78 to an 

international design application present 

upon filing. Section 1.57(b)(4) is also 

added to provide that any amendment 

to an international design application 

pursuant to § 1.57(b)(1) shall be effective 

only as to the United States and shall 

have no effect on the filing date of the 

application and that no request under 

§ 1.57(b) to add the inadvertently 

omitted portion of the specification or 

drawings in an international design 

application will be acted upon by the 

Office prior to the international design 

application becoming a nonprovisional 

application. Section 1.57(b)(4) is similar 

to § 1.57(b)(2), which applies to 

international applications. 

Section 1.63: Section 1.63(d)(1) is 

amended to add references to 

§ 1.1021(d) and 35 U.S.C. 386(c) so as to 

provide that a newly executed oath or 

declaration under § 1.63, or substitute 

statement under § 1.64, is not required 

under §§ 1.51(b)(2) and 1.53(f), or under 

§§ 1.497 and 1.1021(d), for an inventor 

in a continuing application that claims 

the benefit under 35 U.S.C. 120, 121, 

365(c), or 386(c) in compliance with 

§ 1.78 of an earlier-filed application, 

provided that an oath or declaration in 

compliance with this section, or 

substitute statement under § 1.64, was 

executed by or with respect to such 

inventor and was filed in the earlierfiled application and a copy of such 

oath, declaration, or substitute 

statement showing the signature or an 

indication thereon that it was executed 

is submitted in the continuing 

application. Title I of the PLTIA amends 

35 U.S.C. 115(g)(1) (as amended by the 

Leahy-Smith America Invents Act) by 

adding a reference to benefit claims 

under 35 U.S.C. 386(c). See 126 Stat. 

1531. The amendment to § 1.63(d)(1) is 

consistent with this statutory change. 

Section 1.76: Section 1.76(a) is 

amended to provide for the filing of an 

application data sheet in a 

nonprovisional international design 

application and to include a reference to 

priority and benefit claims under 35 

U.S.C. 386 with respect to international 

design applications. Section 1.76(b)(5) is 

amended to provide for domestic benefit 

information pertaining to benefit claims 

under 35 U.S.C. 386(c). Section 

1.76(b)(6) is amended to provide that 

the foreign priority information section 

of the application data sheet may 

include the intellectual property 

authority rather than country of filing. 

This change is for consistency with the 

requirements of 35 U.S.C. 119(b) and 

§ 1.55. 

Section 1.78: Section 1.78 is 

amended, as discussed below, to 

provide for benefit claims under 35 

U.S.C. 386(c) with respect to 

international design applications 

designating the United States. In 

addition, as to the applicability dates for 

certain provisions in existing rules, this 

final rule makes those applicability 

dates more accessible by stating them 

directly in the body of those rules. In 

particular, the requirements of § 1.78 set 

forth in the following final rules have 

been consolidated in this final rule: 

Changes To Implement the Patent Law 

Treaty, 78 FR 62368, 62399 (Oct. 21, 

2013) (applicable to any patent 

application filed before, on, or after 

December 18, 2013); Changes To 

Implement the First Inventor To File 

Provisions of the Leahy-Smith America 

Invents Act, 78 FR 11024 (Feb. 14, 2013) 

(applicable to any application filed 

under 35 U.S.C. 111 or 363 on or after 

March 16, 2013); Changes To Implement 

the Inventor’s Oath or Declaration 

Provisions of the Leahy-Smith America 

Invents Act, 77 FR 48776 (Aug. 14, 

2012) (applicable to patent applications 

filed under 35 U.S.C. 111(a) or 363 on 


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or after September 16, 2012); and 

Changes to Implement Eighteen-Month 

Publication of Patent Applications, 65 

FR 57024 (Sept. 20, 2000) (applicable to 

patent applications filed on or after 

November 29, 2000). 

Section 1.78(a)(1) is amended to 

clarify which application is the 

‘‘subsequent application’’ for purposes 

of § 1.78. Section 1.78(a)(1) provides 

that the nonprovisional application, 

other than for a design patent, or 

international application designating 

the United States must be: Filed not 

later than twelve months after the date 

on which the provisional application 

was filed, subject to paragraph (b) of the 

section (a subsequent application); or 

entitled to claim the benefit under 35 

U.S.C. 120, 121, or 365(c) of a 

subsequent application that was filed 

within the period set forth in paragraph 

(a)(1)(i) of the section. Thus, the 

subsequent application in either 

§ 1.78(a)(1)(i) or (a)(1)(ii) is the 

application required to be filed within 

the period set forth in § 1.78(a)(1)(i). For 

purposes of § 1.78(a)(1)(ii), the 

subsequent application may be a 

nonprovisional application or an 

international application designating 

the United States. 

Section 1.78(b) is amended to 

provide, in paragraph (b)(1), that a 

petition to restore the benefit of a 

provisional application under this 

paragraph filed on or after May 13, 

2015, must be filed in the subsequent 

application. A similar change was made 

to § 1.55. See discussion of § 1.55(c), 

supra. If a petition under § 1.78(b) to 

restore benefit of a provisional 

application is granted, a further petition 

under § 1.78(b) is not required in an 

application entitled to claim the benefit 

under 35 U.S.C. 120, 121, or 365(c) of 

the subsequent application for which 

benefit of the provisional application 

was restored. 

The introductory text of § 1.78(d) is 

amended to provide for benefit claims 

under 35 U.S.C. 386(c) with respect to 

international design applications 

designating the United States. Section 

1.78(d)(1)(ii) provides that the priorfiled application to which benefit is 

claimed may be an international design 

application entitled to a filing date in 

accordance with § 1.1023 and 

designating the United States. 

Section 1.78(d)(2) is amended to 

provide that the reference required 

under this paragraph to a prior filed 

international design application 

designating the United States may 

identify the international design 

application by international registration 

number and filing date under § 1.1023. 

Where the international design 

application becomes a nonprovisional 

application, which occurs when the 

Office receives a copy of the 

international registration from the 

International Bureau pursuant to Article 

10 of the Hague Agreement (see § 1.9), 

the required reference can identify the 

nonprovisional application number 

instead of the international registration 

number and filing date under § 1.1023. 

Identifying the prior international 

design application by the 

nonprovisional application number is 

preferable to the Office and simpler for 

applicants. 

Section 1.78(d)(3) is amended to 

provide, in paragraph (d)(3)(i), that the 

reference required by 35 U.S.C. 120 and 

§ 1.78(d)(2) must be submitted during 

the pendency of the later-filed 

application. Section 1.78(d)(3)(ii) sets 

forth the time period for submitting the 

reference required under 35 U.S.C. 120 

and § 1.78(d)(2) in a later-filed 

application under 35 U.S.C. 111(a) 

(excluding design applications) and in a 

nonprovisional application entering the 

national stage from an international 

application under 35 U.S.C. 371 and 

substantially corresponds to the 

provisions contained in paragraph (d)(3) 

of former § 1.78. Section 1.78(d)(3)(iii) 

provides that, except as provided in 

§ 1.78(e), the failure to timely submit the 

reference required by 35 U.S.C. 120 and 

§ 1.78(d)(2) is considered a waiver of 

any benefit under 35 U.S.C. 120, 121, 

365(c), or 386(c) to the prior-filed 

application. The changes to § 1.78(d)(3) 

in this final rule would make the 

procedures under § 1.78(e) to accept an 

unintentionally delayed benefit claim 

applicable to design applications and 

thus accord applicants in design 

applications the same remedy for 

accepting an unintentionally delayed 

benefit claim that is available to 

applicants in utility applications. The 

establishment of such procedures is 

provided for in 35 U.S.C. 120, as 

amended in section 4503 of the AIPA. 

See discussion of § 1.55(e), supra 

(regarding acceptance of an 

unintentionally delay claim of priority 

in a design application). 

Section 1.78(d)(6) is amended to 

exclude nonprovisional international 

design applications, as such 

applications can only be filed on or after 

the date the Hague Agreement takes 

effect as to the United States. 

Section 1.78(d)(7) is added to provide 

that where benefit is claimed under 35 

U.S.C. 120, 121, 365(c), or 386(c) to an 

international application or an 

international design application, which 

designates but did not originate in the 

United States, the Office may require a 

certified copy of such application 

together with an English translation 

thereof if filed in another language. The 

authority to require a certified copy of 

an international design application that 

designates the United States but did not 

originate in the United States, and an 

English translation thereof, is provided 

in 35 U.S.C. 386(c). Similar authority 

with respect to international 

applications that designate the United 

States but do not originate in the United 

States is provided in 35 U.S.C. 365(c). 

Since international applications are 

published under PCT Article 21(2) and 

international design applications are 

published under Hague Agreement 

Article 10(3), the Office would not 

ordinarily require a certified copy of the 

international application or 

international design application 

pursuant to § 1.78(d)(7). Rather, the 

Office foresees use of § 1.78(d)(7) 

primarily in instances where the 

international application or 

international design application did not 

publish under the respective treaty or 

where there is a question as to the 

content of the disclosure of the 

application as of its filing date and the 

certified copy and any English 

translation are needed to determine 

entitlement to the benefit of the filing 

date of the international application or 

international design application in order 

to, for example, overcome a prior art 

reference. 

Section 1.78(e) is amended to provide 

for acceptance of a delayed benefit 

claim under 35 U.S.C. 386(c) to a prior 

filed international application 

designating the United States pursuant 

to the petition procedure set forth 

therein. 

Section 1.78(i) is added to provide 

that where a petition under paragraphs 

(b), (c), or (e) of this section is required 

in an international application that was 

not filed with the United States 

Receiving Office and is not a 

nonprovisional application, then such 

petition may be filed in the earliest 

nonprovisional application that claims 

benefit under 35 U.S.C. 120, 121, 365(c), 

or 386(c) to the international application 

and will be treated as being filed in the 

international application. This 

provision is added because, in such 

instances, the Office does not have an 

application file established for the 

international application. 

Section 1.78(j) provides, in 

accordance with the effective date 

provision of title I of the PTLIA, that 

benefit under 35 U.S.C. 386(c) with 

respect to an international design 

application is applicable only to 

nonprovisional applications, 

international applications, and 

international design applications filed 


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17930 Federal Register / Vol. 80, No. 63 / Thursday, April 2, 2015 / Rules and Regulations 

on or after May 13, 2015, and patents 

issuing thereon. 126 Stat. 1532. 

Section 1.78(k) in this final rule 

corresponds to the provisions contained 

in paragraphs (h) and (a)(1) of former 

§ 1.78 and further provides that the time 

periods are subject to Hague Agreement 

Rule 4(4). 

Section 1.84: Section 1.84(a)(2) is 

amended to eliminate the requirement 

for a petition and fee set forth in 

§ 1.17(h) to accept color drawings or 

photographs in design applications. The 

requirements that the design application 

include the number of sets of color 

drawings required by § 1.84(a)(2)(ii) and 

that the specification contain the 

reference to the color drawings or 

photographs set forth in § 1.84(a)(2)(iii) 

are maintained. The reference set forth 

in § 1.84(a)(2)(iii) provides notice to the 

public should the design application 

issue as a patent that the patented 

design is in color. In addition, the 

petition requirement is maintained for 

utility patent applications. Section 

1.84(a)(2) is also amended to reflect 

current requirements for color drawings 

submitted through EFS-Web. 

See Legal Framework for Electronic 

Filing System—Web (EFS-Web), 74 FR 

55200, 55208 (Oct. 27, 2009) (‘‘The 

requirement for three (3) sets of color 

drawings under 37 CFR 1.84(a)(2)(ii) is 

not applicable to color drawings 

submitted via EFS-Web. Therefore, only 

one set of such color drawings is 

necessary when filing via EFS-Web.’’). 

Section 1.84(y) is amended to include 

a cross reference to international design 

application reproductions in § 1.1026. 

Section 1.85: Section 1.85(c) is 

amended to provide that if an amended 

drawing submitted under § 1.121(d) in a 

nonprovisional international design 

application does not comply with 

§ 1.1026 at the time an application is 

allowed, the Office may notify the 

applicant in a notice of allowability and 

set a three-month period of time from 

the mail date of the notice of 

allowability within which the applicant 

must file a corrected drawing to avoid 

abandonment. 

Section 1.97: Section 1.97(b) is 

amended by revising paragraphs (b)(3) 

and (b)(4), and adding a new paragraph 

(b)(5) to provide that an information 

disclosure statement may be filed 

within three months of the date of 

publication of the international 

registration under Hague Agreement 

Article 10(3) in an international design 

application. An information disclosure 

statement may also be submitted with 

the international design application. See 

Hague Agreement Rule 7(5)(g) (‘‘The 

international application may be 

accompanied by a statement that 

identifies information known by the 

applicant to be material to the eligibility 

for protection of the industrial design 

concerned.’’). 

Section 1.105: The introductory text 

of § 1.105(a)(1) is amended to make a 

requirement for information under 

§ 1.105 applicable to international 

design applications and to clarify that 

the requirement under § 1.105 is 

applicable to a reexamination 

proceeding ordered as a result of a 

supplemental examination proceeding. 

Section 1.109: Section 1.109 is revised 

such that its definition of ‘‘effective 

filing date’’ is no longer restricted only 

to first inventor to file applications, but 

applies regardless of whether an 

application is a first to invent or a first 

inventor to file application. This does 

not change or affect the meaning of 

effective U.S. filing date when used in 

the MPEP to discuss the treatment of 

first to invent (pre-AIA) applications or 

the order of examination. 

Section 1.109(a)(2) is also amended to 

include, for purposes of determining the 

‘‘effective filing date’’ for a claimed 

invention in a patent or application for 

patent (other than a reissue application 

or reissued patent), a right of priority or 

benefit of an earlier filing date under 35 

U.S.C. 386. Title I of the PLTIA amends 

35 U.S.C. 100(i)(1)(B) (as amended by 

the Leahy-Smith America Invents Act) 

to include, within the meaning of 

‘‘effective filing date’’ for a claimed 

invention in a patent or application, the 

filing date of the earliest application for 

which the patent or application is 

entitled, as to such invention, to a right 

of priority or the benefit of an earlier 

filing date under 35 U.S.C. 386. See 126 

Stat. 1531. The amendment to 

§ 1.109(a)(2) is consistent with the 

change to 35 U.S.C. 100(i)(1)(B) as 

amended by title I of the PLTIA. 

Section 1.114: 35 U.S.C. 132(b), which 

provides for the request for continued 

examination practice set forth in 

§ 1.114, was added to title 35, United 

States Code, in section 4403 of the 

American Inventors Protection Act of 

1999 (AIPA). See Public Law 106–113, 

113 Stat. 1501, 1501A–561 (1999). With 

respect to international applications, 

section 4405(b)(1) of the AIPA provides 

that 35 U.S.C. 132(b) applies to 

‘‘applications complying with section 

371 of title 35, United States Code, that 

resulted from international applications 

filed on or after June 8, 1995.’’ See 113 

Stat. at 1501A–561. The Office recently 

revised its rules to permit applicants, 

including applicants in national stage 

applications under 35 U.S.C. 371, to 

postpone filing the inventor’s oath or 

declaration until the application is 

otherwise in condition for allowance 

(subject to certain conditions). See 

Changes to Implement the Inventor’s 

Oath or Declaration Provisions of the 

Leahy-Smith America Invents Act, 77 

FR 48776 (Aug. 14, 2012) (final rule). 

An international application, however, 

does not comply with the requirements 

of 35 U.S.C. 371 until the application 

includes the inventor’s oath or 

declaration. See 35 U.S.C. 371(c)(4); see 

also 77 FR at 48777, 48780, 48795 

(explaining that the inventor’s oath or 

declaration is still required for a PCT 

international application to comply 

with 35 U.S.C. 371, notwithstanding the 

changes permitting applicants to 

postpone filing the inventor’s oath or 

declaration until after a PCT 

international application enters the 

national stage). Thus, the Office is 

revising § 1.114(e)(3) to clarify that the 

request for continued examination 

practice set forth in § 1.114 added in 

section 4403 of the AIPA does not apply 

to an international application until the 

international application complies with 

35 U.S.C. 371 (which requires the filing 

of the inventor’s oath or declaration in 

the international application, as well as, 

for example, the basic national fee and 

an English language translation of the 

international application if filed in 

another language). 

Section 1.114(e) also is amended to 

provide that a request for continued 

examination may not be filed in an 

international design application, as 

there is no statutory provision to permit 

the filing of a request for continued 

examination in an international design 

application. Section 4405(b)(2) of the 

AIPA specifically excludes design 

applications under 35 U.S.C. chapter 16 

from the provisions of 35 U.S.C. 132(b), 

and there is no provision in the AIPA, 

PLTIA, or other legislative act making 

35 U.S.C. 132(b) applicable to 

international design applications. 

Section 1.121: Section 1.121(d) is 

amended to provide for amendments to 

the drawings in a nonprovisional 

international design application and 

requires, inter alia, that any changes to 

the drawings be in compliance with 

§§ 1.84(c) and 1.1026. 

Section 1.130: Section 1.130(d) is 

amended to refer to the definition of 

‘‘effective filing date’’ in § 1.109, rather 

than the definition of ‘‘effective filing 

date’’ in 35 U.S.C. 100(i). The definition 

of ‘‘effective filing date’’ in § 1.109 and 

35 U.S.C. 100(i) are the same, and other 

rules of practice refer to definition of 

‘‘effective filing date’’ in § 1.109. See 

§§ 1.78, 1.110. Section 1.130(d) is also 

amended to include a reference to 35 

U.S.C. 386(c), added by title I of the 

PLTIA, concerning domestic benefit 

claims with respect to international 


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Federal Register / Vol. 80, No. 63 / Thursday, April 2, 2015 / Rules and Regulations 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 § 1.109, rather 

than the definition of ‘‘effective filing 

date’’ in 35 U.S.C. 100(i). The definition 

of ‘‘effective filing date’’ in § 1.109 and 

35 U.S.C. 100(i) are the same, and other 

rules of practice refer to definition of 

‘‘effective filing date’’ in § 1.109. See 

§§ 1.78, 1.110. Section 1.131(d) is also 

amended to include a reference to 35 

U.S.C. 386(c), added by title I of the 

PLTIA, concerning domestic benefit 

claims with respect to international 

design applications that designate the 

United States. 

Section 1.137: Section 1.137(d)(1)(ii) 

and (d)(2) are amended to include a 

reference to 35 U.S.C. 386(c) concerning 

domestic benefit claims with respect to 

international design applications that 

designate the United States. 

Section 1.155: Section 1.155 is 

amended to provide for expedited 

examination of an international design 

application that designates the United 

States. To qualify for expedited 

examination, § 1.155(a)(1) provides that 

the international design application 

must have been published pursuant to 

Hague Agreement Article 10(3). 

Section 1.175: The introductory text 

of § 1.175(f)(1) is amended to include a 

reference to 35 U.S.C. 386(c) concerning 

domestic benefit claims with respect to 

international design applications that 

designate the United States. 

Section 1.211: Section 1.211(b) is 

amended to provide that an 

international design application under 

35 U.S.C. chapter 38 shall not be 

published by the Office under § 1.211. 

International registrations are published 

by the International Bureau pursuant to 

Article 10(3) of the Hague Agreement. 

The international registration includes 

the data contained in the international 

design application and any 

reproduction of the industrial design. 

See Hague Agreement Rule 15(2). 

Section 1.312: The Office has decided 

not to amend § 1.312 in this final rule. 

Pursuant to Rule 29 of the Hague 

Agreement, where the second part of the 

individual U.S. designation fee (i.e., the 

issue fee) is paid to the International 

Bureau, the International Bureau is to 

‘‘immediately upon its receipt’’ credit 

payment of such fee to the Office. The 

proposed rule would create an 

administrative burden in international 

design applications where the issue fee 

was paid to the International Bureau in 

order to determine the appropriate date 

to be used for amendment entry 

purposes. The Office may reconsider the 

need for such a provision after it gains 

more experience with the crediting of 

fees by the International Bureau to the 

Office. 

A new subpart I is added to provide 

for international and national 

processing of international design 

applications. 

Section 1.1001: Section 1.1001 is 

added to include definitions of terms 

used in subpart I. 

Section 1.1002: Section 1.1002 is 

added to indicate the major functions of 

the USPTO as an office of indirect filing. 

These include: (1) Receiving and 

according a receipt date to international 

design applications; (2) collecting and, 

when required, transmitting fees for 

processing international design 

applications; (3) determining 

compliance with applicable 

requirements of part 5 of chapter I of 

title 37 of the CFR; and (4) transmitting 

an international design application to 

the International Bureau, unless 

prescriptions concerning national 

security prevent the application from 

being transmitted. 

Section 1.1003: Section 1.1003 is 

added to indicate the major functions of 

the USPTO as a designated office. These 

include: (1) Accepting for national 

examination international design 

applications that satisfy the 

requirements of the Hague Agreement 

and Regulations; (2) performing an 

examination of the international design 

application in accordance with 35 

U.S.C. chapter 16; and (3) 

communicating the results of 

examination to the International Bureau. 

Section 1.1004: Section 1.1004 is 

added to indicate the major functions of 

the International Bureau. These include: 

(1) Receiving international design 

applications directly from applicants 

and indirectly from an office of indirect 

filing; (2) collecting required fees and 

crediting designation fees to the 

accounts of the Contracting Parties 

concerned; (3) reviewing international 

design applications for compliance with 

prescribed requirements; (4) translating 

international design applications into 

the required languages for recordation 

and publication; (5) registering the 

international design in the International 

Register where the international design 

application complies with the 

applicable requirements; (6) publishing 

international registrations in the 

International Designs Bulletin; and (7) 

sending copies of the publication of the 

international registration to each 

designated office. 

Section 1.1005: Section 1.1005 is 

added, pursuant to the Paperwork 

Reduction Act of 1995, to display the 

currently valid Office of Management 

and Budget control number for the 

collection of information in 37 CFR part 

1, subpart I. Section 1.1005(a) provides 

that pursuant to the Paperwork 

Reduction Act of 1995 (44 U.S.C. 3501 

et seq.), the collection of information in 

this subpart has been reviewed and 

approved by the Office of Management 

and Budget under control number 0651– 

0075. Section 1.1005(b) provides that 

notwithstanding any other provision of 

law, no person is required to respond to 

nor shall a person be subject to a 

penalty for failure to comply with a 

collection of information subject to the 

requirements of the Paperwork 

Reduction Act unless that collection of 

information displays a currently valid 

Office of Management and Budget 

control number. Section 1.1005(b) 

further provides that § 1.1005 

constitutes the display required by 44 

U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) 

for the collection of information under 

Office of Management and Budget 

control number 0651–0075. 

Section 1.1011: Section 1.1011(a) is 

added to specify who may file an 

international design application through 

the USPTO. Under Article 3, any person 

that is a national of a State that is a 

Contracting Party or a State member of 

an intergovernmental organization that 

is a Contracting Party, or that has a 

domicile, a habitual residence, or a real 

and effective industrial or commercial 

establishment in the territory of a 

Contracting Party, shall be entitled to 

file an international application. Under 

Article 4(1), the international 

application may be filed, at the option 

of the applicant, either directly with the 

International Bureau or through the 

office of the applicant’s Contracting 

Party (i.e., an office of indirect filing). 

Title I of the PLTIA adds 35 U.S.C. 

382(a), which provides: ‘‘[a]ny person 

who is a national of the United States, 

or has a domicile, a habitual residence, 

or a real and effective industrial or 

commercial establishment in the United 

States, may file an international design 

application by submitting to the Patent 

and Trademark Office an application in 

such form, together with such fees, as 

may be prescribed by the Director.’’ 126 

Stat. at 1528. In accordance with 35 

U.S.C. 382(a) and Articles 3 and 4(1), 

§ 1.1011(a) specifies that only 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 


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17932 Federal Register / Vol. 80, No. 63 / Thursday, April 2, 2015 / Rules and Regulations 

in the territory of the United States may 

file international design applications 

through the United States Patent and 

Trademark Office. 

Section 1.1011(b) is added to provide 

that, although the USPTO will accept 

international design applications filed 

by any person referred to in § 1.1011(a), 

an international design application 

designating the United States may be 

refused by the Office as a designated 

office if the applicant is not a person 

qualified under 35 U.S.C. chapter 11 to 

be an applicant. The PLTIA does not 

distinguish a person qualified to be an 

applicant for an international design 

application designating the United 

States from a person qualified to be an 

applicant in a national design 

application under 35 U.S.C. 171–173. 

See section 101(a) of the PLTIA, which 

adds: 35 U.S.C. 389(b) (‘‘All questions of 

substance and, unless otherwise 

required by the treaty and Regulations, 

procedures regarding an international 

design application designating the 

United States shall be determined as in 

the case of applications filed under 

chapter 16.’’); 35 U.S.C. 382(c) (‘‘Except 

as otherwise provided in this chapter, 

the provisions of chapter 16 shall 

apply.’’); and 35 U.S.C. 383 (‘‘In 

addition to any requirements pursuant 

to chapter 16, the international design 

application shall contain. . . .’’). 126 

Stat. at 1528–30. 

Section 1.1012: Section 1.1012 is 

added to provide that, in order to file an 

international design application through 

the United States Patent and Trademark 

Office as an office of indirect filing, the 

United States must be applicant’s 

Contracting Party. Pursuant to Article 4, 

an international design application may 

be filed through the office of the 

‘‘applicant’s Contracting Party.’’ The 

term ‘‘applicant’s Contracting Party’’ is 

defined in Article 1(xiv) as ‘‘the 

Contracting Party or one of the 

Contracting Parties from which the 

applicant derives its entitlement to file 

an international application by virtue of 

satisfying, in relation to that Contracting 

Party, at least one of the conditions 

specified in Article 3; where there are 

two or more Contracting Parties from 

which the applicant may, under Article 

3, derive its entitlement to file an 

international application, ‘applicant’s 

Contracting Party’ means the one which, 

among those Contracting Parties, is 

indicated as such in the international 

application.’’ The indication of 

applicant’s Contracting Party may be 

made in Box 4 of the application for 

international registration form (DM/1 

form). 

Section 1.1021: Section 1.1021 is 

added to specify the contents of the 

international design application. 

Section 1.1021(a) specifies the 

mandatory contents of an international 

design application. The international 

design application must be in English, 

French, or Spanish. In addition, the 

application shall contain or be 

accompanied by: (1) A request for 

international registration under the 

Hague Agreement (Article 5(1)(i)); (2) 

the prescribed data concerning the 

applicant (Article 5(1)(ii) and Rule 

7(3)(i) and (ii)); (3) the prescribed 

number of copies of a reproduction or, 

at the choice of the applicant, of several 

different reproductions of the industrial 

design that is the subject of the 

international design application, 

presented in the prescribed manner; 

however, where the industrial design is 

two-dimensional and a request for 

deferment of publication is made in 

accordance with Article 5(5), the 

international design application may, 

instead of containing reproductions, be 

accompanied by the prescribed number 

of specimens of the industrial design 

(Article 5(1)(iii)); (4) an indication of the 

product or products that constitute the 

industrial design or in relation to which 

the industrial design is to be used, as 

prescribed (Article 5(1)(iv) and Rule 

7(3)(iv)); (5) an indication of the 

designated Contracting Parties (Article 

5(1)(v)); (6) the prescribed fees (Article 

5(1)(vi) and Rule 12(1)); (7) the 

Contracting Party or Parties in respect of 

which the applicant fulfills the 

conditions to be the holder of an 

international registration (Rule 7(3)(iii)); 

(8) the number of industrial designs 

included in the international 

application, which may not exceed 100, 

and the number of reproductions or 

specimens of the industrial designs 

accompanying the international 

application (Rule 7(3)(v)); (9) the 

amount of the fees being paid and the 

method of payment or instructions to 

debit the required amount of fees to an 

account opened with the International 

Bureau and the identification of the 

party effecting the payment or giving the 

instructions (Rule 7(3)(vii)); and (10) an 

indication of applicant’s Contracting 

Party as required under Rule 7(4)(a). 

Section 1.1021(b) sets forth additional 

mandatory contents that may be 

required by certain Contracting Parties. 

These include: (1) Elements referred to 

in Article 5(2)(b) required for a filing 

date in the designated Contracting Party 

for which a declaration was made by 

that Contracting Party; and (2) a 

statement, document, oath, or 

declaration required pursuant to Rule 

8(1) by a designated Contracting Party. 

The elements that may be required 

under Article 5(2)(b) are: (i) Indications 

concerning the identity of the creator; 

(ii) a brief description of the 

reproduction or of the characteristic 

features of the industrial design; and 

(iii) a claim. 

Section 1.1021(c) identifies optional 

contents that the international design 

application may contain. These include: 

(1) Two or more industrial designs, 

subject to the prescribed conditions 

(Article 5(4) and Rule 7(7)); (2) a request 

for deferment of publication (Article 

5(5) and Rule 7(5)(e)) or a request for 

immediate publication (Rule 17); (3) an 

element referred to in item (i) or (ii) of 

Article 5(2)(b) of the Hague Agreement 

or in Article 8(4)(a) of the 1960 Act even 

where that element is not required in 

consequence of a notification in 

accordance with Article 5(2)(a) of the 

Hague Agreement or in consequence of 

a requirement under Article 8(4)(a) of 

the 1960 Act (Rule 7(5)(a)); (4) the name 

and address of applicant’s 

representative, as prescribed (Rule 

7(5)(b)); (5) a claim of priority of one or 

more earlier filed applications in 

accordance with Article 6 and Rule 

7(5)(c); (6) a declaration, for purposes of 

Article 11 of the Paris Convention, that 

the product or products that constitute 

the industrial design, or in which the 

industrial design is incorporated, have 

been shown at an official or officially 

recognized international exhibition, 

together with the place where the 

exhibition was held and the date on 

which the product or products were first 

exhibited there and, where less than all 

the industrial designs contained in the 

international application are concerned, 

the indication of those industrial 

designs to which the declaration relates 

or does not relate (Rule 7(5)(d)); (7) any 

declaration, statement, or other relevant 

indication as may be specified in the 

Administrative Instructions (Rule 

7(5)(f)); (8) a statement that identifies 

information known by the applicant to 

be material to the eligibility for 

protection of the industrial design 

concerned (Rule 7(5)(g)); and (9) a 

proposed translation of any text matter 

contained in the international 

application for purposes of recording 

and publication (Rule 6(4)). 

Section 1.1021(d) sets forth additional 

required contents for an international 

design application that designates the 

United States. Section 1.1021(d) 

provides that, in addition to the 

mandatory requirements set forth in 

§ 1.1021(a), an international design 

application that designates the United 

States shall contain or be accompanied 

by: (1) A claim (§§ 1.1021(b)(1)(iii) and 

1.1025); (2) indications concerning the 


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identity of the creator (i.e., the inventor, 

see § 1.9(d)) in accordance with Rule 

11(1); and (3) the inventor’s oath or 

declaration (§§ 1.63 and 1.64). Section 

1.1021(d)(3) further provides that the 

requirements in §§ 1.63(b) and 1.64(b)(4) 

to identify each inventor by his or her 

legal name, mailing address, and 

residence, if an inventor lives at a 

location which is different from the 

mailing address, and the requirement in 

§ 1.64(b)(2) to identify the residence and 

mailing address of the person signing 

the substitute statement, will be 

considered satisfied by the presentation 

of such information in the international 

design application prior to international 

registration. 

Under Article 5(2), a Contracting 

Party may require an international 

design application to contain certain 

additional elements, where the law of 

that Contracting Party, at the time it 

becomes a party to the Hague 

Agreement, requires the application to 

contain such elements to be accorded a 

filing date. The elements set forth in 

Article 5(2) are: (1) Indications 

concerning the identity of the creator of 

the industrial design; (2) a brief 

description of the reproduction or of the 

characteristic features of the industrial 

design; and (3) a claim. Article 5(2) 

permits a Contracting Party to notify the 

Director General of the elements 

required in order for the application to 

be accorded a filing date. 

A claim is a filing date requirement 

for design applications in the United 

States. While title II of the PLTIA, in 

implementing the Patent Law Treaty, 

eliminated the requirement for a claim 

as a filing date requirement in utility 

applications, it did not eliminate the 

requirement for a claim as a filing date 

requirement for design applications. See 

section 202 of the PLTIA (amending 35 

U.S.C. 171 to provide that ‘‘[t]he filing 

date of an application for patent for 

design shall be the date on which the 

specification as prescribed by [35 

U.S.C.] 112 and any required drawings 

are filed’’). 126 Stat. 1535. The specific 

wording of the claim shall be as 

prescribed in § 1.1025. Id. 

Consequently, an international design 

application that designates the United 

States but does not contain a claim will 

not be registered by the International 

Bureau in the international register and 

thus will not be entitled to a filing date 

in the United States. See 35 U.S.C. 384; 

Article 10(2). In such case, the 

International Bureau will invite the 

applicant to submit the claim within a 

prescribed time limit and will accord a 

date of international registration as of 

the date of receipt of the claim 

(assuming there are no other filing date 

defects). See Article 10(2)(b). Failure to 

timely submit the claim in response to 

the invitation by the International 

Bureau will result in the application 

being deemed not to contain the 

designation of the United States. See 

Article 8(2)(b). 

Section 1.1021(d) also requires an 

international design application 

designating the United States to contain 

indications concerning the identity of 

the inventor (i.e., creator) of the 

industrial design and the inventor’s oath 

or declaration (§§ 1.63 or 1.64). The 

identity of the inventor and the 

inventor’s oath or declaration are 

requirements applicable to design 

applications under 35 U.S.C. chapter 16. 

See, e.g., 35 U.S.C. 115; 35 U.S.C. 101. 

The PLTIA provides for parity in the 

treatment of international design 

applications designating the United 

States with design applications under 

35 U.S.C. chapter 16, except where 

otherwise provided by the PLTIA, 

Hague Agreement, or Regulations. See, 

e.g., 35 U.S.C. 389(b) (‘‘All questions of 

substance and, unless otherwise 

required by the treaty and Regulations, 

procedures regarding an international 

design application designating the 

United States shall be determined as in 

the case of applications filed under 

chapter 16.’’); 35 U.S.C. 382(c) (‘‘Except 

as otherwise provided in this chapter, 

the provisions of chapter 16 shall 

apply.’’); 35 U.S.C. 383 (‘‘In addition to 

any requirements pursuant to chapter 

16, the international design application 

shall contain. . . .’’). 126 Stat. at 1528– 

30. See also discussion of Hague 

Agreement Rule 8, supra. 

Section 1.1022: Section 1.1022 is 

added to specify form and signature 

requirements for international design 

applications. Section 1.1022(a) provides 

that the international design application 

shall be presented on the official form. 

See Hague Agreement Rule 7(1). The 

term ‘‘official form’’ is defined in Hague 

Agreement Rule 1(vi) to mean ‘‘a form 

established by the International Bureau 

or an electronic interface made available 

by the International Bureau on the Web 

site of the Organization, or any form or 

electronic interface having the same 

contents and format.’’ Section 1.1022(b) 

provides that the international design 

application shall be signed by the 

applicant. See Rule 7(1). 

Section 1.1023: The filing date of an 

international design application in the 

United States is set forth in 35 U.S.C. 

384, added by section 101 of the PLTIA, 

which provides ‘‘[s]ubject to subsection 

(b), the filing date of an international 

design application in the United States 

shall be the effective registration date.’’ 

126 Stat. at 1529. The term ‘‘effective 

registration date’’ is defined in 35 U.S.C. 

381(a)(5) as ‘‘the date of international 

registration determined by the 

International Bureau under the treaty.’’ 

126 Stat. at 1528. Accordingly, 

§ 1.1023(a) is added to set forth that the 

filing date of an international design 

application in the United States is the 

date of international registration 

determined by the International Bureau, 

subject to review under § 1.1023(b). 

Section 1.1023(b) is added to set forth 

a procedure to review the filing date of 

an international design application. 

Pursuant to 35 U.S.C. 384(b), ‘‘[t]he 

Director may establish procedures, 

including the payment of a surcharge, to 

review the filing date under this section. 

Such review may result in a 

determination that the application has a 

filing date in the United States other 

than the effective registration date.’’ 126 

Stat. at 1529. Accordingly, § 1.1023(b) 

provides that, where the applicant 

believes the international design 

application is entitled under the Hague 

Agreement to a filing date in the United 

States other than the date of 

international registration, the applicant 

may petition the Director to accord the 

international design application a filing 

date in the United States other than the 

date of international registration. 

Section 1.1023(b) requires that the 

petition be accompanied by the fee set 

forth in § 1.17(f) and include a showing 

to the satisfaction of the Director that 

the international design application is 

entitled to such filing date. 

Section 1.1024: Section 1.1024 is 

added to provide that an international 

design application designating the 

United States must include a 

specification as prescribed by 35 U.S.C. 

112 and preferably include a brief 

description of the reproduction 

pursuant to Rule 7(5)(a) describing the 

view or views of the reproductions. 

Pursuant to Article 5(2), a Contracting 

Party may require ‘‘a brief description of 

the reproduction or of the characteristic 

features of the industrial design that is 

the subject of that application’’ where 

such is a filing date requirement under 

its national law. See Article 5(2)(b)(ii). 

While the ‘‘brief description of the 

reproduction or of the characteristic 

features of the industrial design’’ 

referred to in Article 5(2)(b)(ii) is not a 

filing date requirement in the United 

States, applicants should consider 

whether including additional written 

description of the invention is needed to 

comply with the requirements of 35 

U.S.C. 112. Rule 7(5)(a) allows the 

applicant to include in the international 

design application the description 

referred to in Article 5(2)(b)(ii) even if 


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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., § 1.153(b) (‘‘No 

description, other than a reference to the 

drawing, is ordinarily required. . . .); 

§ 1.154(b) (‘‘The specification should 

include . . . 4) Description of the figure 

or figures of the drawing’’); and MPEP 

1503.01(II) (‘‘Descriptions of the figures 

are not required to be written in any 

particular format, however, if they do 

not describe the views of the drawing 

clearly and accurately, the examiner 

should object to the unclear and/or 

inaccurate descriptions and suggest 

language which is more clearly 

descriptive of the views.’’). Such figure 

descriptions are helpful for examination 

and may, in some cases, avoid rejections 

under 35 U.S.C. 112. Furthermore, a 

description of the view or views of the 

reproductions will be required by the 

Office in a nonprovisional international 

design application if not furnished 

under Rule 7(5)(a). See discussion of 

§ 1.1067, infra. 

Thus, § 1.1024 is added to provide 

that an international design application 

designating the United States must 

include a specification as prescribed by 

35 U.S.C. 112, and should preferably 

include a brief description of the 

reproduction pursuant to Rule 7(5)(a) 

describing the view or views of the 

reproductions. 

The Office notes that Article 5(2)(b)(ii) 

and Rule 11(2) refer to a description of 

‘‘characteristic features’’ of the 

industrial design that may be required 

by some Contracting Parties. A 

characteristic features statement is not 

required under U.S. national law. 

Applicants are cautioned that a 

characteristic features statement may 

serve to later limit the claim in the 

United States. See McGrady v. 

Aspenglas Corp., 487 F. Supp. 859 

(S.D.N.Y. 1980); MPEP 1503.01. 

Section 1.1025: Section 1.1025 is 

added to set forth that the specific 

wording of the claim in an international 

design application designating the 

United States shall be in formal terms to 

the ornamental design for the article 

(specifying name of article) as shown, or 

as shown and described. Section 1.1025 

also provides that more than one claim 

is neither required nor permitted for 

purposes of the United States. Under 

Rule 11(3), a declaration requiring a 

claim pursuant to Article 5(2) ‘‘shall 

specify the exact wording of the 

required claim.’’ 

Section 1.1026: Section 1.1026 is 

added to provide that reproductions 

shall comply with the requirements of 

Rule 9 and Part Four of the 

Administrative Instructions. Rule 9 sets 

forth the requirements for reproductions 

in international design applications, 

including the form and number of 

reproductions, and references the 

requirements of the Administration 

Instructions. Part Four of the 

Administrative Instructions sets forth 

requirements concerning the 

presentation of the reproductions 

(Section 401), representation of the 

industrial design (Section 402), 

disclaimer (Section 403), requirements 

for photographs and other graphic 

representations (Section 404), 

numbering of reproductions (Section 

405), requirements for specimens 

(Section 406), and relation with a 

principal industrial design or a 

principal application or registration 

(Section 407). 

Section 1.1027: Section 1.1027 

provides that, where a request for 

deferment of publication has been filed 

in respect of a two-dimensional 

industrial design, the international 

design application may include 

specimens of the design in accordance 

with Rule 10 and Part Four of the 

Administrative Instructions. Section 

1.1027 further provides that specimens 

are not permitted in an international 

design application that designates the 

United States or any other Contracting 

Party that does not permit deferment of 

publication. Under the Hague 

Agreement, specimens are only 

permitted where a request for deferment 

of publication has been made. See 

Article 5(1)(iii); Rule 10(1). However, a 

request for deferment of publication is 

not permitted in an international design 

application that designates a 

Contracting Party that has made a 

declaration under Article 11(1)(b) that 

its applicable law does not provide for 

deferment of publication. See Article 

11(3). 

Section 1.1028: Section 1.1028 is 

added to make clear that an 

international design application may 

contain a request for deferment of 

publication, provided the application 

does not designate the United States or 

any other Contracting Party that does 

not permit deferment of publication. 

Where an international design 

application contains an improper 

request for deferment, the International 

Bureau will require correction pursuant 

to Article 11(3). 

Section 1.1031: Section 1.1031 is 

added to provide for payment of the 

international design application fees. 

Section 1.1031(a) provides that 

international design applications filed 

through the Office as an office of 

indirect filing are subject to payment of 

a transmittal fee in the amount of $120. 

Under the Hague Agreement, an office 

of indirect filing may require payment 

of a transmittal fee. See Article 4(2). 

Section 101(a) of the PLTIA adds 35 

U.S.C. 382(b), which provides that the 

international design application and 

international fees shall be forwarded by 

the Office to the International Bureau 

‘‘upon payment of a transmittal fee.’’ 

126 Stat. at 1528. Accordingly, 

§ 1.1031(a) provides for the payment of 

a transmittal fee. The transmittal fee is 

not being set pursuant to section 10(a) 

of the AIA. Rather, the Office is setting 

this fee pursuant to its authority under 


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35 U.S.C. 41(d)(2) in this rulemaking, 

which provides that fees for all 

processing, services, or materials 

relating to patents not specified in 35 

U.S.C. 41 are to be set at amounts to 

recover the estimated average cost to the 

Office of such processing, services, or 

materials. See 35 U.S.C. 41(d)(2). 

The transmittal fee for an 

international design application filed 

under the Hague Agreement through the 

USPTO as an office of indirect filing 

involves the following activities, which 

the Office considered in estimating the 

fiscal year 2012 costs: (1) Processing 

incoming paper ($2); (2) processing 

application fees ($7); (3) application 

indexing/scanning ($65); (4) routing 

classification/security screening ($4); (5) 

second-level security screening and 

licensing and review processing ($1); (6) 

initial bibliographic data entry ($17); (7) 

copying and mailing ($9); (8) performing 

processing section functions ($11); and 

(9) performing Hague file maintenance 

($2). 

Applying the ABI methodology 

discussed above, the Office has thus 

estimated the fiscal year 2012 unit cost 

to transmit an international design 

application and international fees to the 

International Bureau as the sum total of 

the aforementioned activities, resulting 

in a total unit cost of $118. Using the 

actual CPI–U increase for fiscal year 

2013 and the estimated CPI–U for 2014 

and 2015, the Office estimates the fiscal 

year 2015 unit cost to transmit the 

international design application and the 

international fees to the International 

Bureau is $124 ($118 multiplied by 

1.051), which, when rounded to the 

nearest ten dollars, is a fee for 

transmittal of $120. Additional 

information concerning the Office’s 

analysis of the estimated fiscal year 

2012 costs for receiving and 

transmitting international design 

applications and international fees to 

the International Bureau is available 

upon request. 

Section 1.1031(b) provides that the 

Schedule of Fees, a list of individual 

designation fee amounts, and a fee 

calculator to assist applicants in 

calculating the total amount of fees for 

filing an international design 

application may be viewed on the Web 

site of the WIPO, currently available at 

http://www.wipo.int/hague. Under the 

Hague Agreement, the International 

Bureau is responsible for collecting the 

required fees set forth in the Schedule 

of Fees annexed to the Regulations (Rule 

27(1)) and the individual designation 

fees referred to in Rule 12(1)(a)(iii). 

Where the required fees have not been 

paid, the International Bureau will 

invite the applicant to pay the required 

fees to avoid abandonment of the 

application. See Article 8; Rule 14. 

Section 1.1031(c) provides that the 

following fees required by the 

International Bureau may be paid either 

directly to the International Bureau or 

through the Office as an office of 

indirect filing in the amounts specified 

on the WIPO Web site described in 

§ 1.1031(b): (1) The international 

application fees (Rule 12(1)); and (2) the 

fee for descriptions exceeding 100 

words (Rule 11(2)). The fees referred to 

in Hague Agreement Rule 12(1) include 

a basic fee, standard designation fees, 

individual designation fees, and a 

publication fee. Rule 12(3)(b) states that 

the Rule 12(1) reference to individual 

designation fees is construed as a 

reference to only the first part of the 

individual designation fee for any 

Contracting Party with a designation fee 

comprised of two parts. 

Section 1.1031(d) provides that the 

fees referred to in § 1.1031(c) may be 

paid directly to the International Bureau 

in Swiss currency. See Rule 27(2)(a). 

Administrative Instructions to the 

Hague Agreement set forth the various 

modes of payment accepted by the 

International Bureau. See 

Administrative Instruction 801. These 

include: (1) Payment by debit through 

an account established with the 

International Bureau; (2) payment into 

the Swiss postal check account or any 

of the specified bank accounts of the 

International Bureau; or (3) payment by 

credit card. 

Section 1.1031(d) also provides for 

payment of the fees referred to in 

§ 1.1031(c) through the Office as an 

office of indirect filing, provided such 

fees are paid no later than the date of 

payment of the transmittal fee required 

under § 1.1031(a). Any payment through 

the Office must be in U.S. dollars. 

Section 1.1031(d) also provides that 

applicants paying fees through the 

Office may be subject to a requirement 

by the International Bureau to pay 

additional amounts where the 

International Bureau has deemed the 

amount received as being deficient. This 

may occur, for example, where the 

conversion from U.S. dollars to Swiss 

currency results in the International 

Bureau receiving less than the 

prescribed amounts. Under Rule 28(1), 

‘‘[a]ll payments made under these 

Regulations to the International Bureau 

shall be in Swiss currency irrespective 

of the fact that, where the fees are paid 

through an Office, such Office may have 

collected those fees in another 

currency.’’ Consequently, the fees 

collected by the Office for forwarding to 

the International Bureau must be 

converted to Swiss currency. If the 

converted amount at the time the Office 

transfers the fees to the International 

Bureau in Swiss currency is less than 

the amount required by the 

International Bureau, the International 

Bureau may invite the applicant to pay 

the deficiency. Any payment in 

response to the invitation must be made 

directly to the International Bureau 

within the period set in the invitation. 

Section 1.1031(e) provides that 

payment of the fees referred to in Article 

17 and Rule 24 for renewing an 

international registration (‘‘renewal 

fees’’) is not required to maintain a U.S. 

patent issuing on an international 

design application in force and that any 

renewal fees, if required, must be 

submitted directly to the International 

Bureau. Section 1.1031(e) further 

provides that any renewal fee submitted 

to the Office will not be transmitted to 

the International Bureau. 

The final rules do not provide for a 

fee for renewing an international 

registration with respect to the United 

States. Article 7 provides for a 

designation fee for each designated 

Contracting Party. Article 7(1) provides 

for a ‘‘prescribed’’ designation fee (also 

referred to as ‘‘standard’’ designation 

fee, see Rule 11). However, Article 7(2) 

allows a Contracting Party to make a 

declaration replacing the prescribed 

designation fee with an individual 

designation fee ‘‘in connection with any 

international application in which it is 

designated, and in connection with the 

renewal of any international registration 

resulting from such an international 

application.’’ Pursuant to Article 7(2), 

the amount of the individual 

designation fee may be fixed by the 

Contracting Party ‘‘for the initial term of 

protection and for each term of renewal 

or for the maximum period of protection 

allowed by the Contracting Party 

concerned.’’ Article 7(2) further 

provides that the individual designation 

fee may not be higher than the 

equivalent of the amount that the office 

of a Contracting Party would be entitled 

to receive for a grant of protection for an 

equivalent period to the same number of 

designs. 

Thus, while Article 7(2) permits a 

Contracting Party to fix an individual 

designation fee for renewing an 

international registration in respect of 

that Contracting Party, it does not 

require such fee. Rather, the individual 

designation fee fixed by the Contracting 

Party may be for the maximum period 

of protection allowed by the Contracting 

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 


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international registration to obtain the 

maximum period of protection in the 

United States. See, e.g., 35 U.S.C. 173 as 

amended by the PLTIA, 126 Stat. at 

1532 (‘‘Patents for designs shall be 

granted for the term of 15 years from the 

date of grant.’’). Accordingly, the final 

rules do not provide a fee for renewing 

an international design application with 

respect to the United States. 

The Office notes that Article 17(3) 

provides that any extension of the initial 

five-year term of protection accorded by 

an international registration is subject to 

renewal. However, the Hague 

Agreement allows a Contracting Party to 

provide greater protection under its 

national law than provided under the 

Hague Agreement. See Article 2(1) 

(‘‘The provisions of this Act shall not 

affect the application of any greater 

protection which may be accorded by 

the law of a Contracting Party. . . .’’). 

Furthermore, the records of the 

diplomatic conference adopting the 

Hague Agreement make clear that 

renewal of the international registration 

for a designated Contracting Party that 

requires payment of a single designation 

fee for the entire 15-year (or more) 

period of protection is not required to 

obtain the full period of protection in 

that Contracting Party. See WIPO, 

Records of the Diplomatic Conference 

for the Adoption of a New Act of the 

Hague Agreement Concerning the 

International Deposit of Industrial 

Design (Geneva Act) June 16 to July 6, 

1999, 254, ¶ 15.08 (2002) (discussing 

Article 15 of the Basic Proposal 

presented to the diplomatic conference 

which, after minor amendment, became 

Article 17) (‘‘It would be compatible 

with paragraphs (1) to (3) for a 

Contracting Party to stipulate a single 

15-year (or more) period and to require 

payment of an initial individual 

designation fee for the whole period. In 

such case, protection would be 

maintained in its territory for that whole 

period, whether the international 

registration were renewed or not.’’). 

Section 1.1035: The Office has 

decided not to adopt § 1.1035 

concerning priority in an international 

design application in this final rule. 

Section 1.1021(c)(5) in this final rule 

provides for the inclusion of, as an 

optional content item, a claim of 

priority of one or more earlier filed 

applications in accordance with Article 

6 and Rule 7(5)(c) of the Hague 

Agreement. In addition, §§ 1.55 and 1.78 

in this final rule provide for foreign 

priority and domestic benefit claims 

with respect to international design 

applications designating the United 

States. Accordingly, § 1.1035 is 

unnecessary. 

Section 1.1041: Section 1.1041 is 

added to provide for representation in 

an international design application. 

Section 1.1041(a) provides that the 

applicant may appoint a representative 

before the International Bureau in 

accordance with Rule 3. With respect to 

who may be appointed to represent the 

applicant before the International 

Bureau, the Hague Agreement does not 

provide for any requirement as to 

professional qualification, nationality, 

or domicile. The appointment may be 

made in the international design 

application or in a separate 

communication. See Rule 3(2). 

Requirements as to the appointment 

of a representative before the office of a 

Contracting Party are outside the scope 

of the Hague Agreement and are 

exclusively a matter for the Contracting 

Party. Accordingly, § 1.1041(b) is added 

to provide that applicants of 

international design applications may 

be represented before the Office as an 

office of indirect filing by a practitioner 

registered (§ 11.6) or granted limited 

recognition (§ 11.9(a) or (b)) to practice 

before the Office (§ 11.6). Section 

1.1041(b) further provides that such 

practitioner may act pursuant to § 1.34 

or pursuant to appointment by the 

applicant. The appointment must be in 

writing signed by the applicant, must 

give the practitioner power to act on 

behalf of the applicant, and must 

specify the name and registration 

number or limited recognition number 

of each practitioner. Section 1.1041(b) 

also provides that an appointment of a 

representative made in the international 

design application pursuant to Rule 3(2) 

that complies with the requirements of 

this paragraph will be effective as an 

appointment before the Office as an 

office of indirect filing. For purposes of 

representation before the Office during 

prosecution of an international design 

application that became a national 

application (see § 1.9(a)(1)), the 

regulations governing national 

applications shall apply. See 

§ 1.1061(a). 

Section 1.1042: Section 1.1042 is 

added to provide that the applicant may 

specify a correspondence address for 

correspondence sent by the Office as an 

office of indirect filing. Where no such 

address has been specified, the Office 

will use as the correspondence address 

the address of applicant’s appointed 

representative (§ 1.1041) or, where no 

representative is appointed, the address 

as specified in Administrative 

Instruction 302. 

Section 1.1045: Section 1.1045 is 

added to set forth the procedures for 

transmittal of international design 

applications to the International Bureau. 

Section 101(a) of the PLTIA adds 35 

U.S.C. 382, which states, in subsection 

(b): ‘‘[s]ubject to chapter 17, 

international design applications shall 

be forwarded by the Patent and 

Trademark Office to the International 

Bureau, upon payment of a transmittal 

fee.’’ 126 Stat. at 1528. Rule 13(1) 

requires an office of indirect filing to 

notify the applicant and the 

International Bureau of the receipt date 

of an international design application 

and to notify the applicant that the 

international design application has 

been transmitted to the International 

Bureau. Accordingly, § 1.1045(a) is 

added to provide that, subject to 

§ 1.1045(b) and payment of the 

transmittal fee set forth in § 1.1031(a), 

transmittal of the international design 

application to the International Bureau 

shall be made by the Office as provided 

by Rule 13(1). Section 1.1045(a) further 

provides that at the same time as it 

transmits the international design 

application to the International Bureau, 

the Office shall notify the International 

Bureau of the date on which it received 

the application and that the Office shall 

also notify the applicant of the date on 

which it received the international 

design application and the date on 

which it transmitted the application to 

the International Bureau. 

Because transmittal of the 

international design application is 

subject to 35 U.S.C. chapter 17, 

§ 1.1045(b) is added to provide that no 

copy of an international design 

application may be transmitted to the 

International Bureau, a foreign 

designated office, or other foreign 

authority by the Office or the applicant, 

unless the applicable requirements of 

part 5 of this chapter have been 

satisfied. 

Under the Hague Agreement, 

formalities review of the international 

design application is performed by the 

International Bureau, not the office of 

indirect filing. The functions of the 

office of indirect filing are de minimis, 

i.e., receiving and transmitting the 

international design application and 

international fees. There is no provision 

in the Hague Agreement for filing 

follow-on submissions with the office of 

indirect filing. Accordingly, § 1.1045(c) 

is added to provide that once transmittal 

of the international design application 

has been effected, except for matters 

properly before the USPTO as an office 

of indirect filing or as a designated 

office, all further correspondence 

concerning the application should be 

sent directly to the International Bureau, 

and that the Office will generally not 

forward communications to the 

International Bureau received after 


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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 § 1.17(m), supra. Under 

§ 1.1051(a), a petition to excuse 

applicant’s failure to act within the 

prescribed time limits must be 

accompanied by: (1) A copy of any 

invitation sent from the International 

Bureau setting a prescribed time limit 

for which applicant failed to timely act; 

(2) the reply required under § 1.1051(c), 

unless previously filed; (3) the fee as set 

forth in § 1.17(m); (4) a certified copy of 

the originally filed international design 

application, unless a copy of the 

international design application was 

previously communicated to the Office 

from the International Bureau or the 

international design application was 

filed with the Office as an office of 

indirect filing; (5) a statement that the 

entire delay in filing the required reply 

from the due date for the reply until the 

filing of a grantable petition pursuant to 

this paragraph was unintentional; and 

(6) a terminal disclaimer (and fee as set 

forth in § 1.20(d)) required pursuant to 

paragraph (d) of this section. The 

Director may require additional 

information where there is a question 

whether the delay was unintentional. 

The requirements for a copy of the 

invitation sent from the International 

Bureau setting a prescribed time limit 

for which applicant failed to timely act 

and for a certified copy of the originally 

filed international design application 

(unless a copy of the international 

design application was previously 

communicated to the Office from the 

International Bureau or the international 

design application was filed with the 

Office as an office of indirect filing) are 

needed because the Office may not have 

a record of the international design 

application. For example, the Office 

may not have a record where the 

international design application was 

filed directly with the International 

Bureau and was not published. 

Section 1.1051(b) provides that, to be 

considered timely, any request for 

reconsideration or review of a decision 

refusing to excuse the applicant’s failure 

to act within prescribed time limits in 

connection with an international design 

application upon petition filed under 

§ 1.1051(a) must be filed within two 

months of the decision refusing to 

excuse or within such time as set in the 

decision. Section 1.1051(b) further 

provides that, unless a decision 

indicates otherwise, the two-month time 

period may be extended under the 

provisions of § 1.136. 

Section 1.1051(c) provides that the 

reply required may be: (1) The filing of 

a continuing application and, if the 

international design application has not 

been subject to international 

registration, a grantable petition under 

§ 1.1023(b) to accord the international 

design application a filing date; or (2) a 

grantable petition under § 1.1052, where 

the international design application was 

filed with the Office as an office of 

indirect filing. 

Under the Hague Agreement, the 

International Bureau reviews 

international design applications for 

compliance with the requirements of the 

treaty and Regulations. If these 

requirements have not been met, the 

International Bureau will invite the 

applicant to make the required 

corrections. See Hague Agreement 

Article 8(1). Depending on the 

correction required, failure to timely 

comply with the invitation will result in 

the application being considered 

abandoned or deemed not to contain the 

designation of the Contracting Party for 

which the deficiency relates. See Hague 

Agreement Article 8(2). The Hague 

Agreement does not provide for 

continued processing of an international 

design application that has been 

abandoned under Article 8 (or for 

processing the application for a 

particular Contracting Party after the 

designation of that Contracting Party has 

been deemed not to be contained in the 

application), based on the Office 

excusing the applicant’s failure to 

timely comply with the invitation 

pursuant to 35 U.S.C. 387. For example, 

the Hague Agreement does not provide 

for forwarding by the International 

Bureau to the applicant a notification of 

refusal in an abandoned international 

application. Accordingly, the Office is 

providing relief under 35 U.S.C. 387 by 

permitting the applicant to file a 

continuing application claiming benefit 

to an international design application 

under the conditions of 35 U.S.C. 386(c) 

and 120. Upon grant of the petition 

under this section, applicant’s delay 

will be excused for the purpose of 

establishing copendency or 

reinstatement of the U.S. designation in 

accordance with 35 U.S.C. 120, 386(c), 

and 388. The ability to file a continuing 

application is similarly provided in the 

rule governing the procedure for revival 

of an abandoned national application. 

See 37 CFR 1.137(c). Alternatively, 

§ 1.1051(c) provides that the reply may 

be a grantable petition under § 1.1052 to 

convert the international design 

application to an application under 35 

U.S.C. chapter 16. 

Section 1.1051(d) provides that any 

petition under § 1.1051 must be 

accompanied by a terminal disclaimer 

and fee as set forth in § 1.321 dedicating 

to the public a terminal part of the term 

of any patent granted thereon equivalent 

to the period beginning on the due date 

for the reply for which applicant failed 

to timely act and ending on the date of 

filing of the reply required under 

paragraph (c) of the section and must 

also apply to any patent granted on a 

continuing design application that 

contains a specific reference under 35 

U.S.C. 120, 121, 365(c), or 386(c) to the 

application for which relief under this 

section is sought. The requirement 

under § 1.1051(d) for a terminal 

disclaimer prevents an inappropriate 

length of patent term caused by 

applicant’s delay and is consistent with 

the requirement under § 1.137(d) for a 

terminal disclaimer in a petition to 

revive an unintentionally abandoned 

design application. 

Section 1.1052: Section 1.1052 is 

added to set forth a procedure for 

converting an international design 

application designating the United 

States to a design application under 35 

U.S.C. chapter 16. Section 101(a) of the 

PLTIA adds 35 U.S.C. 384(a), the second 

sentence of which provides: 

‘‘[n]otwithstanding the provisions of 

this part, any international design 

application designating the United 

States that otherwise meets the 

requirements of chapter 16 may be 

treated as a design application under 

chapter 16.’’ 126 Stat. at 1529. The 

requirements for a filing date for a 

design application under 35 U.S.C. 

chapter 16 are set forth in § 1.53(b). 

Accordingly, § 1.1052(a) provides that 

an international design application 

designating the United States filed with 

the Office as an office of indirect filing 

and meeting the requirements under 

§ 1.53(b) for a filing date for an 

application for a design patent may, on 


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petition under this section, be converted 

to an application for a design patent 

under § 1.53(b) and accorded a filing 

date as provided therein. 

Section 1.1052(a) further provides 

that the petition must be accompanied 

by the fee set forth in § 1.17(t) and be 

filed prior to publication of the 

international registration under Article 

10(3). The requirement that a grantable 

petition be filed prior to publication 

under Article 10(3) is necessary in view 

of the timing requirements under the 

Hague Agreement to issue a notification 

of refusal and to avoid expending Office 

resources processing and examining the 

application under two different 

statutory schemes. 

Section 1.1052(a) also provides that 

the conversion of an international 

design application to an application for 

a design patent under § 1.53(b) will not 

entitle applicant to a refund of the 

transmittal fee or any fee forwarded to 

the International Bureau, or the 

application of any such fee toward the 

filing fee, or any other fee, for the 

application for a design patent under 

§ 1.53(b). In addition, § 1.1052(a) 

provides that the application for a 

design patent resulting from conversion 

of an international design application 

must also include the basic filing fee 

(§ 1.16(b)), the search fee (§ 1.16(l)), the 

examination fee (§ 1.16(p)), the 

inventor’s oath or declaration (§§ 1.63 or 

1.64), and a surcharge if required by 

§ 1.16(f). These provisions are similar to 

those applicable to converting an 

application under 35 U.S.C. 111(b) to an 

application under 35 U.S.C. 111(a). See 

§ 1.53(c)(3). 

Section 1.1052(b) provides that an 

international design application will be 

converted to an application for a design 

patent under § 1.53(b) if a decision on 

petition under this section is granted 

prior to transmittal of the international 

design application to the International 

Bureau pursuant to § 1.1045. Otherwise, 

a decision granting a petition under this 

section will be effective to convert the 

international design application to an 

application for a design patent under 

§ 1.53(b) only for purposes of the 

designation of the United States. Thus, 

pursuant to § 1.1052(b), if the Office 

grants the petition prior to transmittal of 

the international design application to 

the International Bureau, the Office will 

treat the international design 

application submission as an 

application for a design patent under 

§ 1.53(b). Once transmittal of the 

application under § 1.1045 has 

occurred, the grant of the petition will 

only be effective as to the United States, 

and the International Bureau will 

continue to process the international 

design application under the provisions 

of the Hague Agreement. In such case, 

because the international design 

application will have been converted to 

an application for a design patent under 

§ 1.53(b) with respect to the designation 

of the United States, the Office will, 

upon grant of the petition, treat the 

designation of the United States in the 

international design application as not 

being made. To avoid confusion and 

unnecessary processing, applicants 

should renounce the designation of the 

United States pursuant to Article 16 

upon grant of the petition for 

conversion. 

Section 1.1052 (c) provides that a 

petition under § 1.1052 will not be 

granted in an abandoned international 

design application absent a grantable 

petition under § 1.1051. 

Section 1.1052(d) provides that an 

international design application 

converted under this section is subject 

to the regulations applicable to a design 

application filed under 35 U.S.C. 

chapter 16. 

Sections 1.1061–1.1071 relate to 

national processing of an international 

design application designating the 

United States. 

Section 1.1061: Section 1.1061(a) is 

added to provide that the rules relating 

to applications for patents for other 

inventions or discoveries are also 

applicable to international design 

applications designating the United 

States, except as otherwise provided in 

chapter I of title 37 of the CFR or 

required by the Articles or Regulations 

of the Hague Agreement. Section 

1.1061(a) is similar to current § 1.151 

with respect to design applications 

under 35 U.S.C. chapter 16 (‘‘The rules 

relating to applications for patents for 

other inventions or discoveries are also 

applicable to applications for patents for 

designs except as otherwise provided.’’). 

Section 101(a) of the PLTIA adds 35 

U.S.C. 389(b) to provide that all 

questions of procedures regarding 

international design applications 

designating the United States shall be 

determined as in the case of 

applications filed under 35 U.S.C. 

chapter 16, except where otherwise 

required by the Hague Agreement and 

the Regulations (126 Stat. at 1530). 

Section 1.1061(b) is added to identify, 

consistent with the Hague Agreement 

and the Regulations, certain regulations 

that do not apply to international design 

applications. 

Section 1.1062: Section 1.1062(a) is 

added to provide that the Office shall 

make an examination pursuant to title 

35, United States Code, of an 

international design application 

designating the United States. 

Examination of international design 

applications designating the United 

States is mandated by 35 U.S.C. 389(a), 

which was added by section 101(a) of 

the PLTIA (126 Stat. at 1530). In 

accordance with Article 12(1) and 35 

U.S.C. 389(b), the Office will not refuse 

an international design application 

under examination on grounds that 

requirements relating to the form or 

contents of the international design 

application provided for in the Hague 

Agreement or the Regulations or 

additional to, or different from, those 

requirements have not been satisfied. 

Accordingly, the Office does not 

consider it necessary to import the 

language of Article 12(1) into § 1.1061(a) 

as originally proposed. 

The Office does not consider Article 

12(1) to prohibit refusals based on 

requirements relating to form or 

contents of the application provided for 

in the Hague Agreement or Regulations 

where the International Bureau is not 

responsible for verifying compliance 

with such requirements. Such a 

situation could arise, for example, 

where the applicant submits amended 

drawings directly to the Office in an 

international design application before 

the Office for examination, as 

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, 


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that protection may not be refused on 

the grounds that the filing does not 

satisfy the requirements as to form or 

content of the international application 

laid down in the new Act or in the 

Regulations to the extent that such 

requirements are to be considered by 

each Contracting Party as having already 

been satisfied under the international 

procedure. 

Additionally, once the International 

Bureau has ascertained that those 

conditions have been satisfied and has 

proceeded with the international 

registration, paragraph (1) stipulates that 

no Office may refuse the effects of an 

international registration on the grounds 

that requirements relating to the form or 

contents of the international application 

that are contained in the legislation of 

the Contracting Party concerned and 

which are additional to or different from 

the requirements set out in this Act or 

in the Regulations have not been met.’’ 

(third emphasis added)). See also the 

discussion of § 1.067(a), infra (regarding 

refusals permitted under the Hague 

Agreement with respect to optional 

content items). 

Section 1.1062(b) concerns the timing 

of certain actions in international design 

applications. Pursuant to Hague 

Agreement Article 12, where the 

conditions for the grant of protection 

under the law of the Contracting Party 

are not met, a notification of refusal of 

the effects of international registration 

must be communicated to the 

International Bureau within the 

prescribed period. Rule 18(1) sets forth 

the period for communicating the 

notification of refusal. While Rule 

18(1)(a) sets forth the prescribed period 

as six months from the date of 

publication, this period may be 

extended by a Contracting Party 

pursuant to a declaration made under 

Rule 18(1)(b) (extending the six-month 

period to twelve months). Furthermore, 

the declaration under Rule 18(1)(b) may 

also include, inter alia, a statement 

under Rule 18(1)(c)(ii) (providing for the 

later communication of a decision 

regarding the grant of protection where 

a decision regarding the grant of 

protection was unintentionally delayed 

by the office of the Contracting Party). 

Section 1.1062(b) is added to provide 

that, for each international design 

application to be examined, the Office 

shall, subject to Rule 18(1)(c)(ii), send to 

the International Bureau within 12 

months from the publication of the 

international registration under Rule 

26(3) a notification of refusal (§ 1.1063) 

where it appears that the applicant is 

not entitled to a patent under U.S. law 

with respect to any industrial design 

that is the subject of the international 

registration. The Office intends to send 

all notifications of refusal prior to the 

expiration of the 12-month period set 

forth in § 1.1062(b). Any failure by the 

Office to do so would be unintentional 

pursuant to Rule 18(1)(c)(ii). 

The Office does not regard the failure 

to send the notification of refusal within 

the period referenced in § 1.1062(b) to 

confer patent rights or other effect under 

Article 14(2). The Hague Agreement is 

not self-executing, and the PLTIA 

provides for patent rights only upon 

issuance of a patent. See 35 U.S.C. 

389(d) added by the PLTIA, 126 Stat. at 

1531; see also S. Exec. Rep. No. 110–7, 

at 5 (‘‘The proposed Act makes no 

substantive changes in U.S. design 

patent law with the exception of the 

following: The provision of limited 

rights to patent applicants between the 

date that their international design 

application is published by the IB and 

the date on which they are granted a 

U.S. patent based on that application; 

the extension of a patent term for 

designs from fourteen to fifteen years 

from grant; and allowing the USPTO to 

use a published international design 

registration as a basis for rejecting a 

subsequently filed national patent 

application that is directed at the same 

or a similar subject matter.’’). 

Furthermore, the PLTIA requires an 

international design application that 

designates the United States to be 

examined by the Office pursuant to title 

35, United States Code. See 35 U.S.C. 

389(a). Patent rights may only arise at 

the end of the examination process. The 

absence of a notification of refusal does 

not confer enforceable rights. See 35 

U.S.C. 153 (‘‘Patents shall be issued in 

the name of the United States of 

America, under the seal of the Patent 

and Trademark Office, and shall be 

signed by the Director or have his 

signature placed thereon and shall be 

recorded in the Patent and Trademark 

Office.’’). 

Section 1.1063: Section 1.1063(a) is 

added to provide, in accordance with 

Rule 18(2)(b), that a notification of 

refusal shall contain or indicate: (1) The 

number of the international registration 

(Rule 18(2)(b)(ii)); (2) the grounds on 

which the refusal is based (Rule 

18(2)(b)(iii)); (3) a copy of a 

reproduction of the earlier industrial 

design and information concerning the 

earlier industrial design, where the 

grounds of refusal refer to similarity 

with an industrial design that is the 

subject of an earlier application or 

registration (Rule 18(2)(b)(iv)); (4) where 

the refusal does not relate to all the 

industrial designs that are the subject of 

the international registration, those to 

which it relates or does not relate (Rule 

18(2)(b)(v)); and (5) a time period for 

reply under §§ 1.134 and 1.136 where a 

reply to the notification of refusal is 

required (Rule 18(2)(b)(vi)). 

Pursuant to Article 12, the Office 

communicates the notification of refusal 

directly to the International Bureau, 

which then transmits without delay a 

copy of the notification of refusal to the 

holder. The grounds of refusal may be 

in the form of a rejection based on a 

condition for patentability under title 

35, United States Code (e.g., 35 U.S.C. 

102, 103, or 112), a requirement for 

restriction (where more than one 

independent and distinct design is 

presented in the application), and/or an 

objection (where not prohibited by 

Article 12(1) of the Hague Agreement). 

The grounds of refusal may also be 

based on applicant’s action, including 

cancellation of industrial designs in the 

international design application by 

amendment or by an express 

abandonment of the application 

pursuant to § 1.138 prior to 

examination. 

The Office will generally forward 

references used in the grounds of refusal 

(e.g., a rejection under 35 U.S.C. 102 or 

103) with the notification of refusal 

unless the reference was cited by the 

applicant in an information disclosure 

statement. 

The notification of refusal 

communicated by the Office will set a 

time period for reply under §§ 1.134 and 

1.136 to avoid abandonment where a 

reply to the notification of refusal is 

required. Not all notifications of refusal 

will require a reply. For example, where 

the international registration contains 

multiple industrial designs and all but 

one design is cancelled by preliminary 

amendment prior to examination, and 

the remaining design is determined by 

the examiner to be allowable, then a 

notice of allowance will be sent 

concurrently with a notification of 

refusal, refusing the effects of the 

international registration in the United 

States with respect to the industrial 

design or designs that have been 

cancelled. Such a notification of refusal, 

otherwise known as a ‘‘partial 

notification of refusal,’’ will be 

communicated to the International 

Bureau but will not set a time period for 

reply to the notification of refusal, as no 

reply to the refusal is required. 

Section 1.1063(b) is added to provide 

that any reply to the notification of 

refusal must be filed directly with the 

Office and not through the International 

Bureau. Section 1.1063(b) further 

provides that the requirements of 

§ 1.111 shall apply to a reply to a 

notification of refusal. As described 

above, the notification of refusal may be 


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a non-final Office action, including a 

non-final Office action on the merits, 

after a first examination under § 1.104. 

Under the Hague Agreement, any 

reply to the notification of refusal must 

be filed directly with the Office. The 

applicant may not file a reply to a 

notification of refusal through the 

International Bureau. Any further 

correspondence from the Office will 

normally be sent directly to the 

applicant. The procedures applicable to 

design applications under 35 U.S.C. 

chapter 16 are generally applicable to 

international design applications after 

communication of the notification of 

refusal. See Article 12(3)(b) and 35 

U.S.C. 389(b); see also WIPO, Guide to 

the International Registration of 

Industrial Designs under the Hague 

Agreement, B.II.40, ¶ 9.23 (Jan. 2014) 

(‘‘Where the holder of an international 

registration receives, through the 

International Bureau, a notification of 

refusal, he has the same rights and 

remedies (such as review of, or appeal 

against, the refusal) as if the industrial 

design had been filed directly with the 

Office that issued the notification of 

refusal. The international registration is, 

therefore, with respect to the 

Contracting Party concerned, subject to 

the same procedures as would apply to 

an application for registration filed with 

the Office of that Contracting Party.’’). 

Thus, for example, the provisions of 35 

U.S.C. 133 and §§ 1.134 through 1.136 

govern the time to reply to an Office 

action, including a notification of 

refusal that requires a reply to avoid 

abandonment, and the consequence for 

failure to timely reply (i.e., 

abandonment). 

Because the procedures following the 

notification of refusal are governed by 

national practice, the failure of an 

applicant to renew an international 

registration pursuant to Article 17(2) 

does not affect the pendency status of an 

international design application before 

the Office. Otherwise, applicants in 

international design applications would 

not have the same rights and remedies 

as applicants in national design 

applications, as required under Article 

12(3)(b) and 35 U.S.C. 389. Similarly, 

the failure to renew a registration under 

Article 17(2) does not impact an 

applicant’s ability to file a continuing 

application under 35 U.S.C. 120, 121, 

365(c) or 386(c), as the critical inquiry 

under 35 U.S.C. 120 is the presence of 

copendency. 

Section 1.1064: Section 1.1064(a) is 

added to provide that only one 

independent and distinct design may be 

claimed in a nonprovisional 

international design application. Subject 

to the requirements of Article 13, a 

Contracting Party whose law at the time 

it becomes party to the Hague 

Agreement requires, inter alia, that only 

one independent and distinct design 

may be claimed in a single application, 

can refuse the effects of the 

international registration on grounds of 

noncompliance with such requirement. 

U.S. law requires that only one 

independent and distinct design may be 

claimed in a single application. See In 

re Rubinfield, 270 F.2d 391 (CCPA 

1959); In re Platner, 155 USPQ 222 

(Comm’r Pat. 1967); MPEP 1504.05. 

Accordingly, § 1.1064(a) is added to 

provide that only one independent and 

distinct design may be claimed in a 

nonprovisional international design 

application. 

Section 1.1064(b) provides that, if the 

requirements under § 1.1064(a) are not 

satisfied, the examiner shall in the 

notification of refusal or other Office 

action require the applicant in the reply 

to that action to elect one independent 

and distinct design for which 

prosecution on the merits shall be 

restricted. Section 1.1064(b) further 

provides that such requirement will 

normally be made before any action on 

the merits but may be made at any time 

before the final action. Review of any 

such requirement is provided under 

§§ 1.143 and 1.144. 

Section 1.1065: Hague Agreement 

Rule 22 provides for correction of errors 

in the International Registration by the 

International Bureau, acting ex officio or 

at the request of the holder. Under Rule 

22(2), a designated Contracting Party 

has the right to refuse the effects of 

correction. Accordingly, § 1.1065(a) is 

added to provide that the effects of any 

correction in the International Register 

by the International Bureau pursuant to 

Rule 22 in a pending nonprovisional 

international design application shall be 

decided by the Office in accordance 

with the merits of each situation, subject 

to such other requirements as may be 

imposed. Section 1.1065(a) further 

provides that a patent may only be 

corrected in accordance with the 

provisions of title 35, United States 

Code, for correcting patents. Such 

provisions are contained, for example, 

in 35 U.S.C. chapter 25. Title I of the 

PLTIA does not provide another 

mechanism for correcting patents issued 

on international design applications. 

Section 1.1065(a) also provides that any 

correction under Rule 22 recorded by 

the International Bureau with respect to 

an abandoned nonprovisional 

international design application will 

generally not be acted upon by the 

Office and shall not be given effect 

unless otherwise indicated by the 

Office. Rule 22 does not impose any 

requirement on a Contracting Party to 

give effect to a correction made under 

Rule 22 in an international design 

application that is abandoned before 

that Contracting Party. 

Section 1.1065(b) is added to provide 

that a recording of a partial change in 

ownership in the International Register 

pursuant to Rule 21(7) concerning a 

transfer of less than all designs shall not 

have effect in the United States. Under 

the Hague Agreement, a partial change 

in ownership resulting from an 

assignment or other transfer of the 

international registration in respect of 

only some of the industrial designs or 

only some of the designated Contracting 

Parties may be recorded in the 

International Register pursuant to Rule 

21(7). Upon recording of the partial 

change in ownership, the International 

Bureau will create a new international 

registration number for the part that has 

been assigned or otherwise transferred, 

and cancel that part under the originally 

international registration number. 

Consequently, it is possible that an 

original international registration may 

be divided by the International Bureau 

into a number of international 

registrations each directed to only some 

of the designs present in the original 

registration. Such would present 

administrative difficulties for the Office. 

Under Rule 21bis, a Contracting Party 

may declare that a change in ownership 

recorded in the International Register 

has no effect in that Contracting Party. 

Accordingly, § 1.1065(b) is added, 

consistent with Rule 21bis, to provide 

that a recording of a partial change in 

ownership in the International Register 

pursuant to Rule 21(7) concerning a 

transfer of less than all designs shall not 

have effect in the United States. Section 

1.1065(b) does not limit the right of the 

owner to assign or otherwise transfer a 

portion of his or her interest in the 

application, or to record such transfer in 

the Office, but rather simply provides 

that the recording of such a transfer in 

the International Register will not have 

effect in the United States. 

Section 1.1066: Section 1.1066 is 

added to specify the correspondence 

address for a nonprovisional 

international design application. Unlike 

other types of applications before the 

Office, an applicant does not need to file 

any submissions with the Office to 

initiate examination under § 1.1062 of 

an international design application 

designating the United States. Rather, 

published international design 

registrations that designate the United 

States will be systematically received 

from the International Bureau and 

examined in due course. Accordingly, 

§ 1.1066(a) sets forth how the Office will 


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establish the correspondence address for 

a nonprovisional international design 

application in the absence of a 

communication from the applicant 

changing the correspondence address. 

Specifically, § 1.1066(a) provides that, 

unless the correspondence address is 

changed in accordance with § 1.33(a), 

the Office will use as the 

correspondence address in a 

nonprovisional international design 

application the address according to the 

following order: (i) The correspondence 

address under § 1.1042; (ii) the address 

of the applicant’s representative 

identified in the publication of the 

international registration; and (iii) the 

address of the applicant identified in 

the publication of the international 

registration. 

Section 1.1066(b) is added to provide 

that a reference in the rules to the 

correspondence address set forth in 

§ 1.33(a) shall be construed to include a 

reference to § 1.1066 for a 

nonprovisional international design 

application. 

Section 1.1067: Section 1.1067(a) is 

added to provide for a title in a 

nonprovisional international design 

application. The Hague Agreement does 

not require that an international design 

application contain a title. The Office 

believes a title that identifies the article 

in which a design is embodied is 

helpful to the public in understanding 

the nature of the article embodying the 

design after the patent has issued and 

also aids in identification during public 

search. In addition, a U.S. patent must 

contain a title of the invention. See 35 

U.S.C. 154(a)(1) (‘‘Every patent shall 

contain a short title of the 

invention. . . .’’). Accordingly, 

pursuant to § 1.1067(a), the applicant 

may provide a title of the design that 

designates the particular article in a 

nonprovisional international design 

application. Section 1.1067(a) further 

provides that, where a nonprovisional 

international design application does 

not contain a title of the design, the 

Office may establish a title. In 

determining the title, the Office may 

look to the particular article specified in 

the claim. 

Section 1.1067(a) also provides for a 

brief description of the drawings in a 

nonprovisional international design 

application, as for design applications 

filed under 35 U.S.C. chapter 16. 

Section 1.1061(a), discussed supra, 

makes applicable the rules relating to 

applications for patents to international 

design applications that designate the 

United States except as otherwise 

provided in chapter 37 of the Code of 

Federal Regulations or required by the 

Hague Agreement Articles or 

Regulations. Section 1.1061(b) in this 

final rule excludes from applicability to 

international design applications the 

requirements set forth in § 1.74 for a 

description of the drawings. Instead, a 

requirement for a brief description of 

the drawings is provided for in 

§ 1.1067(a) in this final rule. The 

description requirement in § 1.1067(a) is 

consistent with the description 

requirement applicable to design 

applications filed under 35 U.S.C. 

chapter 16. See § 1.153 (‘‘No 

description, other than a reference to the 

drawings, is ordinarily required.’’). The 

PLTIA provides for parity in the 

treatment of international design 

applications designating the United 

States with design applications under 

35 U.S.C. chapter 16, except where 

otherwise provided by the PLTIA, 

Hague Agreement, or Regulations. See, 

e.g., 35 U.S.C. 389(b) (‘‘All questions of 

substance and, unless otherwise 

required by the treaty and Regulations, 

procedures regarding an international 

design application designating the 

United States shall be determined as in 

the case of applications filed under 

chapter 16.’’). Rule 7(5)(a) allows an 

applicant to include in the international 

design application a brief description of 

the reproduction even where those 

items are not required under Article 

5(2). The purpose of Rule 7(5)(a) is to 

allow applicants to include these items 

in the international design application 

to avoid a refusal by a designated 

Contracting Party whose national law 

requires such items, though not as a 

filing date requirement. See, e.g., WIPO, 

Notes on the Basic Proposal for the New 

Act of the Hague Agreement Concerning 

the International Registration of 

Industrial Designs, H/DC/5, ¶ 5.09 (Dec. 

15, 1998) (‘‘Paragraph (2) [(Article 5(3))] 

gives applicants the possibility of 

including in the international 

application, or accompanying it by, 

those additional elements which are 

specified in Rule 7(4) [(Rule 7(5)(a))]. 

Certain of those elements may be 

furnished by applicants in order to 

avoid refusal by a designated 

Contracting Party. If the international 

application does not contain an optional 

element as referred to in Article 5(2) and 

designates a Contracting Party that 

imposes the requirement or 

requirements concerned, regularization 

will not be carried out with the 

International Bureau, but with the 

designated Office that has issued the 

refusal.’’). See also WIPO, Records of 

the Diplomatic Conference for the 

Adoption of a New Act of the Hague 

Agreement concerning the International 

Deposit of Industrial Designs (Geneva 

Act) June 16 to July 6, 1999, 480, 

¶¶ 793–94 (2002) (discussing Rule 7 at 

the 1999 Diplomatic Conference). 

Contracting Parties to the Hague 

Agreement may require items referred to 

in Rule 7(5)(a) pursuant to their national 

law. Applicants are informed of each 

Contracting Party’s national law 

requirements in the application for 

international registration form (DM/1 

form) and corresponding instructions to 

the application form. See, e.g., 

instruction form DM/1.INF, ¶ 38, 

currently available at http://

www.wipo.int/hague/en/forms/ 

(advising applicants that if they 

designate certain Contracting Parties, 

the applicant must provide the optional 

item required by such Contracting 

Party’s national law, and that such item 

will not be reviewed by the 

International Bureau). 

Section 1.1067(b) is added to provide 

that, if the applicant is notified in a 

notice of allowability that an oath or 

declaration in compliance with § 1.63, 

or a substitute statement in compliance 

with § 1.64, executed by or with respect 

to each named inventor has not been 

filed, the applicant must file each 

required oath or declaration in 

compliance with § 1.63, or substitute 

statement in compliance with § 1.64, no 

later than the date on which the issue 

fee is paid to avoid abandonment. This 

time period is not extendable under 

§ 1.136. As explained above, Hague 

Agreement Rule 8 accommodates 

current U.S. law regarding the 

inventor’s oath or declaration. Because 

the presence of the required inventor’s 

oath or declaration is verified by the 

International Bureau as part of its 

formalities review, the need to notify 

the applicant in a notice of allowability 

that an inventor’s oath or declaration is 

required should be rare, e.g., where an 

inventor is added pursuant to § 1.48(a) 

and an executed an oath or declaration 

from the inventor has not been received. 

See § 1.48(b). Since the notice of 

allowability is used whenever an 

application has been placed in a 

condition for allowance (see MPEP 

1302.03), the notice of allowability does 

not constitute a refusal of the effects of 

the international registration, and thus 

is not a notification of refusal, 

notwithstanding any requirement in the 

notice of allowability to furnish an item, 

such as the inventor’s oath or 

declaration pursuant to § 1.1067. 

Section 1.1068: Section 1.1068 is 

added to provide that, upon issuance of 

a patent on an international design 

application designating the United 

States, the Office may send to the 

International Bureau a statement to the 

effect that protection is granted in the 


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United States to the industrial design or 

designs that are the subject of the 

international registration and covered 

by the patent. The sending of such a 

statement is provided for under Hague 

Agreement Rule 18bis and serves the 

purpose of providing notice to the 

public and third parties through 

publication of the statement by the 

International Bureau in the International 

Designs Bulletin that protection for an 

industrial design has been granted in 

the United States. The statement also 

serves as a withdrawal, in part or in 

whole, of any prior refusal with respect 

to the design covered by the patent. See 

Rule 18bis(2). 

Section 1.1069: The Office has 

decided not to add § 1.1069 in this final 

rule. Section 1.1069 concerning a 

notification of division is not necessary. 

The requirements relating to a 

notification of division are clearly set 

forth in Rule 18(3) and Administrative 

Instruction 502. Furthermore, having a 

rule that sets forth requirements 

contained in an administrative 

instruction would necessitate the need 

to amend the rule each time the 

administrative instruction is changed. 

Section 1.1070: Section 1.1070 is 

added to provide for the sending of a 

notification of invalidation to the 

International Bureau. Article 15 

provides that the office of the 

Contracting Party in whose territory the 

effects of the international registration 

have been invalidated shall, where it is 

aware of the invalidation, notify the 

International Bureau of the invalidation 

(‘‘notification of invalidation’’). Rule 20 

provides that, where the effects of an 

international registration are invalidated 

in a designated Contracting Party and 

the invalidation is no longer subject to 

any review or appeal, the office of the 

Contracting Party whose competent 

authority has pronounced the 

invalidation shall, where it is aware of 

the invalidation, notify the International 

Bureau accordingly. Rule 20 further 

specifies the required contents of the 

notification of invalidation. In 

accordance with Article 15 and Rule 20, 

§ 1.1070(a) provides that, where a 

design patent that was granted from an 

international design application is 

invalidated in the United States and the 

invalidation is no longer subject to any 

review or appeal, the patentee shall 

inform the Office. Section 1.1070(b) 

provides that after receiving a 

notification of invalidation under 

§ 1.1070(a) or through other means, the 

Office will notify the International 

Bureau in accordance with Rule 20. 

Section 1.1071: Section 1.1071 is 

added to provide that a grant of 

protection for an industrial design that 

is the subject of an international 

registration shall only arise in the 

United States through the issuance of a 

patent pursuant to 35 U.S.C. 389(d) or 

171 and in accordance with 35 U.S.C. 

153. 

Section 3.1: Section 3.1 is amended to 

include an international design 

application that designates the United 

States of America within the definition 

of ‘‘application’’ for purposes of Part 3 

of Title 37 of the CFR. The change to the 

definition of ‘‘application’’ in § 3.1 

makes clear that assignments (or other 

documents affecting title) of 

international design applications that 

designate the United States may be 

submitted to the Office for recording. 

The change to § 3.1 is in accordance 

with 35 U.S.C. 385, added under the 

PLTIA, which provides that an 

international design application 

designating the United States has the 

effect, for all purposes, of an application 

for patent filed in the Office pursuant to 

35 U.S.C. chapter 16. 126 Stat. at 1529. 

Section 3.21: Section 3.21 is amended 

to provide that an assignment relating to 

an international design application that 

designates the United States must 

identify the international design 

application by the international 

registration number or by the U.S. 

application number assigned to the 

international design application. 

Section 5.1: Section 5.1(b) is amended 

to change the definition of 

‘‘application’’ as used in part 5 of title 

37 of the CFR to include international 

design applications and for consistency 

with the definitions in § 1.9. Section 

5.1(b) is also amended to include a 

definition of ‘‘foreign application’’ to 

permit simplification of other rules 

contained in part 5. 

Section 5.3: Section 5.3(d) is amended 

to clarify that an international design 

application that is subject to a secrecy 

order will not be mailed, delivered, or 

otherwise transmitted to the 

international authorities or the 

applicant. 

Section 5.11: The title of § 5.11 is 

amended to encompass international 

design applications and to indicate that 

the license authorizes filing and 

exporting. Section 5.11(a) is amended to 

clarify that, just as for filing an 

international application in the United 

States Patent and Trademark Office 

acting as a Receiving Office under the 

PCT, a foreign filing license is not 

required to file an international design 

application in the United States Patent 

and Trademark Office acting as an office 

of indirect filing under the Hague 

Agreement. The Office notes that, 

pursuant to § 5.12, filing of an 

international design application 

constitutes ‘‘a petition for license under 

35 U.S.C. 184 for the subject matter of 

the application.’’ Sections 5.11(b), (c), 

(e)(3)(i), and (f) are amended to change 

‘‘foreign patent application’’ to ‘‘foreign 

application,’’ as the provisions of 35 

U.S.C. 184 are not limited to ‘‘patent’’ 

applications but include other types of 

applications, e.g., registrations of 

industrial designs. Section 5.11(b) is 

also amended for consistency with 

§ 5.11(c) with respect to the citation to 

regulations contained in other titles 

under the Code of Federal Regulations. 

Section 5.11(f) is also amended to refer 

to the Office as the United States Patent 

and Trademark Office. 

Section 5.12: Section 5.12 is amended 

for consistency with the definition of 

‘‘application’’ in § 5.1(b) as amended in 

this final rule and to indicate that the 

grant of a foreign filing license may be 

on an official notice other than the filing 

receipt, e.g., in the case of international 

applications filed under the PCT, on the 

‘‘Notification of the International 

Application Number and of the 

International Filing Date’’ (Form PCT/

RO/105). 

Section 5.13: Section 5.13 is amended 

to include as a corresponding 

application for purposes of this section 

an international design application that 

has been filed in the United States. 

Thus, if no corresponding national, 

international design, or international 

application has been filed in the United 

States, the petition for license under 

§ 5.12(b) must also be accompanied by 

a legible copy of the material upon 

which a license is desired. 

Section 5.14: Section 5.14(c) is 

amended for clarity to provide that a 

copy of the application to be filed or 

exported abroad must be furnished with 

the petition under § 5.14 under the 

conditions set forth in § 5.14(c). The 

copy of the application required under 

§ 5.14(c) may be a copy of the 

international design application to be 

filed or exported abroad. 

Section 5.15: Section 5.15(a) 

introductory text and paragraphs (a)(3), 

(b), (d) and (e) are amended for 

consistency with the changes to 

§§ 5.1(b) and 5.11 as amended in this 

final rule. 

Section 11.10: Section 11.10(b)(3)(iii) 

is amended to include international 

design application in the definition of 

patent application for purposes of 

§ 11.10. 

Section 41.200(b): Section 41.200(b) is 

added to provide that any reference to 

35 U.S.C. 102 or 135 in this subpart 

refers to the statute in effect on March 

15, 2013, unless otherwise expressly 

indicated, and to provide that any 

reference to 35 U.S.C. 141 or 146 in this 


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subpart refers to the statute applicable 

to the involved application or patent. 

Section 41.200(b) is added for clarity 

consistent with the changes made under 

the first inventor to file provisions of the 

AIA. 

Section 41.201: The definition of 

‘‘constructive reduction to practice’’ is 

amended to provide that for a chain of 

patent applications to be continuous, 

each subsequent application must 

comply with the requirements of 35 

U.S.C. 119–121, 365, or 386. The 

amended definition accounts for 

priority under 35 U.S.C. 386 added by 

title 1 of the PTLIA as well as priority 

under 35 U.S.C. 119, 365(b), and 365(c). 

The definition of ‘‘threshold issue’’ is 

amended by changing the reference to 

35 U.S.C. 112(a) in paragraph (2)(ii) to 

35 U.S.C. 112, as the written description 

requirement under pre-AIA 35 U.S.C. 

112, first paragraph, may be applicable 

in certain cases. 

Comments and Responses to 

Comments: The Office published a 

notice of proposed rulemaking on 

November 29, 2013, proposing to 

change the rules of practice to 

implement title I of the PLTIA. See 

Changes To Implement the Hague 

Agreement Concerning International 

Registration of Industrial Designs, 78 FR 

71870 (Nov. 29, 2013). The Office 

received seven written submissions 

containing comments from intellectual 

property organizations, academia, a law 

firm, an individual patent practitioner, 

and the general public in response to 

this notice of proposed rulemaking. The 

summarized comments and the Office’s 

responses to those comments follow: 

Closed System 

Comment 1: Several comments 

requested that the Office clarify whether 

an international design application that 

designates the United States can be 

assigned to a person who is not entitled 

to file an international design 

application under the Hague Agreement. 

One of the comments further suggested 

that such clarification be made by 

amending certain rules affected by a 

limitation on assignment, in particular 

§ 1.46(c) (pertaining to a change in the 

applicant), §§ 3.21 and 3.24 (pertaining 

to assignments), and all rules pertaining 

to actions by the patent owner (e.g., 

§§ 1.172 and 1.510). Another comment 

suggested that if assignment is 

restricted, any patent granted on an 

international design application should 

include a notice to the public of the 

restriction. A further comment 

questioned whether any restriction in 

transfer of ownership, if applicable to 

international design applications, would 

also apply to continuing applications. 

Response: The PLTIA does not restrict 

assignment of international design 

applications designating the United 

States, or patents issuing thereon, to 

persons entitled to file an application 

under the Hague Agreement. 35 U.S.C. 

261 provides that ‘‘patents shall have 

the attributes of personal property,’’ that 

‘‘[a]pplications for patent, patents, or 

any interest therein, shall be assignable 

in law by an instrument in writing’’ and 

that ‘‘[t]he applicant, patentee, or his 

assigns or legal representatives may in 

like manner grant and convey an 

exclusive right under his application for 

patent, or patents, to the whole or any 

specified part of the United States.’’ See 

also GAIA Techs., Inc. v. Reconversion 

Techs., Inc., 93 F.3d 774, 777–80 (Fed. 

Cir. 1996), as amended on reh’g, 104 

F.3d 1296 (Fed. Cir. 1996) (‘‘Patents 

. . ., like other personal property, may 

be conveyed from the inventor . . . to 

others. . . .’’). Title I of the PLTIA did 

not change 35 U.S.C. 261 or otherwise 

restrict to whom an international design 

application or patent issuing thereon 

may be assigned. 

The fact that the Hague Agreement is 

a closed system, in that only persons 

who meet certain criteria may file an 

international design application, does 

not restrict the ability to transfer 

ownership in the application (or 

resulting patent) to a person not entitled 

to file under the system. Similar to 

Hague applicants, applicants in 

international applications filed under 

the PCT must be nationals or residents 

of PCT Contracting States in order to file 

international applications. See PCT 

Article 9. Also, U.S. national law does 

not restrict the ability of PCT applicants 

to assign PCT applications designating 

the United States to persons not entitled 

to file applications under the PCT. See, 

e.g., § 3.1 (defining ‘‘application’’ for 

purposes of the rules governing 

assignments to broadly include 

‘‘international [PCT] applications that 

designate the United States’’); § 3.21 

(specifying only an identification 

requirement for assignments relating to 

international patent applications that 

designate the United States). In contrast, 

applicants filing for trademark 

protection under the Madrid Protocol 

are barred from assigning an extension 

of protection to a person who is not 

entitled to file the application under the 

Madrid Protocol (see, e.g., § 7.22 

(providing that Section 10 of the 

Lanham Act and 37 CFR part 3 are not 

applicable to assignments or restrictions 

of international registrations)). This is 

because the Madrid Protocol 

Implementation Act of 2002, unlike the 

PLTIA and legislation implementing the 

PCT, expressly restricts assignment. See 

15 U.S.C. 1141l (‘‘An extension of 

protection may be assigned, together 

with the goodwill associated with the 

mark, only to a person who is a national 

of, is domiciled in, or has a bona fide 

and effective industrial or commercial 

establishment either in a country that is 

a Contracting Party or in a country that 

is a member of an intergovernmental 

organization that is a Contracting 

Party.’’). 

Furthermore, Article 16 of the Hague 

Agreement provides only that the 

International Bureau shall record 

changes in ownership of the 

international registration in the 

International Register, provided that the 

new owner is entitled to file an 

international application under Article 

3. See Article 16(1)(i). Recording 

changes in ownership by the 

International Bureau in the International 

Register is a separate issue from whether 

an international design application can 

be assigned or otherwise transferred 

under national law. The Hague 

Agreement does not govern the validity 

of ownership changes. See WIPO, Guide 

to the International Registration of 

Industrial Designs under the Hague 

Agreement, B.II.46, ¶ 13.04 (Jan. 2014) 

(‘‘Furthermore, the issue of the 

recording of a change in ownership in 

the International Register must be 

distinguished from that of the validity of 

such change in ownership. The Hague 

Agreement does not set out, for 

example, the conditions to be met 

regarding the validity of a deed of 

assignment relating to an international 

registration. These conditions are, and 

remain, governed exclusively by the 

relevant domestic legislation, and may 

therefore vary from one Contracting 

Party to another (e.g., the need for 

execution of a document in writing 

certifying the assignment, proof of the 

age of the parties in order to assess their 

legal entitlement, etc.).’’). See also id. at 

¶ 13.05 (‘‘The Hague Agreement 

provides only for the requirements to be 

complied with in order to validly record 

a change in ownership in the 

International Register.’’). 

One comment suggested amending 

§ 1.46(c) to clarify whether an 

international design application 

designating the United States can be 

amended to name an applicant who is 

not entitled to file under the Hague 

Agreement. The Office does not deem 

clarification necessary. Who qualifies to 

be an applicant for a designated 

Contracting Party is a matter of national 

law. The PLTIA does not expressly state 

who is qualified to be an applicant for 

an international design application 

designating the United States, but 


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otherwise indicates that a qualified 

applicant does not differ from a person 

qualified to be an applicant for a 

national design application under 35 

U.S.C. 171–73. See section 101(a) of the 

PLTIA (adding 35 U.S.C. 389(b) (‘‘All 

questions of substance and, unless 

otherwise required by the treaty and 

Regulations, procedures regarding an 

international design application 

designating the United States shall be 

determined as in the case of 

applications filed under chapter 16.’’); 

35 U.S.C. 382(c) (‘‘Except as otherwise 

provided in this chapter, the provisions 

of chapter 16 shall apply.’’); and 35 

U.S.C. 383 (‘‘In addition to any 

requirements pursuant to chapter 16, 

the international design application 

shall contain . . . .’’)). 126 Stat. at 1528– 

30. Pursuant to 35 U.S.C. 118, as 

amended under the AIA, an assignee 

may be an applicant in a patent 

application. As explained above, the 

assignee of an international design 

application designating the United 

States may be a person not entitled to 

file an application under the Hague 

Agreement. In accordance with 35 

U.S.C. 118, such person may be named 

as an applicant in the international 

design application pursuant to the 

provisions of § 1.46(c). This is also 

consistent with applicant changes made 

pursuant to § 1.46(c) in the U.S. national 

phase of PCT international applications. 

Because the Office does not consider the 

PLTIA to prohibit assigning an 

international design application 

designating the United States to a 

person not entitled to file an application 

under the Hague system, the rules do 

not provide for any restriction on 

assignment. 

Comment 2: One comment suggested 

that a U.S. patent issuing from an 

international design application be 

identified as an ‘‘international design 

patent’’ to clarify that rights are subject 

to the Hague Agreement, with its closed 

system features, for example, only 

membership participation, assignment 

of International Registration rights, and 

renewal features. 

Response: A U.S. patent issued on an 

international design application will 

include information on the front page 

that will indicate that the patent issued 

on an international design application. 

But identifying a U.S. patent issued on 

an international design application as 

an ‘‘international design patent’’ may 

lead to confusion among the public and 

others as to the scope of protection 

arising under the patent. A patent 

issued on an international design 

application designating the United 

States has the force and effect of a 

patent issued on an application filed 

under 35 U.S.C. chapter 16. See 35 

U.S.C. 389(d). 

Continuing Applications, Continued 

Prosecution Applications, and 

Converted Applications 

Comment 3: One comment requested 

that the Office provide for continued 

prosecution applications (CPAs) in 

international design applications. The 

comment asserts that CPAs provide for 

quick resolution of remaining issues in 

prosecution, have lower filing fees than 

continuation applications, provide 

provisional rights, and are required 

under the PLTIA. Alternatively, the 

comment requests that the Office either 

expedite or prioritize examination of a 

continuation application claiming 

priority to an international design 

application in limited circumstances, or 

provide a conditional petition 

procedure whereby a petition could be 

filed after allowance that would permit 

consideration of an information 

disclosure statement or other matter 

after allowance and the petition would 

constitute the filing of a continuation 

application if the examiner determines 

that new issues are raised. 

Response: The final rules do not 

provide for the filing of a CPA in an 

international design application. The 

Office created CPAs for all applications 

following the change in patent term for 

utility applications from 17 years from 

issuance to 20 years from filing. The 

primary reason for creating CPAs was to 

minimize any reduction in patent term 

for continuing utility applications 

caused by new application processing 

by eliminating the need to assign the 

continuing application a new 

application number and filing date. See 

1996 Changes to Patent Practice and 

Procedure, 61 FR 49820, 49825 (Sept. 

23, 1996). A CPA is a streamlined 

continuation or divisional application 

under 35 U.S.C. 120 whose filing date 

is the date on which the request for a 

CPA is filed. See § 1.53(d)(2) (providing 

that the filing date of a continued 

prosecution application is the date on 

which a request on a separate paper for 

an application under this paragraph is 

filed). A request for a CPA constitutes a 

request to expressly abandon the earlier 

application and to use the file jacket and 

contents of the prior application. See 

§ 1.53(d)(2)(iv), (v). 

Subsequently, in the American 

Inventors Protection Act, Congress 

added request for continued 

examination (RCE) practice for utility 

and plant applications, while 

simultaneously providing for 

publication of applications 18 months 

from filing and provisional rights from 

the date of publication. See Request for 

Continued Examination Practice and 

Changes to Provisional Application 

Practice, 65 FR 50092–101 (Aug. 16, 

2000); 35 U.S.C. 132(b). Since an RCE is 

not a new application that is separately 

published, the provisional rights period 

continues from the original publication 

date. See 35 U.S.C. 154(d)(1). RCE 

practice was not extended to U.S. design 

applications, which are not published. 

See 35 U.S.C. 132 ed. note. The Office 

eventually eliminated CPA practice for 

all applications except U.S. design 

applications. See Elimination of 

Continued Prosecution Application 

Practice as to Utility and Plant Patent 

Applications, 68 FR 32376–81 (May 30, 

2003). 

A patent issuing on a CPA would not 

be entitled to provisional rights based 

on the prior publication of the 

international design application under 

the treaty, as asserted in the comment. 

Pursuant to 35 U.S.C. 154(d)(1), 

provisional rights begin on ‘‘the date of 

publication of the application for such 

patent’’ under 35 U.S.C. 122(b). As 

previously explained, a CPA is a 

continuation or divisional application of 

the prior application. See § 1.53(d)(1) 

(providing that a continuation or 

divisional application (but not a 

continuation-in-part) of a prior 

nonprovisional application may be filed 

as a continued prosecution application 

under the paragraph); § 1.78(d)(4) 

(providing that the request for a 

continued prosecution application 

under § 1.53(d) is the specific reference 

required by 35 U.S.C. 120 to the priorfiled application). The filing of a CPA 

operates as an express abandonment of 

the prior application as of the filing date 

of the CPA request. See § 1.53(d)(2)(v) 

(providing that a CPA is a request to 

expressly abandon the prior application 

as of the filing date of the request for a 

CPA). Accordingly, a patent issuing on 

a CPA obtains provisional rights only 

from the date of its publication, not 

from the date of publication of the 

earlier application. U.S. design 

applications are not published and do 

not qualify for provisional rights. See 35 

U.S.C. 122(b)(2)(A)(iv); 35 U.S.C. 

154(d)(1). Thus, even if the filing of a 

CPA from an international design 

application were permitted, a design 

patent issuing from the CPA would not 

be entitled to provisional rights because 

the CPA is not published. While an RCE 

is not a new application, and thus 

permits extension of the provisional 

rights period from the date of the earlier 

publication, RCE practice is not 

available for U.S. design applications. 

A CPA of an earlier U.S. design 

application is possible because the prior 

application has already been reviewed 


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by the Office for compliance with the 

same statutory and regulatory 

requirements applicable to the CPA, 

thus eliminating the need for a separate 

review of the CPA. See § 1.53(d)(1)(ii) 

(providing that the prior nonprovisional 

application is a design application that 

is complete as defined by § 1.51(b)). No 

such efficiencies exist so as to permit 

the filing of a CPA from an international 

design application. The Office will not 

be performing a formalities review of 

international design applications 

designating the United States prior to 

examination. Instead, the International 

Bureau will review international design 

applications for compliance with the 

applicable treaty requirements. A CPA 

is a U.S. design application under 35 

U.S.C. chapter 16, not an international 

design application under the Hague 

Agreement. Consequently, a CPA is 

subject to different statutory and 

regulatory requirements than 

international design applications. 

Compare 35 U.S.C. 171–173 with 35 

U.S.C. 381–390; compare 37 CFR 1.151– 

1.155 with final rules §§ 1.1001–1.1071. 

For example, an international design 

application and CPA are subject to 

different filing date requirements 

(compare 35 U.S.C. 171(c) with 35 

U.S.C. 384) and different content 

requirements (e.g., regular U.S. design 

applications are required under § 1.153 

to include a title; no such formal 

requirement applies to international 

design applications). In addition, as 

discussed above, an international design 

application is published and entitles the 

holder to provisional rights, whereas a 

CPA does not. Compare 35 U.S.C. 390 

with 35 U.S.C. 122(b)(2)(A)(iv); see also 

35 U.S.C. 154(d). Given these differing 

requirements, the same opportunity for 

streamlined continuation practice does 

not exist. 

Furthermore, international design 

applications filed with the Office will be 

assigned a U.S. application number 

having a series code unique to 

international design applications to 

distinguish such applications from other 

applications filed with the Office. 

Allowing a design application filed 

under 35 U.S.C. chapter 16 to use an 

application number associated with 

international design applications may 

lead to confusion and errors in 

processing the application under the 

different requirements applicable to 

international design applications and 

applications filed under 35 U.S.C. 

chapter 16. In addition, use of the same 

application number for both the CPA 

and the international design application 

would significantly complicate the 

changes needed to the Office’s IT 

systems to support the small number of 

applications that would be affected. For 

example, the notice of allowance, 

processing of issue fee payments, and 

formal objections that may be applicable 

under examination differ between 

international design applications and 

design applications filed under 35 

U.S.C. chapter 16. 

The fees associated with the filing of 

a CPA are not lower than the fees 

associated with the filing of a 

continuing design application, as stated 

in the comment. Rather, the fees are the 

same. See § 1.53(d)(3) (providing that 

the filing fee, search fee, and 

examination fee for a continued 

prosecution application filed under this 

paragraph are the basic filing fee as set 

forth in § 1.16(b), the search fee as set 

forth in § 1.16(l), and the examination 

fee as set forth in § 1.16(p)). 

The comment asserts that not 

permitting CPAs appears to be contrary 

to the explicit language and intent of 35 

U.S.C. chapter 38 and the other portions 

of the proposed rules. The comment 

points to, inter alia, 35 U.S.C. 382(c), 35 

U.S.C. 384(a), and the proposed rules 

with respect to examination and general 

filing requirements, which are modeled 

after the current treatment of 35 U.S.C. 

chapter 16 applications before the 

Office. The PLTIA, including the 

provisions cited to in the comment, 

generally provides for applicability of 

the requirements of 35 U.S.C. chapter 16 

to international design applications 

designating the United States except 

where otherwise provided under title 

35, United States Code, or required by 

the Hague Agreement or Hague 

Agreement Regulations. CPA practice, 

however, is not a requirement of 35 

U.S.C. chapter 16. Rather, as previously 

explained, CPAs were created by 

regulation as a streamlined continuation 

practice under 35 U.S.C. 120. A CPA is 

a U.S. application and is just like any 

other design application filed under 35 

U.S.C. chapter 16. Not permitting CPAs 

claiming priority to international design 

applications is not inconsistent with 

any provision of 35 U.S.C. chapter 38. 

The Office has not adopted, as 

recommended by the commentor, rules 

to prioritize or expedite examination of 

a continuation application of an 

international design application in 

limited circumstances. Prioritizing or 

expediting examination of continuation 

applications would present an 

administrative burden for the Office in 

identifying those continuation 

applications that qualify for expedited 

treatment. Furthermore, Office records 

show that CPAs are currently filed in 

less than 3% of design applications. 

Also, the number of international design 

applications is anticipated to be, at least 

initially, a small fraction of total design 

applications filed with the Office. In 

2013, 2,990 international design 

applications were filed via the Hague 

system, whereas 35,077 design 

applications were filed with the Office 

under 35 U.S.C. chapter 16. The Office 

is reluctant to develop new and 

complicated procedures at this time to 

accommodate a handful of applications, 

especially since the procedures could 

negatively impact administrative 

efficiency in processing all continuing 

applications filed with the Office. 

Applicants desiring expedited 

examination in continuation 

applications may utilize the ‘‘rocket 

docket’’ procedure pursuant to § 1.155. 

The Office also has not adopted rules 

to provide for a conditional petition 

procedure to allow for consideration of 

an information disclosure statement (or 

other issue) after allowance wherein the 

petition would constitute the filing of a 

continuation application if the examiner 

determines a new issue is raised. 

Section 1.97 currently provides for 

consideration of an information 

disclosure statement filed after 

allowance but on or before payment of 

the issue fee, when accompanied by the 

fee set forth in § 1.17(p) and statement 

required under § 1.97(e). See § 1.97(d). 

Office records indicate that in 2012, 

only 14 CPAs were filed with an 

information disclosure statement on or 

after the date of payment of the issue 

fee. Further, this number corresponds to 

the larger pool of regular design 

applications and would be expected to 

be even less for the smaller pool of 

international design applications. As 

with the suggestion to expedite 

continuations, the Office is hesitant to 

develop new and complicated 

procedures at this time to account for a 

nominal number of potentially affected 

international design applications, as this 

may negatively impact administrative 

efficiency in processing all design 

applications. The Office intends to 

reconsider the need for further 

procedures after the Office gains more 

experience in processing international 

design applications and as the number 

of filings increases. 

Comment 4: One comment questioned 

whether the filing of a divisional 

application of an international design 

application (or electing not to file a 

divisional application) will have a ‘‘file 

wrapper estoppel’’ impact on 

interpretation of the claim of a patent on 

the international design application, 

given the recent Federal Circuit decision 

in the Pacific Coast Marine Windshields 

Ltd. v. Malibu Boats, LLC, No. 13–1199 

(Fed. Cir. Jan. 8, 2014), holding that 


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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 nonpractitioners are based outside the 

United States. Accordingly, the 

comment recommends the promotion of 

high standards of conduct for 

practitioners and non-practitioners in 

all jurisdictions. One comment 

requested the Office to be mindful of 

new scams that may arise to exploit the 

Hague Agreement and to work with the 

International Bureau and Federal Trade 

Commission to address strategies for 

stopping such scams if and when they 

arise. 

Response: The Office appreciates the 

concerns raised in the comment. The 

Office notes that a party presenting a 

paper to the Office, whether a 

practitioner or non-practitioner, 

certifies, among other things, that 

statements made are true and formed 

after an inquiry reasonable under the 

circumstances. See § 11.18(b). The 

Office maintains jurisdiction over 

persons not registered or recognized to 

practice before the Office who provide 

or offer to provide any legal services 

before the Office. See § 11.19(a). Such 

jurisdiction extends to practice that may 

include presentation to the Office or any 

of its officers or employees relating to a 

client’s rights, privileges, duties, or 

responsibilities under the laws or 

regulations administered by the Office 

for the grant of a patent and includes 

preparing necessary documents in 

contemplation of filing the documents 

with the Office, corresponding and 

communicating with the Office, and 

representing a client through documents 

or at interviews, hearings, and meetings, 

as well as communicating with and 

advising a client concerning matters 

pending or contemplated to be 

presented before the Office. See 

§ 11.5(b). 

The Office recognizes that the 

provisions of 37 CFR part 11 may not 

serve to deter all improper activity or 

conduct in connection with applications 

filed under the Hague Agreement. The 

Office will endeavor to explore with the 

International Bureau steps that may be 

taken to address the concerns raised in 

the comment and to promote high 

standards of conduct for practitioners 

and non-practitioners in all 

jurisdictions. 

The Office also notes that it maintains 

a Scam Prevention page on its Web site 

(http://www.uspto.gov/inventors/scam_

prevention/index.jsp), which contains 

relevant information regarding scam 

prevention and includes links to the 

Federal Trade Commission Web site 

where individuals may find information 

regarding consumer protection 

resources. Furthermore, under the 

American Inventors Protection Act of 

1999, the Office does provide, through 

this Web site, a public forum for the 

publication of complaints concerning 

invention promoters/promotion firms. 

In addition, the Web site identifies 

known scams concerning non-Office 

solicitations. Warnings of scam 

solicitations have also been published 

by the International Bureau in 

connection with international 

applications filed under the Patent 

Cooperation Treaty. See, e.g., WIPO, 

Warning: Requests for Payment of Fees, 

http://www.wipo.int/pct/en/warning/

pct_warning.html. 

Comment 6: One comment questioned 

whether the duty of disclosure under 

§ 1.56 is applicable to non-practitioners 

and the applicants they represent who 

obtain U.S. design patents on 

international design applications 

through dealings exclusively with the 

International Bureau. 

Response: Section 1.56(a) provides 

that each individual associated with the 

filing and prosecution of a patent 

application has a duty of candor and 

good faith in dealing with the Office, 

which includes a duty to disclose to the 

Office all information known to that 

individual to be material to 

patentability. Section 1.56(c) further 

provides that individuals associated 

with the filing or prosecution of a patent 

application for purposes of § 1.56 are: 

each inventor named in the application; 

each attorney or agent who prepares or 

prosecutes the application; and every 

other person who is substantively 

involved in the preparation or 

prosecution of the application and who 

is associated with the inventor, the 

applicant, an assignee, or anyone to 

whom there is an obligation to assign 

the application. 

An international design application 

designating the United States has the 

effect of a U.S. patent application and 

thus is subject to § 1.56. See 35 U.S.C. 

385 (‘‘An international design 

application designating the United 

States shall have the effect, for all 

purposes, from its filing date 

determined in accordance with section 

384, of an application for patent filed in 

the Patent and Trademark Office 

pursuant to chapter 16.’’). See also 35 

U.S.C. 389(b) (‘‘All questions of 

substance and, unless otherwise 

required by the treaty and Regulations, 

procedures regarding an international 

design application designating the 

United States shall be determined as in 

the case of applications filed under 

chapter 16.’’). Thus, pursuant to 

§ 1.56(c), non-practitioners who are 

substantively involved in the 

preparation or prosecution of an 

international design application 

designating the United States and who 

are associated with the inventor, the 

applicant, an assignee, or anyone to 

whom there is an obligation to assign 

the application, have a duty of 

disclosure under § 1.56. The duty under 

§ 1.56 does not apply to applicants per 

se, as an applicant may be a legal entity 

and thus not an ‘‘individual’’ as 

required under § 1.56(a), but the duty 

does apply to inventors (who may be 

applicants) and to every person who is 


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substantively involved in the 

preparation or prosecution of the 

application and who is associated with 

the inventor, the applicant, an assignee, 

or anyone to whom there is an 

obligation to assign the application. See 

also MPEP 2001.01 (‘‘The word ‘with’ 

appears before ‘the assignee’ and 

‘anyone to whom there is an obligation 

to assign’ to make clear that the duty 

applies only to individuals, not to 

organizations. For instance, the duty of 

disclosure would not apply to a 

corporation or institution as such. 

However, it would apply to individuals 

within the corporation or institution 

who were substantively involved in the 

preparation or prosecution of the 

application, and actions by such 

individuals may affect the rights of the 

corporation or institution.’’). 

Examination 

Comment 7: One comment suggested 

that a rule should be added to confirm 

the Office’s ability to continue to 

prosecute an international design 

application after the Office sends a 

notification of refusal, for example, 

where new prior art is discovered after 

the notification of refusal is sent. 

Response: The Office agrees that 

prosecution may continue in an 

international design application after 

the Office sends a notification of refusal 

and that the Office may, where 

appropriate, apply newly discovered 

prior art to reject the claimed invention 

in a subsequent Office action. 

International design applications that 

designate the United States are required 

to be examined pursuant to title 35, 

United States Code. See 35 U.S.C. 

389(a); § 1.1062(a). Reexamination of the 

application, if applicant persists in his 

or her claim for a patent after receiving 

notice of a rejection, is provided by 

statute. See 35 U.S.C. 132. Further, a 

patent shall issue only if on 

examination it appears that the 

applicant is entitled to a patent under 

the law. See 35 U.S.C. 131. Examination 

procedures and rules applicable to 

domestic applications apply to 

international design applications that 

designate the United States, except as 

otherwise provided in the rules or 

required by the Hague Agreement 

Articles or Regulations. See 35 U.S.C. 

389(b); § 1.1061. Thus, for example, any 

reply under § 1.111 to a notification of 

refusal rejecting the claimed design will 

be considered and the application again 

examined, and the applicant notified in 

an Office action which, if appropriate, 

may be made final. See §§ 1.112, 1.113. 

Accordingly, no rule changes are 

necessary. 

Comment 8: One comment questioned 

whether consideration has been given as 

to whether an improper broadening of 

the disclosure would result where 

formal drawings are provided to the 

Office in compliance with U.S. practice 

that do not include a portion of the 

design as shown in a photograph (or 

other depiction) that was originally filed 

in the international design application, 

or show a portion of the photograph 

content in dotted lines. The comment 

also asked whether guidelines will be 

forthcoming. 

Response: International design 

applications designating the United 

States are subject to the same 

substantive conditions for patentability 

as regular U.S. applications, including 

the written description requirement 

under 35 U.S.C. 112(a). The Office will 

consider whether an amendment to the 

specification, drawings, or claim is 

improper under 35 U.S.C. 112(a) or 132 

for reasons of new matter in accordance 

with the MPEP 1504.04 (‘‘An 

amendment to the claim which has no 

antecedent basis in the specification 

and/or drawings as originally filed 

introduces new matter because that 

subject matter is not described in the 

application as originally filed. The 

claim must be rejected under 35 U.S.C. 

112(a) (or for applications [filed] prior to 

September 16, 2012, 35 U.S.C. 112, first 

paragraph). An amendment to the 

disclosure not affecting the claim (such 

as environment in the title or in broken 

lines in the drawings), which has no 

antecedent basis in the application as 

originally filed, must be objected to 

under 35 U.S.C. 132 as lacking support 

in the application as originally filed and 

a requirement must be made to cancel 

the new matter.’’). The Office will 

consider whether a particular design 

application, including any amended 

drawings, meets the written description 

requirements on a case-by-case basis. 

The Office recently hosted a 

roundtable discussion regarding 

application of the written description 

requirement to amended or continuation 

design claims. See Request for 

Comments and Notice of Roundtable 

Event on the Written Description 

Requirement for Design Applications, 79 

FR 7171 (Feb. 6, 2014). The notice and 

roundtable sought public input 

regarding specific instances where an 

amendment in a design application may 

raise a question as to whether the 

applicant had possession of the newly 

claimed design at the time of filing the 

original application. The Office will 

consider the written comments received 

in response to that notice and 

roundtable and will evaluate when 

drafting any further guidance. 

Comment 9: One comment questioned 

what operative dates will be used for 

response times for communications 

transmitted to the International Bureau 

for forwarding to the applicant. 

Response: Communications 

transmitted by the Office to the 

International Bureau for forwarding to 

the applicant will indicate a time period 

for reply, where a reply to the 

communication is required by the 

Office. See, e.g., § 1.1063(a)(4). 

Comment 10: One comment requested 

that the Office clarify that the rules 

applicable to design applications filed 

under chapter 16 apply to design 

applications that are converted from 

international design applications 

pursuant to § 1.1052. 

Response: This final rule revises 

§ 1.1052 to include a new paragraph (d) 

to clarify that an international design 

application converted under § 1.1052 is 

subject to the regulations applicable to 

a design application filed under 35 

U.S.C. chapter 16. 

Comment 11: Several comments 

requested that the Office clarify that 

continuing applications, including 

divisional applications, that claim 

benefit to an international design 

application under § 1.78 are subject to 

the rules governing domestic national 

applications. 

Response: A continuing application 

that claims benefit under § 1.78 to an 

international design application may be 

filed as a national application or as an 

international design application. See 35 

U.S.C. 386(c). A continuing design 

application, including a divisional 

design application, filed under 35 

U.S.C. chapter 16 is subject to the rules 

governing domestic national design 

applications, e.g., §§ 1.151–1.155. In 

contrast, a continuing application filed 

as an international design application is 

subject to the requirements of the Hague 

Agreement and the rules applicable to 

international design applications. 

Comment 12: One comment requested 

that the Office notify the applicant of 

the need to file a certified copy of a 

foreign priority document required 

under § 1.55 and the time limit to 

furnish the certified copy. The comment 

indicated that many applicants may not 

have retained U.S. counsel and may be 

unaware of the requirement to provide 

the certified copy prior to payment of 

the issue fee. 

Response: Where an application 

includes a priority claim under § 1.55 

but the required certified copy of the 

priority document has not been filed, 

examination procedures provide for 

applicant notification that the certified 

copy has not been filed as required by 

§ 1.55. See MPEP 214.03, 1302.06. In 


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addition, the requirement in former 

§ 1.55(g) for payment of the processing 

fee set forth in § 1.17(i) where the 

certified copy is filed after the date the 

issue fee is paid has been eliminated 

from § 1.55 in this final rule. 

Furthermore, § 1.55(g) in this final rule 

sets forth a petition procedure to permit 

the filing of the certified copy in a 

patented design application upon a 

showing of good and sufficient cause for 

the delay and petition fee set forth in 

§ 1.17(g). The petition procedure in 

§ 1.55(g) corresponds to the petition 

procedure under § 1.55(f) applicable to 

utility applications. 

Comment 13: One comment requested 

that a continuing application from an 

international design application not be 

subject to the petition requirement 

under § 1.84(a)(2) to accept color 

drawings and/or photographs, as the 

drawings and/or photographs would 

have already been accepted in the 

international design application. The 

comment further requests that the Office 

consider eliminating the petition 

requirement under § 1.84(a)(2) 

altogether. 

Response: This comment has been 

adopted as to design applications. 

Section 1.84(a)(2) has been amended to 

remove the requirement for a petition in 

order for the Office to accept color 

drawings or photographs in design 

applications. Applicants will still be 

required to include the reference to the 

color drawings or photographs in the 

specification as set forth in 

§ 1.84(a)(2)(iii) to provide notice in the 

patent of the submission of color 

drawings or photographs. Because there 

is rarely a need to file color drawings or 

photographs in utility applications, and 

there are operational concerns with 

permitting color drawings or 

photographs in utility applications, the 

Office has not eliminated the petition 

requirement for color drawings or 

photographs in utility applications at 

this time but may reconsider the matter 

at a later date. 

International Fees 

Comment 14: Several comments 

requested that the Office quickly 

transfer international fees paid through 

the Office to the International Bureau to 

minimize the risk of currency 

fluctuations. One comment further 

requested that the Office receive sameday confirmation of fees received by 

WIPO in Swiss currency, indicating a 

concern that fee deficiency may result 

in a delayed registration date and, 

consequently, a delayed filing date in 

the United States under § 1.1023. 

Response: The Office intends to 

transfer international fees to the 

International Bureau as quickly as 

possible. The Office plans to transmit 

international design application fees 

once the Office receives the 

international design application, the 

applicant has paid the Office the 

transmittal fee, and the Office has 

transmitted the international design 

application to the International Bureau. 

The Office does not transmit fees 

directly to the International Bureau in 

Swiss currency. Rather, such fees are 

forwarded to the Department of 

Treasury for transmission to the 

International Bureau. Accordingly, the 

Office cannot receive same-day 

confirmation of fees received by the 

International Bureau in Swiss currency. 

Applicants may establish a debit 

account directly with the International 

Bureau (see Response to Comment 15) 

and receive confirmation upon 

electronic payment of fees. 

Alternatively, applicants may simply 

wait for the invitation from the 

International Bureau and pay the 

international fees directly to the 

International Bureau. The international 

registration date is not dependent upon 

the date of payment of the prescribed 

fees. See Article 10(2); Rule 14(2). 

Accordingly, the later payment of a fee 

deficiency will not result in a later 

international registration date and, 

consequently, will not affect the filing 

date in the United States under § 1.1023. 

Comment 15: One comment requested 

that applicants be advised as to any 

options pertaining to a deposit account 

with WIPO to account for fee 

discrepancies. 

Response: Section 1.1031(d)(1) 

provides for payment of international 

fees directly to the International Bureau 

and references Administrative 

Instruction 801, which sets forth the 

various methods of payment accepted 

by the International Bureau, including 

payment by deposit account established 

with the International Bureau. In 

addition, the international design 

application DM/1 form includes a fee 

payment section that informs applicants 

of the option to use a deposit account 

established with the International 

Bureau. 

Comment 16: One comment requested 

that the Office prompt applicants filing 

international design applications 

through the Office with a link to pay 

fees directly to WIPO to avoid fee 

discrepancies. 

Response: The system used by the 

International Bureau to process 

international design applications and 

applicable fees does not currently have 

the capability to electronically accept 

fees except where applicants file the 

application directly with the 

International Bureau through its e-filing 

interface. The Office will endeavor to 

work with the International Bureau to 

provide for such functionality in the 

future. 

Comment 17: One comment requested 

that the Office amend § 1.1031 to 

include a provision that international 

registration renewal fees are not 

required to maintain a U.S. design 

patent in force. In addition, to avoid 

public confusion and detrimental 

reliance by giving the impression that a 

U.S. design patent may have lapsed or 

expired if the registration is not 

renewed, the comment requests that the 

Office encourage the International 

Bureau to adjust its current Certificate of 

Renewal and renewal system to reflect 

U.S. practice. 

Response: This comment is adopted. 

The final rule revises § 1.1031 to 

include a new paragraph (e) to provide 

that payment of the fees referred to in 

Article 17 and Rule 24 for renewing an 

international registration (‘‘renewal 

fees’’) is not required to maintain a U.S. 

patent issuing on an international 

design application in force. The Office 

appreciates the concerns with respect to 

the current Certificate of Renewal 

process as it relates to U.S. practice and 

will endeavor to work with the 

International Bureau on this matter. 

Comment 18: One comment suggests 

that the Office provide a new rule 

expressly stating that the International 

Bureau handles international 

registration renewal fees and that the 

Office will not process those fees. 

Response: This comment is adopted. 

The final rule revises § 1.1031 to 

include a new paragraph (e) to provide 

that renewal fees, if required, must be 

submitted directly to the International 

Bureau and that any renewal fee 

submitted to the Office will not be 

transmitted to the International Bureau. 

Any renewal fee paid to the Office will 

be refunded. 

Miscellaneous 

Comment 19: One comment requested 

the Office to modify proposed rule 

§ 1.1027 by moving the second sentence 

concerning the prohibition on 

deferment of publication to a new rule 

so that the prohibition is made more 

prominent. The comment also requested 

that the Office promptly inform 

applicants of improper requests for 

deferment of publication. 

Response: This final rule revises 

§ 1.1027 as suggested and adds a new 

rule § 1.1028 (‘‘Deferment of 

publication’’) to make more prominent 

that a request for deferment of 

publication is not permitted in an 

international design application that 


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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 § 1.1028. 

Where the United States is designated 

(and thus there is no deferment of 

publication), the Office will receive the 

published international registration 

approximately six months from the date 

of international registration, or 

immediately after international 

registration where immediate 

publication was requested. See Rule 

17(1). At the present time, the Office 

does not plan to obtain a copy of the 

international registration from the 

International Bureau prior to 

publication pursuant to Article 10(5), as 

the Office is prohibited from sending a 

notification of refusal prior to 

publication of the international 

registration, thus limiting the usefulness 

in obtaining a copy of the international 

registration prior to publication. With 

regard to use of an unpublished 

international registration as a 

‘‘patented’’ invention for purposes of 35 

U.S.C. 102(a), a secret patent is not 

available as prior art under 35 U.S.C. 

102(a) until it is available to the public. 

See In re Carlson, 983 F.2d 1032, 1037 

(Fed. Cir. 1992); MPEP 2126; 

Examination Guidelines for 

Implementing the First-Inventor-to-File 

Provisions of the Leahy-Smith America 

Invents Act, 77 FR 43759, 43764 (July 

26, 2012) (‘‘The phrase ‘patented’ in 

AIA 35 U.S.C. 102(a)(1) has the same 

meaning as ‘patented’ in pre-AIA 35 

U.S.C. 102(a) and (b).’’). 

Comment 21: One comment 

complimented the Office on its road 

show educational programs in general, 

and particularly the Forum that was 

held January 14, 2014, to discuss the 

proposed rule changes to implement the 

Hague Agreement. The comment 

suggested that the Office should have 

more frequent road shows, education 

programs, and webinars concerning the 

Hague Agreement. 

Response: The Office will endeavor to 

have additional public outreach 

concerning implementation of the 

Hague Agreement. 

Comment 22: One comment requested 

that the Office provide a rule that states 

that no design rights under an 

international design application that 

designates the United States exist until 

a U.S. design patent actually issues from 

the international design application. 

The comment asserts that there could be 

instances where a patent does not issue 

within the period set forth in Rule 18(c), 

or a refusal is inadvertently not sent 

during the refusal period, raising an 

inconsistency between the lack of 

issuance of a U.S. design patent and 

Article 14(2)(a). 

Response: This final rule adds 

§ 1.1071 to clarify that a grant of 

protection for an industrial design that 

is the subject of an international 

registration shall only arise in the 

United States through the issuance of a 

patent pursuant to 35 U.S.C. 389(d) or 

171, and in accordance with 35 U.S.C. 

153. As explained in the notice of 

proposed rulemaking (see 78 FR 71870, 

71886) and in this final rule, the Office 

does not regard the failure to send a 

notification of refusal within the period 

referenced in § 1.1062(b) to confer 

patent rights or other effect under 

Article 14(2). The PLTIA provides for 

enforceable rights upon issuance of a 

patent. See 35 U.S.C. 389(d); 35 U.S.C. 

385. 

Comment 23: Two comments 

suggested that U.S. law should be 

amended to provide for publication of 

design applications filed under 35 

U.S.C. chapter 16 and that patent term 

for design patents should be 20 years 

from filing rather than 15 years from 

issuance. 

Response: As the exclusion from 

publication of design applications filed 

under 35 U.S.C. chapter 16 and patent 

term are statutory provisions (see 35 

U.S.C. 122(b)(2)(A)(iv); 35 U.S.C. 173), 

any changes would require legislation. 

Rulemaking Considerations 

A. Administrative Procedure Act: This 

rulemaking implements title I of the 

PLTIA and the Hague Agreement. The 

changes in this rulemaking (except for 

the setting of some fees) establish 

procedures for the filing, processing, 

and examination of international design 

applications and revise existing rules of 

practice to account for international 

design applications in accordance with 

title I of the PLTIA and to ensure that 

the rules of practice are consistent with 

the Hague Agreement. In addition, as to 

the applicability dates for certain 

provisions in existing rules, this final 

rule makes those applicability dates 

more accessible by stating them directly 

in the body of those rules. Therefore, the 

changes in this rulemaking involve rules 

of agency practice and procedure, and/ 

or interpretive rules. See Bachow 

Commc’ns, Inc. v. FCC, 237 F.3d 683, 

690 (D.C. Cir. 2001) (Rules governing an 

application process are procedural 

under the Administrative Procedure 

Act.); Inova Alexandria Hosp. v. 

Shalala, 244 F.3d 342, 350 (4th Cir. 

2001) (Rules for handling appeals are 

procedural where they do not change 

the substantive standard for reviewing 

claims.); Nat’l Org. of Veterans’ 

Advocates v. Sec’y of Veterans Affairs, 

260 F.3d 1365, 1375 (Fed. Cir. 2001) 

(Rule that clarifies interpretation of a 

statute is interpretive.). 

Accordingly, prior notice and 

opportunity for public comment for 

these changes are not required pursuant 

to 5 U.S.C. 553(b) or (c) (or any other 

law). See Cooper Techs. Co. v. Dudas, 

536 F.3d 1330, 1336–37 (Fed. Cir. 2008) 

(stating that 5 U.S.C. 553, and thus 35 

U.S.C. 2(b)(2)(B), does not require notice 

and comment rulemaking for 

‘‘interpretative rules, general statements 

of policy, or rules of agency 

organization, procedure, or practice’’ 

(quoting 5 U.S.C. 553(b)(A))). The 

Office, however, published the 

proposed changes for comment because 

it sought the benefit of the public’s 

views on the Office’s implementation of 

title I of the PLTIA and the Hague 

Agreement. 

B. Regulatory Flexibility Act: This 

final rule revises the rules of practice to 

implement title I of the PLTIA. The 

changes to the rules of practice in this 

final rule involve: (1) The establishment 

of procedures for the filing, processing, 

and examination of international design 

applications; and (2) the revision of 

existing rules of practice to account for 

international design applications. In 


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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 


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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 (§ 1.1022) 

(2) Claim and Reproductions 

(§ 1.1021) 

(3) Transmittal Letter (§§ 1.4, 1.5) 

(4) Appointment of a Representative 

(§ 1.1041) 

(5) Petition to Excuse a Failure to 

Comply with a Time Limit (§ 1.1051) 

(6) Petition to Convert to a Design 

Application under 35 U.S.C. chapter 16 

(§ 1.1052) 

(7) Petition to Review a Filing Date 

(§ 1.1023(b)) 

(8) Fee Authorization (§ 1.25) 

(9) Petition to the Commissioner 

(§§ 1.181, 1.182, and 1.183) 

(10) Transmittal of Issue Fee to 

USPTO for an International Design 

Application (§ 1.311) 

(11) Declaration of Inventorship for 

Purposes of Designation of the United 

States (§ 1.63) 

(12) Substitute Statement in Lieu of a 

Declaration of Inventorship for the 

Purpose of Designating the United 

States (§ 1.64) 

(13) Assignment Cover Sheet (§§ 3.11, 

3.21, 3.24, 3.26, 3.28, 3.31, 3.34, and 

3.41) 

I. Summary 

This final rule will collect 

information necessary to process and 

examine international design 

applications pursuant to the Hague 

Agreement and the PLTIA. The Hague 

Agreement facilitates intellectual 

property protection for industrial 

designs through a single standardized 

application filed directly with the 

International Bureau of WIPO or 

indirectly through an appropriate 

Contracting Party’s Office, such as the 

USPTO. The Hague Agreement is 

administered by the International 

Bureau of WIPO located in Geneva, 

Switzerland. 

When an applicant files an 

international design application 

pursuant to this rulemaking, the 

International Bureau ascertains whether 

the international design application 

complies with the requirements of the 

treaty, records the international design 

application in the international register, 

and publishes the international 

registration in the International Designs 

Bulletin. The International Bureau then 

provides a copy of the publication of the 

international registration to each 

Contracting Party designated by the 

applicant, and thus will provide a copy 

to the USPTO when the United States is 

designated by the applicant. When the 

USPTO receives the international 

registration from the International 

Bureau, the USPTO will perform the 

substantive examination of the 

international design application in the 

same manner that it examines a 

domestic design application filed under 

35 U.S.C. chapter 16. 

Because the new application 

procedure for international design 

applications created through this final 

rule merely provides applicants with a 

new avenue by which they may file a 

design application, several items in this 

collection displace responses that the 

USPTO counts in other information 

collections, specifically Information 

Collections 0651–0032 (Initial Patent 

Applications), 0651–0043 (Patent and 

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 


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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 forprofits, 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 

■ 1. The authority citation for 37 CFR 

part 1 is revised to read as follows: 

Authority: 35 U.S.C. 2(b)(2), unless 

otherwise noted. 

■ 2. Section 1.4 is amended by revising 

paragraph (a)(2) to read as follows: 

§ 1.4 Nature of correspondence and 

signature requirements. 

(a) * * * 

(2) Correspondence in and relating to 

a particular application or other 

proceeding in the Office. See 

particularly the rules relating to the 

filing, processing, or other proceedings 

of national applications in subpart B of 

this part; of international applications in 

subpart C of this part; of ex parte 

reexaminations of patents in subpart D 

of this part; of supplemental 

examination of patents in subpart E of 

this part; of extension of patent term in 

subpart F of this part; of inter partes 

reexaminations of patents in subpart H 

of this part; of international design 

applications in subpart I of this part; 

and of the Patent Trial and Appeal 

Board in parts 41 and 42 of this chapter. 

* * * * * 

■ 3. Section 1.5 is amended by revising 

paragraph (a) to read as follows: 

§ 1.5 Identification of patent, patent 

application, or patent-related proceeding. 

(a) No correspondence relating to an 

application should be filed prior to 

receipt of the assigned application 

number (i.e., U.S. application number, 

international application number, or 

international registration number as 

appropriate). When correspondence 

directed to the Patent and Trademark 

Office concerns a previously filed 

application for a patent, it must identify 

on the top page in a conspicuous 

location, the application number 

(consisting of the series code and the 

serial number; e.g., 07/123,456), or the 

serial number and filing date assigned to 

that application by the Patent and 

Trademark Office, or the international 

application number of the international 

application, or the international 

registration number of an international 

design application. Any correspondence 

not containing such identification will 

be returned to the sender where a return 

address is available. The returned 

correspondence will be accompanied 

with a cover letter, which will indicate 

to the sender that if the returned 

correspondence is resubmitted to the 

Patent and Trademark Office within two 

weeks of the mail date on the cover 

letter, the original date of receipt of the 

correspondence will be considered by 

the Patent and Trademark Office as the 

date of receipt of the correspondence. 

Applicants may use either the 

Certificate of Mailing or Transmission 

procedure under § 1.8 or the Priority 

Mail Express® procedure under § 1.10 

for resubmissions of returned 

correspondence if they desire to have 

the benefit of the date of deposit in the 

United States Postal Service. If the 

returned correspondence is not 

resubmitted within the two-week 

period, the date of receipt of the 

resubmission will be considered to be 

the date of receipt of the 

correspondence. The two-week period 

to resubmit the returned 

correspondence will not be extended. In 

addition to the application number, all 

correspondence directed to the Patent 

and Trademark Office concerning 

applications for patent should also state 

the name of the first listed inventor, the 

title of the invention, the date of filing 

the same, and if known, the group art 

unit or other unit within the Patent and 

Trademark Office responsible for 

considering the correspondence and the 

name of the examiner or other person to 

which it has been assigned. 

* * * * * 

■ 4. Section 1.6 is amended by revising 

paragraphs (d)(3), (4), and (6) to read as 

follows: 

§ 1.6 Receipt of correspondence. 

* * * * * 

(d) * * * 

(3) Correspondence that cannot 

receive the benefit of the certificate of 

mailing or transmission as specified in 

§ 1.8(a)(2)(i)(A) through (D), (F), (I), and 

(K) and § 1.8(a)(2)(iii)(A), except that a 

continued prosecution application 

under § 1.53(d) may be transmitted to 

the Office by facsimile; 


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(4) Color drawings submitted under 

§§ 1.81, 1.83 through 1.85, 1.152, 1.165, 

1.173, 1.437, or 1.1026; 

* * * * * 

(6) Correspondence to be filed in an 

application subject to a secrecy order 

under §§ 5.1 through 5.5 of this chapter 

and directly related to the secrecy order 

content of the application; 

* * * * * 

■ 5. Section 1.8 is amended by revising 

paragraphs (a)(2)(i)(I) and (J) and adding 

paragraph (a)(2)(i)(K) to read as follows: 

§ 1.8 Certificate of mailing or 

transmission. 

(a) * * * 

(2) * * * 

(i) * * * 

(I) The filing of a third-party 

submission under § 1.290; 

(J) The calculation of any period of 

adjustment, as specified in § 1.703(f); 

and 

(K) The filing of an international 

design application. 

* * * * * 

■ 6. Section 1.9 is amended by revising 

paragraphs (a)(1) and (3) and adding 

paragraphs (l), (m), and (n) to read as 

follows: 

§ 1.9 Definitions. 

(a)(1) A national application as used 

in this chapter means either a U.S. 

application for patent which was filed 

in the Office under 35 U.S.C. 111, an 

international application filed under the 

Patent Cooperation Treaty in which the 

basic national fee under 35 U.S.C. 

41(a)(1)(F) has been paid, or an 

international design application filed 

under the Hague Agreement in which 

the Office has received a copy of the 

international registration pursuant to 

Hague Agreement Article 10. 

* * * * * 

(3) A nonprovisional application as 

used in this chapter means either a U.S. 

national application for patent which 

was filed in the Office under 35 U.S.C. 

111(a), an international application filed 

under the Patent Cooperation Treaty in 

which the basic national fee under 35 

U.S.C. 41(a)(1)(F) has been paid, or an 

international design application filed 

under the Hague Agreement in which 

the Office has received a copy of the 

international registration pursuant to 

Hague Agreement Article 10. 

* * * * * 

(l) Hague Agreement as used in this 

chapter means the Geneva Act of the 

Hague Agreement Concerning the 

International Registration of Industrial 

Designs adopted at Geneva, 

Switzerland, on July 2, 1999, and Hague 

Agreement Article as used in this 

chapter means an Article under the 

Hague Agreement. 

(m) Hague Agreement Regulations as 

used in this chapter means the Common 

Regulations Under the 1999 Act and the 

1960 Act of the Hague Agreement, and 

Hague Agreement Rule as used in this 

chapter means one of the Hague 

Agreement Regulations. 

(n) An international design 

application as used in this chapter 

means an application for international 

registration of a design filed under the 

Hague Agreement. Unless otherwise 

clear from the wording, reference to 

‘‘design application’’ or ‘‘application for 

a design patent’’ in this chapter includes 

an international design application that 

designates the United States. 

■ 7. Section 1.14 is amended by revising 

the introductory text of paragraph (a)(1), 

revising paragraphs (a)(1)(ii) through 

(vii) and (a)(2)(iv), and adding 

paragraph (j) to read as follows: 

§ 1.14 Patent applications preserved in 

confidence. 

(a) * * * 

(1) Records associated with patent 

applications (see paragraph (g) of this 

section for international applications 

and paragraph (j) of this section for 

international design applications) may 

be available in the following situations: 

* * * * * 

(ii) Published abandoned 

applications. The file of an abandoned 

published application is available to the 

public as set forth in § 1.11(a). A copy 

of the application-as-filed, the file 

contents of the published application, or 

a specific document in the file of the 

published application may be provided 

to any person upon request and 

payment of the appropriate fee set forth 

in § 1.19(b). 

(iii) Published pending applications. 

A copy of the application-as-filed, the 

file contents of the application, or a 

specific document in the file of a 

pending published application may be 

provided to any person upon request 

and payment of the appropriate fee set 

forth in § 1.19(b). If a redacted copy of 

the application was used for the patent 

application publication, the copy of the 

specification, drawings, and papers may 

be limited to a redacted copy. The 

Office will not provide access to the 

paper file of a pending application that 

has been published, except as provided 

in paragraph (c) or (i) of this section. 

(iv) Unpublished abandoned 

applications (including provisional 

applications) that are identified or 

relied upon. The file contents of an 

unpublished, abandoned application 

may be made available to the public if 

the application is identified in a U.S. 

patent, a statutory invention 

registration, a U.S. patent application 

publication, an international 

publication of an international 

application under PCT Article 21(2), or 

a publication of an international 

registration under Hague Agreement 

Article 10(3) of an international design 

application designating the United 

States. An application is considered to 

have been identified in a document, 

such as a patent, when the application 

number or serial number and filing date, 

first named inventor, title, and filing 

date or other application specific 

information are provided 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 applicationas-filed, the file contents of the 

application, or a specific document in 

the file of the application may be 

provided to any person upon written 

request and payment of the appropriate 

fee (§ 1.19(b)). 

(v) Unpublished pending applications 

(including provisional applications) 

whose benefit is claimed. A copy of the 

file contents of an unpublished pending 

application may be provided to any 

person, upon written request and 

payment of the appropriate fee 

(§ 1.19(b)), if the benefit of the 

application is claimed under 35 U.S.C. 

119(e), 120, 121, 365(c), or 386(c) in an 

application that has issued as a U.S. 

patent, or in an application that has 

published as a statutory invention 

registration, a U.S. patent application 

publication, an international 

publication of an international 

application under PCT Article 21(2), or 

a publication of an international 

registration under Hague Agreement 

Article 10(3). A copy of the applicationas-filed or a specific document in the 

file of the pending application may also 

be provided to any person upon written 

request and payment of the appropriate 

fee (§ 1.19(b)). The Office will not 

provide access to the paper file of a 

pending application, except as provided 

in paragraph (c) or (i) of this section. 


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(vi) Unpublished pending 

applications (including provisional 

applications) that are incorporated by 

reference or otherwise identified. A copy 

of the application as originally filed of 

an unpublished pending application 

may be provided to any person, upon 

written request and payment of the 

appropriate fee (§ 1.19(b)), if the 

application is incorporated by reference 

or otherwise identified in a U.S. patent, 

a statutory invention registration, a U.S. 

patent application publication, an 

international publication of an 

international application under PCT 

Article 21(2), or a publication of an 

international registration under Hague 

Agreement Article 10(3) of an 

international design application 

designating the United States. The 

Office will not provide access to the 

paper file of a pending application, 

except as provided in paragraph (c) or 

(i) of this section. 

(vii) When a petition for access or a 

power to inspect is required. 

Applications that were not published or 

patented, that are not the subject of a 

benefit claim under 35 U.S.C. 119(e), 

120, 121, 365(c), or 386(c) in an 

application that has issued as a U.S. 

patent, an application that has 

published as a statutory invention 

registration, a U.S. patent application 

publication, an international 

publication of an international 

application under PCT Article 21(2), or 

a publication of an international 

registration under Hague Agreement 

Article 10(3), or are not identified in a 

U.S. patent, a statutory invention 

registration, a U.S. patent application 

publication, an international 

publication of an international 

application under PCT Article 21(2), or 

a publication of an international 

registration under Hague Agreement 

Article 10(3) of an international design 

application designating the United 

States, are not available to the public. If 

an application is identified in the file 

contents of another application, but not 

the published patent application or 

patent itself, a granted petition for 

access (see paragraph (i)) or a power to 

inspect (see paragraph (c) of this 

section) is necessary to obtain the 

application, or a copy of the application. 

(2) * * * 

(iv) Whether another application 

claims the benefit of the application 

(i.e., whether there are any applications 

that claim the benefit of the filing date 

under 35 U.S.C. 119(e), 120, 121, 365, or 

386 of the application), and if there are 

any such applications, the numerical 

identifier of the application, the 

specified relationship between the 

applications (e.g., continuation), 

whether the application is pending, 

abandoned or patented, and whether the 

application has been published under 

35 U.S.C. 122(b). 

* * * * * 

(j) International design applications. 

(1) With respect to an international 

design application maintained by the 

Office in its capacity as a designated 

office (§ 1.1003) for national processing, 

the records associated with the 

international design application may be 

made available as provided under 

paragraphs (a) through (i) of this section. 

(2) With respect to an international 

design application maintained by the 

Office in its capacity as an office of 

indirect filing (§ 1.1002), the records of 

the international design application may 

be made available under paragraph (j)(1) 

of this section where contained in the 

file of the international design 

application maintained by the Office for 

national processing. Also, if benefit of 

the international design application is 

claimed under 35 U.S.C. 386(c) in a U.S. 

patent or published application, the file 

contents of the application may be made 

available to the public, or the file 

contents of the application, a copy of 

the application-as-filed, or a specific 

document in the file of the application 

may be provided to any person upon 

written request and payment of the 

appropriate fee (§ 1.19(b)). 

■ 8. Section 1.16 is amended by revising 

the introductory text of paragraphs (b), 

(l), and (p) to read as follows: 

§ 1.16 National application filing, search, 

and examination fees. 

* * * * * 

(b) Basic fee for filing each 

application under 35 U.S.C. 111 for an 

original design patent: 

* * * * * 

(l) Search fee for each application 

under 35 U.S.C. 111 for an original 

design patent: 

* * * * * 

(p) Examination fee for each 

application under 35 U.S.C. 111 for an 

original design patent: 

* * * * * 

■ 9. Section 1.17 is amended by revising 

paragraphs (f), (g), (i)(1), and (m) and 

adding paragraph (t) to read as follows: 

§ 1.17 Patent application and 

reexamination processing fees. 

* * * * * 

(f) For filing a petition under one of 

the following sections which refers to 

this paragraph: 

By a micro entity (§ 1.29) ......... $100.00 

By a small entity (§ 1.27(a)) ...... 200.00 

By other than a small or micro 

entity ...................................... 400.00 

§ 1.36(a)—for revocation of a power of 

attorney by fewer than all of the 

applicants. 

§ 1.53(e)—to accord a filing date. 

§ 1.182—for decision on a question 

not specifically provided for in an 

application for patent. 

§ 1.183—to suspend the rules in an 

application for patent. 

§ 1.741(b)—to accord a filing date to 

an application under § 1.740 for 

extension of a patent term. 

§ 1.1023—to review the filing date of 

an international design application. 

(g) For filing a petition under one of 

the following sections which refers to 

this paragraph: 

By a micro entity (§ 1.29) ......... $50.00 

By a small entity (§ 1.27(a)) ...... 100.00 

By other than a small or micro 

entity ...................................... 200.00 

§ 1.12—for access to an assignment 

record. 

§ 1.14—for access to an application. 

§ 1.46—for filing an application on 

behalf of an inventor by a person who 

otherwise shows sufficient proprietary 

interest in the matter. 

§ 1.55(f)—for filing a belated certified 

copy of a foreign application. 

§ 1.55(g)—for filing a belated certified 

copy of a foreign application. 

§ 1.57(a)—for filing a belated certified 

copy of a foreign application. 

§ 1.59—for expungement of 

information. 

§ 1.103(a)—to suspend action in an 

application. 

§ 1.136(b)—for review of a request for 

extension of time when the provisions 

of § 1.136(a) are not available. 

§ 1.377—for review of decision 

refusing to accept and record payment 

of a maintenance fee filed prior to 

expiration of a patent. 

§ 1.550(c)—for patent owner requests 

for extension of time in ex parte 

reexamination proceedings. 

§ 1.956—for patent owner requests for 

extension of time in inter partes 

reexamination proceedings. 

§ 5.12—for expedited handling of a 

foreign filing license. 

§ 5.15—for changing the scope of a 

license. 

§ 5.25—for retroactive license. 

* * * * * 

(i) Processing fees. (1) For taking 

action under one of the following 

sections which refers to this paragraph: 

By a micro entity (§ 1.29) ......... $35.00 

By a small entity (§ 1.27(a)) ...... 70.00 

By other than a small or micro 

entity ...................................... 140.00 

§ 1.28(c)(3)—for processing a nonitemized fee deficiency based on an 

error in small entity status. 


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§ 1.29(k)(3)—for processing a nonitemized fee deficiency based on an 

error in micro entity status. 

§ 1.41(b)—for supplying the name or 

names of the inventor or joint inventors 

in an application without either an 

application data sheet or the inventor’s 

oath or declaration, except in 

provisional applications. 

§ 1.48—for correcting inventorship, 

except in provisional applications. 

§ 1.52(d)—for processing a 

nonprovisional application filed with a 

specification in a language other than 

English. 

§ 1.53(c)(3)—t convert a provisional 

application filed under § 1.53(c) into a 

nonprovisional application under 

§ 1.53(b). 

§ 1.71(g)(2)—for processing a belated 

amendment under § 1.71(g). 

§ 1.102(e)—for requesting prioritized 

examination of an application. 

§ 1.103(b)—for requesting limited 

suspension of action, continued 

prosecution application for a design 

patent (§ 1.53(d)). 

§ 1.103(c)—for requesting limited 

suspension of action, request for 

continued examination (§ 1.114). 

§ 1.103(d)—for requesting deferred 

examination of an application. 

§ 1.291(c)(5)—for processing a second 

or subsequent protest by the same real 

party in interest. 

§ 3.81—for a patent to issue to 

assignee, assignment submitted after 

payment of the issue fee. 

* * * * * 

(m) For filing a petition for the revival 

of an abandoned application for a 

patent, for the delayed payment of the 

fee for issuing each patent, for the 

delayed response by the patent owner in 

any reexamination proceeding, for the 

delayed payment of the fee for 

maintaining a patent in force, for the 

delayed submission of a priority or 

benefit claim, for the extension of the 

twelve-month (six-month for designs) 

period for filing a subsequent 

application (§§ 1.55(c), 1.55(e), 1.78(b), 

1.78(c), 1.78(e), 1.137, 1.378, and 1.452), 

or for filing a petition to excuse 

applicant’s failure to act within 

prescribed time limits in an 

international design application 

(§ 1.1051): 

By a small entity (§ 1.27(a)) or 

micro entity (§ 1.29) ............. $850.00 

By other than a small or micro 

entity ..................................... 1,700.00 

* * * * * 

(t) For filing a petition to convert an 

international design application to a 

design application under 35 U.S.C. 

chapter 16 (§ 1.1052): $180.00. 

■ 10. Section 1.18 is amended by adding 

paragraph (b)(3) to read as follows: 

§ 1.18 Patent post allowance (including 

issue) fees. 

* * * * * 

(b) * * * 

(3) For an international design 

application designating the United 

States, where an issue fee is paid 

through the International Bureau (Hague 

Agreement Rule 12(3)(c)) as an 

alternative to paying the issue fee under 

paragraph (b)(1) of this section: The 

amount specified on the Web site of the 

World Intellectual Property 

Organization, currently available at 

http://www.wipo.int/hague, at the time 

the fee is paid. 

* * * * * 

■ 11. Section 1.25 is amended by 

revising paragraph (b) to read as follows: 

§ 1.25 Deposit accounts. 

* * * * * 

(b) Filing, issue, appeal, internationaltype search report, international 

application processing, international 

design application fees, petition, and 

post-issuance fees may be charged 

against these accounts if sufficient funds 

are on deposit to cover such fees. A 

general authorization to charge all fees, 

or only certain fees, set forth in §§ 1.16 

through 1.18 to a deposit account 

containing sufficient funds may be filed 

in an individual application, either for 

the entire pendency of the application 

or with a particular paper filed. A 

general authorization to charge fees in 

an international design application set 

forth in § 1.1031 will only be effective 

for the transmittal fee (§ 1.1031(a)). An 

authorization to charge fees under § 1.16 

in an international application entering 

the national stage under 35 U.S.C. 371 

will be treated as an authorization to 

charge fees under § 1.492. An 

authorization to charge fees set forth in 

§ 1.18 to a deposit account is subject to 

the provisions of § 1.311(b). An 

authorization to charge to a deposit 

account the fee for a request for 

reexamination pursuant to § 1.510 or 

1.913 and any other fees required in a 

reexamination proceeding in a patent 

may also be filed with the request for 

reexamination, and an authorization to 

charge to a deposit account the fee for 

a request for supplemental examination 

pursuant to § 1.610 and any other fees 

required in a supplemental examination 

proceeding in a patent may also be filed 

with the request for supplemental 

examination. An authorization to charge 

a fee to a deposit account will not be 

considered payment of the fee on the 

date the authorization to charge the fee 

is effective unless sufficient funds are 

present in the account to cover the fee. 

* * * * * 

■ 12. Section 1.27 is amended by 

revising paragraph (c)(3) introductory 

text to read as follows: 

§ 1.27 Definition of small entities and 

establishing status as a small entity to 

permit payment of small entity fees; when 

a determination of entitlement to small 

entity status and notification of loss of 

entitlement to small entity status are 

required; fraud on the Office. 

* * * * * 

(c) * * * 

(3) Assertion by payment of the small 

entity basic filing, basic transmittal, 

basic national fee, international search 

fee, or individual designation fee in an 

international design application. The 

payment, by any party, of the exact 

amount of one of the small entity basic 

filing fees set forth in § 1.16(a), (b), (c), 

(d), or (e), the small entity transmittal 

fee set forth in § 1.445(a)(1), the small 

entity international search fee set forth 

in § 1.445(a)(2) to a Receiving Office 

other than the United States Receiving 

Office in the exact amount established 

for that Receiving Office pursuant to 

PCT Rule 16, or the small entity basic 

national fee set forth in § 1.492(a), will 

be treated as a written assertion of 

entitlement to small entity status even if 

the type of basic filing, basic transmittal, 

or basic national fee is inadvertently 

selected in error. The payment, by any 

party, of the small entity first part of the 

individual designation fee for the 

United States to the International 

Bureau (§ 1.1031) will be treated as a 

written assertion of entitlement to small 

entity status. 

* * * * * 

■ 13. Section 1.29 is amended by 

revising paragraph (e) to read as follows: 

§ 1.29 Micro entity status. 

* * * * * 

(e) Micro entity status is established 

in an application by filing a micro entity 

certification in writing complying with 

the requirements of either paragraph (a) 

or (d) of this section and signed either 

in compliance with § 1.33(b), in an 

international application filed in a 

Receiving Office other than the United 

States Receiving Office by a person 

authorized to represent the applicant 

under § 1.455, or in an international 

design application by a person 

authorized to represent the applicant 

under § 1.1041 before the International 

Bureau where the micro entity 

certification is filed with the 

International Bureau. Status as a micro 

entity must be specifically established 

in each related, continuing and reissue 


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application in which status is 

appropriate and desired. Status as a 

micro entity in one application or patent 

does not affect the status of any other 

application or patent, regardless of the 

relationship of the applications or 

patents. The refiling of an application 

under § 1.53 as a continuation, 

divisional, or continuation-in-part 

application (including a continued 

prosecution application under 

§ 1.53(d)), or the filing of a reissue 

application, requires a new certification 

of entitlement to micro entity status for 

the continuing or reissue application. 

* * * * * 

■ 14. Section 1.32 is amended by 

revising paragraph (d) introductory text 

to read as follows: 

§ 1.32 Power of attorney. 

* * * * * 

(d) A power of attorney from a prior 

national application for which benefit is 

claimed under 35 U.S.C. 120, 121, 

365(c), or 386(c) in a continuing 

application may have effect in the 

continuing application if a copy of the 

power of attorney from the prior 

application is filed in the continuing 

application unless: 

* * * * * 

■ 15. Section 1.41 is amended by adding 

paragraph (f) to read as follows: 

§ 1.41 Inventorship. 

* * * * * 

(f) The inventorship of an 

international design application 

designating the United States is the 

creator or creators set forth in the 

publication of the international 

registration under Hague Agreement 

Article 10(3). Any correction of 

inventorship must be pursuant to § 1.48. 

■ 16. Section 1.46 is amended by 

revising paragraph (b) introductory text 

and paragraph (c) to read as follows: 

§ 1.46 Application for patent by an 

assignee, obligated assignee, or a person 

who otherwise shows sufficient proprietary 

interest in the matter. 

* * * * * 

(b) If an application under 35 U.S.C. 

111 is made by a person other than the 

inventor under paragraph (a) of this 

section, the application must contain an 

application data sheet under § 1.76 

specifying in the applicant information 

section (§ 1.76(b)(7)) the assignee, 

person to whom the inventor is under 

an obligation to assign the invention, or 

person who otherwise shows sufficient 

proprietary interest in the matter. If an 

application entering the national stage 

under 35 U.S.C. 371, or a 

nonprovisional international design 

application, is applied for by a person 

other than the inventor under paragraph 

(a) of this section, the assignee, person 

to whom the inventor is under an 

obligation to assign the invention, or 

person who otherwise shows sufficient 

proprietary interest in the matter must 

have been identified as the applicant for 

the United States in the international 

stage of the international application or 

as the applicant in the publication of the 

international registration under Hague 

Agreement Article 10(3). 

* * * * * 

(c)(1) Correction or update in the 

name of the applicant. Any request to 

correct or update the name of the 

applicant under this section must 

include an application data sheet under 

§ 1.76 specifying the correct or updated 

name of the applicant in the applicant 

information section (§ 1.76(b)(7)) in 

accordance with § 1.76(c)(2). A change 

in the name of the applicant recorded 

pursuant to Hague Agreement Article 

16(1)(ii) will be effective to change the 

name of the applicant in a 

nonprovisional international design 

application. 

(2) Change in the applicant. Any 

request to change the applicant under 

this section after an original applicant 

has been specified must include an 

application data sheet under § 1.76 

specifying the applicant in the applicant 

information section (§ 1.76(b)(7)) in 

accordance with § 1.76(c)(2) and comply 

with §§ 3.71 and 3.73 of this title. 

* * * * * 

■ 17. Section 1.53 is amended by 

revising paragraph (b) introductory text 

and paragraphs (c)(4) and (d)(1)(ii) to 

read as follows: 

§ 1.53 Application number, filing date, and 

completion of application. 

* * * * * 

(b) Application filing requirements— 

Nonprovisional application. The filing 

date of an application for patent filed 

under this section, other than an 

application for a design patent or a 

provisional application under paragraph 

(c) of this section, is the date on which 

a specification, with or without claims, 

is received in the Office. The filing date 

of an application for a design patent 

filed under this section, except for a 

continued prosecution application 

under paragraph (d) of this section, is 

the date on which the specification as 

prescribed by 35 U.S.C. 112, including 

at least one claim, and any required 

drawings are received in the Office. No 

new matter may be introduced into an 

application after its filing date. A 

continuing application, which may be a 

continuation, divisional, or 

continuation-in-part application, may be 

filed under the conditions specified in 

35 U.S.C. 120, 121, 365(c), or 386(c) and 

§ 1.78. 

* * * * * 

(c) * * * 

(4) A provisional application is not 

entitled to the right of priority under 35 

U.S.C. 119, 365(a), or 386(a) or § 1.55, or 

to the benefit of an earlier filing date 

under 35 U.S.C. 120, 121, 365(c), or 

386(c) or § 1.78 of any other application. 

No claim for priority under 35 U.S.C. 

119(e) or § 1.78(a) may be made in a 

design application based on a 

provisional application. The 

requirements of §§ 1.821 through 1.825 

regarding application disclosures 

containing nucleotide and/or amino 

acid sequences are not mandatory for 

provisional applications. 

(d) * * * 

(1) * * * 

(ii) The prior nonprovisional 

application is a design application, but 

not an international design application, 

that is complete as defined by § 1.51(b), 

except for the inventor’s oath or 

declaration if the application is filed on 

or after September 16, 2012, and the 

prior nonprovisional application 

contains an application data sheet 

meeting the conditions specified in 

§ 1.53(f)(3)(i); and 

* * * * * 

■ 18. Section 1.55 is revised to read as 

follows: 

§ 1.55 Claim for foreign priority. 

(a) In general. An applicant in a 

nonprovisional application may claim 

priority to one or more prior foreign 

applications under the conditions 

specified in 35 U.S.C. 119(a) through (d) 

and (f), 172, 365(a) and (b), and 386(a) 

and (b) and this section. 

(b) Time for filing subsequent 

application. The nonprovisional 

application must be: 

(1) Filed not later than twelve months 

(six months in the case of a design 

application) after the date on which the 

foreign application was filed, subject to 

paragraph (c) of this section (a 

subsequent application); or 

(2) Entitled to claim the benefit under 

35 U.S.C. 120, 121, 365(c), or 386(c) of 

a subsequent application that was filed 

within the period set forth in paragraph 

(b)(1) of this section. 

(c) Delayed filing of subsequent 

application. If the subsequent 

application has a filing date which is 

after the expiration of the period set 

forth in paragraph (b)(1) of this section, 

but within two months from the 

expiration of the period set forth in 

paragraph (b)(1) of this section, the right 

of priority in the subsequent application 

may be restored under PCT Rule 26bis.3 


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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 (§ 1.76(b)(6)), identifying the 

foreign application to which priority is 

claimed, by specifying the application 

number, country (or intellectual 

property authority), day, month, and 

year of its filing, unless previously 

submitted; 

(2) The petition fee as set forth in 

§ 1.17(m); and 

(3) A statement that the delay in filing 

the subsequent application within the 

period set forth in paragraph (b)(1) of 

this section was unintentional. The 

Director may require additional 

information where there is a question 

whether the delay was unintentional. 

(d) Time for filing priority claim—(1) 

Application under 35 U.S.C. 111(a). The 

claim for priority must be filed within 

the later of four months from the actual 

filing date of the application or sixteen 

months from the filing date of the prior 

foreign application in an original 

application filed under 35 U.S.C. 111(a), 

except as provided in paragraph (e) of 

this section. The claim for priority must 

be presented in an application data 

sheet (§ 1.76(b)(6)) and must identify the 

foreign application to which priority is 

claimed by specifying the application 

number, country (or intellectual 

property authority), day, month, and 

year of its filing. The time periods in 

this paragraph do not apply if the laterfiled application is: 

(i) An application for a design patent; 

or 

(ii) An application filed under 35 

U.S.C. 111(a) before November 29, 2000. 

(2) Application under 35 U.S.C. 371. 

The claim for priority must be made 

within the time limit set forth in the 

PCT and the Regulations under the PCT 

in an international application entering 

the national stage under 35 U.S.C. 371, 

except as provided in paragraph (e) of 

this section. 

(e) Delayed priority claim. Unless 

such claim is accepted in accordance 

with the provisions of this paragraph, 

any claim for priority under 35 U.S.C. 

119(a) through (d) or (f), 365(a) or (b), 

or 386(a) or 386(b) not presented in the 

manner required by paragraph (d) or (m) 

of this section during pendency and 

within the time period provided by 

paragraph (d) of this section (if 

applicable) is considered to have been 

waived. If a claim for priority is 

considered to have been waived under 

this section, the claim may be accepted 

if the priority claim was unintentionally 

delayed. A petition to accept a delayed 

claim for priority under 35 U.S.C. 119(a) 

through (d) or (f), 365(a) or (b), or 386(a) 

or 386(b) must be accompanied by: 

(1) The priority claim under 35 U.S.C. 

119(a) through (d) or (f), 365(a) or (b), 

or 386(a) or 386(b) in an application 

data sheet (§ 1.76(b)(6)), identifying the 

foreign application to which priority is 

claimed, by specifying the application 

number, country (or intellectual 

property authority), day, month, and 

year of its filing, unless previously 

submitted; 

(2) A certified copy of the foreign 

application, unless previously 

submitted or an exception in paragraph 

(h), (i), or (j) of this section applies; 

(3) The petition fee as set forth in 

§ 1.17(m); and 

(4) A statement that the entire delay 

between the date the priority claim was 

due under this section and the date the 

priority claim was filed was 

unintentional. The Director may require 

additional information where there is a 

question whether the delay was 

unintentional. 

(f) Time for filing certified copy of 

foreign application—(1) Application 

under 35 U.S.C. 111(a). A certified copy 

of the foreign application must be filed 

within the later of four months from the 

actual filing date of the application, or 

sixteen months from the filing date of 

the prior foreign application, in an 

original application under 35 U.S.C. 

111(a) filed on or after March 16, 2013, 

except as provided in paragraphs (h), (i), 

and (j) of this section. The time period 

in this paragraph does not apply in a 

design application. 

(2) Application under 35 U.S.C. 371. 

A certified copy of the foreign 

application must be filed within the 

time limit set forth in the PCT and the 

Regulations under the PCT in an 

international application entering the 

national stage under 35 U.S.C. 371. If a 

certified copy of the foreign application 

is not filed during the international 

stage in an international application in 

which the national stage commenced on 

or after December 18, 2013, a certified 

copy of the foreign application must be 

filed within the later of four months 

from the date on which the national 

stage commenced under 35 U.S.C. 

371(b) or (f) (§ 1.491(a)), four months 

from the date of the initial submission 

under 35 U.S.C. 371 to enter the 

national stage, or sixteen months from 

the filing date of the prior foreign 

application, except as provided in 

paragraphs (h), (i), and (j) of this section. 

(3) If a certified copy of the foreign 

application is not filed within the time 

period specified paragraph (f)(1) of this 

section in an application under 35 

U.S.C. 111(a) or within the period 

specified in paragraph (f)(2) of this 

section in an international application 

entering the national stage under 35 

U.S.C. 371, and an exception in 

paragraph (h), (i), or (j) of this section is 

not applicable, the certified copy of the 

foreign application must be 

accompanied by a petition including a 

showing of good and sufficient cause for 

the delay and the petition fee set forth 

in § 1.17(g). 

(g) Requirement for filing priority 

claim, certified copy of foreign 

application, and translation in any 

application. (1) The claim for priority 

and the certified copy of the foreign 

application specified in 35 U.S.C. 119(b) 

or PCT Rule 17 must, in any event, be 

filed within the pendency of the 

application, unless filed with a petition 

under paragraph (e) or (f) of this section, 

or with a petition accompanied by the 

fee set forth in § 1.17(g) which includes 

a showing of good and sufficient cause 

for the delay in filing the certified copy 

of the foreign application in a design 

application. If the claim for priority or 

the certified copy of the foreign 

application is filed after the date the 

issue fee is paid, the patent will not 

include the priority claim unless 

corrected by a certificate of correction 

under 35 U.S.C. 255 and § 1.323. 

(2) The Office may require that the 

claim for priority and the certified copy 

of the foreign application be filed earlier 

than otherwise provided in this section: 

(i) When the application is involved 

in an interference (see § 41.202 of this 

chapter) or derivation (see part 42 of 

this chapter) proceeding; 

(ii) When necessary to overcome the 

date of a reference relied upon by the 

examiner; or 

(iii) When deemed necessary by the 

examiner. 

(3) An English language translation of 

a non-English language foreign 

application is not required except: 

(i) When the application is involved 

in an interference (see § 41.202 of this 

chapter) or derivation (see part 42 of 

this chapter) proceeding; 


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(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 

(§ 1.76(b)(6)), identifying the foreign 

application for which priority is 

claimed, by specifying the application 

number, country (or intellectual 

property authority), day, month, and 

year of its filing, and the applicant 

provides the information necessary for 

the participating foreign intellectual 

property office to provide the Office 

with access to the foreign application; 

(3) The copy of the foreign application 

is received by the Office from the 

participating foreign intellectual 

property office, or a certified copy of the 

foreign application is filed, within the 

period specified in paragraph (g)(1) of 

this section; and 

(4) The applicant files in a separate 

document a request that the Office 

obtain a copy of the foreign application 

from a participating intellectual 

property office that permits the Office to 

obtain such a copy where, although the 

foreign application was not filed in a 

participating foreign intellectual 

property office, a copy of the foreign 

application was filed in an application 

subsequently filed in a participating 

foreign intellectual property office that 

permits the Office to obtain such a copy. 

The request must identify the 

participating intellectual property office 

and the subsequent application by the 

application number, day, month, and 

year of its filing in which a copy of the 

foreign application was filed. The 

request must be filed within the later of 

sixteen months from the filing date of 

the prior foreign application, four 

months from the actual filing date of an 

application under 35 U.S.C. 111(a), four 

months from the date on which the 

national stage commenced under 35 

U.S.C. 371(b) or (f) (§ 1.491(a)), or four 

months from the date of the initial 

submission under 35 U.S.C. 371 to enter 

the national stage, or the request must 

be accompanied by a petition under 

paragraph (e) or (f) of this section. 

(j) Interim copy. The requirement in 

paragraph (f) of this section for a 

certified copy of the foreign application 

to be filed within the time limit set forth 

therein will be considered satisfied if: 

(1) A copy of the original foreign 

application clearly labeled as ‘‘Interim 

Copy,’’ including the specification, and 

any drawings or claims upon which it 

is based, is filed in the Office together 

with a separate cover sheet identifying 

the foreign application by specifying the 

application number, country (or 

intellectual property authority), day, 

month, and year of its filing, and stating 

that the copy filed in the Office is a true 

copy of the original application as filed 

in the foreign country (or intellectual 

property authority); 

(2) The copy of the foreign application 

and separate cover sheet are filed within 

the later of sixteen months from the 

filing date of the prior foreign 

application, four months from the actual 

filing date of an application under 35 

U.S.C. 111(a), four months from the date 

on which the national stage commenced 

under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), 

four months from the date of the initial 

submission under 35 U.S.C. 371 to enter 

the national stage, or with a petition 

under paragraph (e) or (f) of this section; 

and 

(3) A certified copy of the foreign 

application is filed within the period 

specified in paragraph (g)(1) of this 

section. 

(k) Requirements for certain 

applications filed on or after March 16, 

2013. If a nonprovisional application 

filed on or after March 16, 2013, other 

than a nonprovisional international 

design application, claims priority to a 

foreign application filed prior to March 

16, 2013, and also contains, or 

contained at any time, a claim to a 

claimed invention that has an effective 

filing date as defined in § 1.109 that is 

on or after March 16, 2013, the 

applicant must provide a statement to 

that effect within the later of four 

months from the actual filing date of the 

nonprovisional application, four months 

from the date of entry into the national 

stage as set forth in § 1.491 in an 

international application, sixteen 

months from the filing date of the prior 

foreign application, or the date that a 

first claim to a claimed invention that 

has an effective filing date on or after 

March 16, 2013, is presented in the 

nonprovisional application. An 

applicant is not required to provide 

such a statement if the applicant 

reasonably believes on the basis of 

information already known to the 

individuals designated in § 1.56(c) that 

the nonprovisional application does not, 

and did not at any time, contain a claim 

to a claimed invention that has an 

effective filing date on or after March 

16, 2013. 

(l) Inventor’s certificates. An 

applicant in a nonprovisional 

application may under certain 

circumstances claim priority on the 

basis of one or more applications for an 

inventor’s certificate in a country 

granting both inventor’s certificates and 

patents. To claim the right of priority on 

the basis of an application for an 

inventor’s certificate in such a country 

under 35 U.S.C. 119(d), the applicant, 

when submitting a claim for such right 

as specified in this section, must 

include an affidavit or declaration. The 

affidavit or declaration must include a 

specific statement that, upon an 

investigation, he or she is satisfied that 

to the best of his or her knowledge, the 

applicant, when filing the application 

for the inventor’s certificate, had the 

option to file an application for either a 

patent or an inventor’s certificate as to 

the subject matter of the identified claim 

or claims forming the basis for the claim 

of priority. 

(m) Time for filing priority claim and 

certified copy of foreign application in 

an international design application 

designating the United States. In an 

international design application 


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designating the United States, the claim 

for priority may be made in accordance 

with the Hague Agreement and the 

Hague Agreement Regulations. In a 

nonprovisional international design 

application, the priority claim, unless 

made in accordance with the Hague 

Agreement and the Hague Agreement 

Regulations, must be presented in an 

application data sheet (§ 1.76(b)(6)), 

identifying the foreign application for 

which priority is claimed, by specifying 

the application number, country (or 

intellectual property authority), day, 

month, and year of its filing. In a 

nonprovisional international design 

application, the priority claim and 

certified copy must be furnished in 

accordance with the time period and 

other conditions set forth in paragraph 

(g) of this section. 

(n) Applications filed before 

September 16, 2012. Notwithstanding 

the requirement in paragraphs (d)(1), 

(e)(1), and (i)(2) of this section that any 

priority claim be presented in an 

application data sheet (§ 1.76), this 

requirement in paragraphs (d)(1), (e)(1), 

and (i)(2) of this section will be satisfied 

by the presentation of such priority 

claim in the oath or declaration under 

§ 1.63 in a nonprovisional application 

filed under 35 U.S.C. 111(a) before 

September 16, 2012, or resulting from 

an international application filed under 

35 U.S.C. 363 before September 16, 

2012. The provisions of this paragraph 

do not apply to any priority claim 

submitted for a petition under 

paragraph (c) of this section to restore 

the right of priority to a foreign 

application. 

(o) Priority under 35 U.S.C. 386(a) or 

(b). The right of priority under 35 U.S.C. 

386(a) or (b) with respect to an 

international design application is 

applicable only to nonprovisional 

applications, international applications, 

and international design applications 

filed on or after May 13, 2015, and 

patents issuing thereon. 

(p) Time periods in this section. The 

time periods set forth in this section are 

not extendable, but are subject to 35 

U.S.C. 21(b) (and § 1.7(a)), PCT Rule 

80.5, and Hague Agreement Rule 4(4). 

■ 19. Section 1.57 is amended by 

revising paragraph (a)(4) and the 

introductory text of paragraph (b) and 

adding paragraph (b)(4) to read as 

follows: 

§ 1.57 Incorporation by reference. 

(a) * * * 

(4) A certified copy of the previously 

filed application must be filed in the 

Office, unless the previously filed 

application is an application filed under 

35 U.S.C. 111 or 363, or the previously 

filed application is a foreign priority 

application and the conditions set forth 

in § 1.55(i) are satisfied with respect to 

such foreign priority application. The 

certified copy of the previously filed 

application, if required by this 

paragraph, must be filed within the later 

of four months from the filing date of 

the application or sixteen months from 

the filing date of the previously filed 

application, or be accompanied by a 

petition including a showing of good 

and sufficient cause for the delay and 

the petition fee set forth in § 1.17(g). 

(b) Subject to the conditions and 

requirements of this paragraph, if all or 

a portion of the specification or 

drawing(s) is inadvertently omitted from 

an application, but the application 

contains a claim under § 1.55 for 

priority of a prior-filed foreign 

application or a claim under § 1.78 for 

the benefit of a prior-filed provisional, 

nonprovisional, international 

application, or international design 

application, that was present on the 

filing date of the application, and the 

inadvertently omitted portion of the 

specification or drawing(s) is 

completely contained in the prior-filed 

application, the claim under § 1.55 or 

1.78 shall also be considered an 

incorporation by reference of the priorfiled application as to the inadvertently 

omitted portion of the specification or 

drawing(s). 

* * * * * 

(4) Any amendment to an 

international design application 

pursuant to paragraph (b)(1) of this 

section shall be effective only as to the 

United States and shall have no effect 

on the filing date of the application. In 

addition, no request under this section 

to add the inadvertently omitted portion 

of the specification or drawings in an 

international design application will be 

acted upon by the Office prior to the 

international design application 

becoming a nonprovisional application. 

* * * * * 

■ 20. Section 1.63 is amended by 

revising paragraph (d)(1) to read as 

follows: 

§ 1.63 Inventor’s oath or declaration. 

* * * * * 

(d)(1) A newly executed oath or 

declaration under § 1.63, or substitute 

statement under § 1.64, is not required 

under §§ 1.51(b)(2) and 1.53(f), or under 

§§ 1.497 and 1.1021(d), for an inventor 

in a continuing application that claims 

the benefit under 35 U.S.C. 120, 121, 

365(c), or 386(c) in compliance with 

§ 1.78 of an earlier-filed application, 

provided that an oath or declaration in 

compliance with this section, or 

substitute statement under § 1.64, was 

executed by or with respect to such 

inventor and was filed in the earlierfiled application, and a copy of such 

oath, declaration, or substitute 

statement showing the signature or an 

indication thereon that it was executed, 

is submitted in the continuing 

application. 

* * * * * 

■ 21. Section 1.76 is amended by 

revising paragraphs (a), (b)(5), and (b)(6) 

to read as follows: 

§ 1.76 Application data sheet. 

(a) Application data sheet. An 

application data sheet is a sheet or 

sheets that may be submitted in a 

provisional application under 35 U.S.C. 

111(b), a nonprovisional application 

under 35 U.S.C. 111(a), a 

nonprovisional international design 

application, or a national stage 

application under 35 U.S.C. 371 and 

must be submitted when required by 

§ 1.55 or 1.78 to claim priority to or the 

benefit of a prior-filed application under 

35 U.S.C. 119, 120, 121, 365, or 386. An 

application data sheet must be titled 

‘‘Application Data Sheet.’’ An 

application data sheet must contain all 

of the section headings listed in 

paragraph (b) of this section, except as 

provided in paragraph (c)(2) of this 

section, with any appropriate data for 

each section heading. If an application 

data sheet is provided, the application 

data sheet is part of the application for 

which it has been submitted. 

(b) * * * 

(5) Domestic benefit information. This 

information includes the application 

number, the filing date, the status 

(including patent number if available), 

and relationship of each application for 

which a benefit is claimed under 35 

U.S.C. 119(e), 120, 121, 365(c), or 

386(c). Providing this information in the 

application data sheet constitutes the 

specific reference required by 35 U.S.C. 

119(e) or 120 and § 1.78. 

(6) Foreign priority information. This 

information includes the application 

number, country (or intellectual 

property authority), and filing date of 

each foreign application for which 

priority is claimed. Providing this 

information in the application data 

sheet constitutes the claim for priority 

as required by 35 U.S.C. 119(b) and 

§ 1.55. 

* * * * * 

■ 22. Section 1.78 is revised to read as 

follows: 

§ 1.78 Claiming benefit of earlier filing date 

and cross-references to other applications. 

(a) Claims under 35 U.S.C. 119(e) for 

the benefit of a prior-filed provisional 


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application. An applicant in a 

nonprovisional application, other than 

for a design patent, or an international 

application designating the United 

States may claim the benefit of one or 

more prior-filed provisional 

applications under the conditions set 

forth in 35 U.S.C. 119(e) and this 

section. 

(1) The nonprovisional application or 

international application designating 

the United States must be: 

(i) Filed not later than twelve months 

after the date on which the provisional 

application was filed, subject to 

paragraph (b) of this section (a 

subsequent application); or 

(ii) Entitled to claim the benefit under 

35 U.S.C. 120, 121, or 365(c) of a 

subsequent application that was filed 

within the period set forth in paragraph 

(a)(1)(i) of this section. 

(2) Each prior-filed provisional 

application must name the inventor or 

a joint inventor named in the later-filed 

application as the inventor or a joint 

inventor. In addition, each prior-filed 

provisional application must be entitled 

to a filing date as set forth in § 1.53(c), 

and the basic filing fee set forth in 

§ 1.16(d) must have been paid for such 

provisional application within the time 

period set forth in § 1.53(g). 

(3) Any nonprovisional application or 

international application designating 

the United States that claims the benefit 

of one or more prior-filed provisional 

applications must contain, or be 

amended to contain, a reference to each 

such prior-filed provisional application, 

identifying it by the provisional 

application number (consisting of series 

code and serial number). If the laterfiled application is a nonprovisional 

application, the reference required by 

this paragraph must be included in an 

application data sheet (§ 1.76(b)(5)). 

(4) The reference required by 

paragraph (a)(3) of this section must 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 priorfiled provisional application. If the 

later-filed application is a 

nonprovisional application entering the 

national stage from an international 

application under 35 U.S.C. 371, this 

reference must also be submitted within 

the later of four months from the date 

on which the national stage commenced 

under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), 

four months from the date of the initial 

submission under 35 U.S.C. 371 to enter 

the national stage, or sixteen months 

from the filing date of the prior-filed 

provisional application. Except as 

provided in paragraph (c) of this 

section, failure to timely submit the 

reference is considered a waiver of any 

benefit under 35 U.S.C. 119(e) of the 

prior-filed provisional application. The 

time periods in this paragraph do not 

apply if the later-filed application is: 

(i) An application filed under 35 

U.S.C. 111(a) before November 29, 2000; 

or 

(ii) An international application filed 

under 35 U.S.C. 363 before November 

29, 2000. 

(5) If the prior-filed provisional 

application was filed in a language other 

than English and both an Englishlanguage 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 priorfiled provisional application, the 

translation and the statement. If the 

notice is mailed in a pending 

nonprovisional application, a timely 

reply to such a notice must include the 

filing in the nonprovisional application 

of either a confirmation that the 

translation and statement were filed in 

the provisional application, or an 

application data sheet (§ 1.76(b)(5)) 

eliminating the reference under 

paragraph (a)(3) of this section to the 

prior-filed provisional application, or 

the nonprovisional application will be 

abandoned. The translation and 

statement may be filed in the 

provisional application, even if the 

provisional application has become 

abandoned. 

(6) If a nonprovisional application 

filed on or after March 16, 2013, claims 

the benefit of the filing date of a 

provisional application filed prior to 

March 16, 2013, and also contains, or 

contained at any time, a claim to a 

claimed invention that has an effective 

filing date as defined in § 1.109 that is 

on or after March 16, 2013, the 

applicant must provide a statement to 

that effect within the later of four 

months from the actual filing date of the 

nonprovisional application, four months 

from the date of entry into the national 

stage as set forth in § 1.491 in an 

international application, sixteen 

months from the filing date of the priorfiled provisional application, or the date 

that a first claim to a claimed invention 

that has an effective filing date on or 

after March 16, 2013, is presented in the 

nonprovisional application. An 

applicant is not required to provide 

such a statement if the applicant 

reasonably believes on the basis of 

information already known to the 

individuals designated in § 1.56(c) that 

the nonprovisional application does not, 

and did not at any time, contain a claim 

to a claimed invention that has an 

effective filing date on or after March 

16, 2013. 

(b) Delayed filing of the subsequent 

nonprovisional application or 

international application designating 

the United States. If the subsequent 

nonprovisional application or 

international application designating 

the United States has a filing date which 

is after the expiration of the twelvemonth 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 

(§ 1.76(b)(5)) identifying it by 

provisional application number 

(consisting of series code and serial 

number), unless previously submitted; 

(ii) The petition fee as set forth in 

§ 1.17(m); and 

(iii) A statement that the delay in 

filing the subsequent nonprovisional 

application or international application 

designating the United States within the 

twelve-month period set forth in 

paragraph (a)(1)(i) of this section was 

unintentional. The Director may require 

additional information where there is a 

question whether the delay was 

unintentional. 

(2) The restoration of the right of 

priority under PCT Rule 26bis.3 to a 

provisional application does not affect 

the requirement to include the reference 

required by paragraph (a)(3) of this 

section to the provisional application in 

a national stage application under 35 

U.S.C. 371 within the time period 

provided by paragraph (a)(4) of this 

section to avoid the benefit claim being 

considered waived. 

(c) Delayed claims under 35 U.S.C. 

119(e) for the benefit of a prior-filed 


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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 priorfiled 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 priorfiled provisional application must be 

accompanied by: 

(1) The reference required by 35 

U.S.C. 119(e) and paragraph (a)(3) of 

this section to the prior-filed provisional 

application, unless previously 

submitted; 

(2) The petition fee as set forth in 

§ 1.17(m); and 

(3) A statement that the entire delay 

between the date the benefit claim was 

due under paragraph (a)(4) of this 

section and the date the benefit claim 

was filed was unintentional. The 

Director may require additional 

information where there is a question 

whether the delay was unintentional. 

(d) Claims under 35 U.S.C. 120, 121, 

365(c), or 386(c) for the benefit of a 

prior-filed nonprovisional application, 

international application, or 

international design application. An 

applicant in a nonprovisional 

application (including a nonprovisional 

application resulting from an 

international application or 

international design application), an 

international application designating 

the United States, or an international 

design application designating the 

United States may claim the benefit of 

one or more prior-filed copending 

nonprovisional applications, 

international applications designating 

the United States, or international 

design applications designating the 

United States under the conditions set 

forth in 35 U.S.C. 120, 121, 365(c), or 

386(c) and this section. 

(1) Each prior-filed application must 

name the inventor or a joint inventor 

named in the later-filed application as 

the inventor or a joint inventor. In 

addition, each prior-filed application 

must either be: 

(i) An international application 

entitled to a filing date in accordance 

with PCT Article 11 and designating the 

United States; 

(ii) An international design 

application entitled to a filing date in 

accordance with § 1.1023 and 

designating the United States; or 

(iii) A nonprovisional application 

under 35 U.S.C. 111(a) that is entitled to 

a filing date as set forth in § 1.53(b) or 

(d) for which the basic filing fee set 

forth in § 1.16 has been paid within the 

pendency of the application. 

(2) Except for a continued prosecution 

application filed under § 1.53(d), any 

nonprovisional application, 

international application designating 

the United States, or international 

design application designating the 

United States that claims the benefit of 

one or more prior-filed nonprovisional 

applications, international applications 

designating the United States, or 

international design applications 

designating the United States must 

contain or be amended to contain a 

reference to each such prior-filed 

application, identifying it by application 

number (consisting of the series code 

and serial number), international 

application number and international 

filing date, or international registration 

number and filing date under § 1.1023. 

If the later-filed application is a 

nonprovisional application, the 

reference required by this paragraph 

must be included in an application data 

sheet (§ 1.76(b)(5)). The reference also 

must identify the relationship of the 

applications, namely, whether the laterfiled application is a continuation, 

divisional, or continuation-in-part of the 

prior-filed nonprovisional application, 

international application, or 

international design application. 

(3)(i) The reference required by 35 

U.S.C. 120 and paragraph (d)(2) of this 

section must be submitted during the 

pendency of the later-filed application. 

(ii) If the later-filed application is an 

application filed under 35 U.S.C. 111(a), 

this reference must also be submitted 

within the later of four months from the 

actual filing date of the later-filed 

application or sixteen months from the 

filing date of the prior-filed application. 

If the later-filed application is a 

nonprovisional application entering the 

national stage from an international 

application under 35 U.S.C. 371, this 

reference must also be submitted within 

the later of four months from the date 

on which the national stage commenced 

under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), 

four months from the date of the initial 

submission under 35 U.S.C. 371 to enter 

the national stage, or sixteen months 

from the filing date of the prior-filed 

application. The time periods in this 

paragraph do not apply if the later-filed 

application is: 

(A) An application for a design patent; 

(B) An application filed under 35 

U.S.C. 111(a) before November 29, 2000; 

or 

(C) An international application filed 

under 35 U.S.C. 363 before November 

29, 2000. 

(iii) Except as provided in paragraph 

(e) of this section, failure to timely 

submit the reference required by 35 

U.S.C. 120 and paragraph (d)(2) of this 

section is considered a waiver of any 

benefit under 35 U.S.C. 120, 121, 365(c), 

or 386(c) to the prior-filed application. 

(4) The request for a continued 

prosecution application under § 1.53(d) 

is the specific reference required by 35 

U.S.C. 120 to the prior-filed application. 

The identification of an application by 

application number under this section is 

the identification of every application 

assigned that application number 

necessary for a specific reference 

required by 35 U.S.C. 120 to every such 

application assigned that application 

number. 

(5) Cross-references to other related 

applications may be made when 

appropriate (see § 1.14), but crossreferences to applications for which a 

benefit is not claimed under title 35, 

United States Code, must not be 

included in an application data sheet 

(§ 1.76(b)(5)). 

(6) If a nonprovisional application 

filed on or after March 16, 2013, other 

than a nonprovisional international 

design application, claims the benefit of 

the filing date of a nonprovisional 

application or an international 

application designating the United 

States filed prior to March 16, 2013, and 

also contains, or contained at any time, 

a claim to a claimed invention that has 

an effective filing date as defined in 

§ 1.109 that is on or after March 16, 

2013, the applicant must provide a 

statement to that effect within the later 

of four months from the actual filing 

date of the later-filed application, four 

months from the date of entry into the 

national stage as set forth in § 1.491 in 

an international application, sixteen 

months from the filing date of the priorfiled 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 § 1.55(k), 

paragraph (a)(6) of this section, or this 

paragraph that the application contains, 

or contained at any time, a claim to a 

claimed invention that has an effective 

filing date on or after March 16, 2013 

has been filed; or 

(ii) The applicant reasonably believes 

on the basis of information already 

known to the individuals designated in 

§ 1.56(c) that the later filed application 

does not, and did not at any time, 

contain a claim to a claimed invention 


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that has an effective filing date on or 

after March 16, 2013. 

(7) Where benefit is claimed under 35 

U.S.C. 120, 121, 365(c), or 386(c) to an 

international application or an 

international design application which 

designates but did not originate in the 

United States, the Office may require a 

certified copy of such application 

together with an English translation 

thereof if filed in another language. 

(e) Delayed claims under 35 U.S.C. 

120, 121, 365(c), or 386(c) for the benefit 

of a prior-filed nonprovisional 

application, international application, 

or international design application. If 

the reference required by 35 U.S.C. 120 

and paragraph (d)(2) of this section is 

presented after the time period provided 

by paragraph (d)(3) of this section, the 

claim under 35 U.S.C. 120, 121, 365(c), 

or 386(c) for the benefit of a prior-filed 

copending nonprovisional application, 

international application designating 

the United States, or international 

design application designating the 

United States may be accepted if the 

reference required by paragraph (d)(2) of 

this section was unintentionally 

delayed. A petition to accept an 

unintentionally delayed claim under 35 

U.S.C. 120, 121, 365(c), or 386(c) for the 

benefit of a prior-filed application must 

be accompanied by: 

(1) The reference required by 35 

U.S.C. 120 and paragraph (d)(2) of this 

section to the prior-filed application, 

unless previously submitted; 

(2) The petition fee as set forth in 

§ 1.17(m); and 

(3) A statement that the entire delay 

between the date the benefit claim was 

due under paragraph (d)(3) of this 

section and the date the benefit claim 

was filed was unintentional. The 

Director may require additional 

information where there is a question 

whether the delay was unintentional. 

(f) Applications containing patentably 

indistinct claims. Where two or more 

applications filed by the same applicant 

or assignee contain patentably indistinct 

claims, elimination of such claims from 

all but one application may be required 

in the absence of good and sufficient 

reason for their retention during 

pendency in more than one application. 

(g) Applications or patents under 

reexamination naming different 

inventors and containing patentably 

indistinct claims. If an application or a 

patent under reexamination and at least 

one other application naming different 

inventors are owned by the same person 

and contain patentably indistinct 

claims, and there is no statement of 

record indicating that the claimed 

inventions were commonly owned or 

subject to an obligation of assignment to 

the same person on the effective filing 

date (as defined in § 1.109), or on the 

date of the invention, as applicable, of 

the later claimed invention, the Office 

may require the applicant or assignee to 

state whether the claimed inventions 

were commonly owned or subject to an 

obligation of assignment to the same 

person on such date, and if not, indicate 

which named inventor is the prior 

inventor, as applicable. Even if the 

claimed inventions were commonly 

owned, or subject to an obligation of 

assignment to the same person on the 

effective filing date (as defined in 

§ 1.109), or on the date of the invention, 

as applicable, of the later claimed 

invention, the patentably indistinct 

claims may be rejected under the 

doctrine of double patenting in view of 

such commonly owned or assigned 

applications or patents under 

reexamination. 

(h) Applications filed before 

September 16, 2012. Notwithstanding 

the requirement in paragraphs (a)(3) and 

(d)(2) of this section that any specific 

reference to a prior-filed application be 

presented in an application data sheet 

(§ 1.76), this requirement in paragraph 

(a)(3) and (d)(2) of this section will be 

satisfied by the presentation of such 

specific reference in the first sentence(s) 

of the specification following the title in 

a nonprovisional application filed under 

35 U.S.C. 111(a) before September 16, 

2012, or resulting from an international 

application filed under 35 U.S.C. 363 

before September 16, 2012. The 

provisions of this paragraph do not 

apply to any specific reference 

submitted for a petition under 

paragraph (b) of this section to restore 

the benefit of a provisional application. 

(i) Petitions required in international 

applications. If a petition under 

paragraph (b), (c), or (e) of this section 

is required in an international 

application that was not filed with the 

United States Receiving Office and is 

not a nonprovisional application, then 

such petition may be filed in the earliest 

nonprovisional application that claims 

benefit under 35 U.S.C. 120, 121, 365(c), 

or 386(c) to the international application 

and will be treated as having been filed 

in the international application. 

(j) Benefit under 35 U.S.C. 386(c). 

Benefit under 35 U.S.C. 386(c) with 

respect to an international design 

application is applicable only to 

nonprovisional applications, 

international applications, and 

international design applications filed 

on or after May 13, 2015, and patents 

issuing thereon. 

(k) Time periods in this section. The 

time periods set forth in this section are 

not extendable, but are subject to 35 

U.S.C. 21(b) (and § 1.7(a)), PCT Rule 

80.5, and Hague Agreement Rule 4(4). 

■ 23. Section 1.84 is amended by 

revising paragraphs (a)(2) and (y) to read 

as follows: 

§ 1.84 Standards for drawings. 

(a) * * * 

(2) Color. Color drawings are 

permitted in design applications. Where 

a design application contains color 

drawings, the application must include 

the number of sets of color drawings 

required by paragraph (a)(2)(ii) of this 

section and the specification must 

contain the reference required by 

paragraph (a)(2)(iii) of this section. On 

rare occasions, color drawings may be 

necessary as the only practical medium 

by which to disclose the subject matter 

sought to be patented in a utility patent 

application. The color drawings must be 

of sufficient quality such that all details 

in the drawings are reproducible in 

black and white in the printed patent. 

Color drawings are not permitted in 

international applications (see PCT Rule 

11.13). The Office will accept color 

drawings in utility patent applications 

only after granting a petition filed under 

this paragraph explaining why the color 

drawings are necessary. Any such 

petition must include the following: 

(i) The fee set forth in § 1.17(h); 

(ii) One (1) set of color drawings if 

submitted via the Office electronic filing 

system or three (3) sets of color 

drawings if not submitted via the Office 

electronic filing system; and 

(iii) An amendment to the 

specification to insert (unless the 

specification contains or has been 

previously amended to contain) the 

following language as the first paragraph 

of the brief description of the drawings: 

The patent or application file contains 

at least one drawing executed in color. 

Copies of this patent or patent 

application publication with color 

drawing(s) will be provided by the 

Office upon request and payment of the 

necessary fee. 

* * * * * 

(y) Types of drawings. See § 1.152 for 

design drawings, § 1.1026 for 

international design reproductions, 

§ 1.165 for plant drawings, and 

§ 1.173(a)(2) for reissue drawings. 

■ 24. Section 1.85 is amended by 

revising paragraph (c) to read as follows: 

§ 1.85 Corrections to drawings. 

* * * * * 

(c) If a corrected drawing is required 

or if a drawing does not comply with 

§ 1.84 or an amended drawing 

submitted under § 1.121(d) in a 

nonprovisional international design 

application does not comply with 


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§ 1.1026 at the time an application is 

allowed, the Office may notify the 

applicant in a notice of allowability and 

set a three-month period of time from 

the mail date of the notice of 

allowability within which the applicant 

must file a corrected drawing in 

compliance with § 1.84 or 1.1026, as 

applicable, to avoid abandonment. This 

time period is not extendable under 

§ 1.136 (see § 1.136(c)). 

■ 25. Section 1.97 is amended by 

revising paragraphs (b)(3) and (4) and 

adding paragraph (b)(5) to read as 

follows: 

§ 1.97 Filing of information disclosure 

statement. 

* * * * * 

(b) * * * 

(3) Before the mailing of a first Office 

action on the merits; 

(4) Before the mailing of a first Office 

action after the filing of a request for 

continued examination under § 1.114; or 

(5) Within three months of the date of 

publication of the international 

registration under Hague Agreement 

Article 10(3) in an international design 

application. 

* * * * * 

■ 26. Section 1.105 is amended by 

revising the introductory text of 

paragraph (a)(1) to read as follows: 

§ 1.105 Requirements for information. 

(a)(1) In the course of examining or 

treating a matter in a pending or 

abandoned application, in a patent, or 

in a reexamination proceeding, 

including a reexamination proceeding 

ordered as a result of a supplemental 

examination proceeding, the examiner 

or other Office employee may require 

the submission, from individuals 

identified under § 1.56(c), or any 

assignee, of such information as may be 

reasonably necessary to properly 

examine or treat the matter, for example: 

* * * * * 

■ 27. Section 1.109 is revised to read as 

follows: 

§ 1.109 Effective filing date of a claimed 

invention under the Leahy-Smith America 

Invents Act. 

(a) The effective filing date for a 

claimed invention in a patent or 

application for patent, other than in a 

reissue application or reissued patent, is 

the earliest of: 

(1) The actual filing date of the patent 

or the application for the patent 

containing a claim to the invention; or 

(2) The filing date of the earliest 

application for which the patent or 

application is entitled, as to such 

invention, to a right of priority or the 

benefit of an earlier filing date under 35 

U.S.C. 119, 120, 121, 365, or 386. 

(b) The effective filing date for a 

claimed invention in a reissue 

application or a reissued patent is 

determined by deeming the claim to the 

invention to have been contained in the 

patent for which reissue was sought. 

■ 28. Section 1.114 is amended by 

revising paragraphs (e)(3) through (5) 

and adding paragraph (e)(6) to read as 

follows: 

§ 1.114 Request for continued 

examination. 

* * * * * 

(e) * * * 

(3) An international application filed 

under 35 U.S.C. 363 before June 8, 1995, 

or an international application that does 

not comply with 35 U.S.C. 371; 

(4) An application for a design patent; 

(5) An international design 

application; or 

(6) A patent under reexamination. 

■ 29. Section 1.121 is amended by 

revising paragraph (d) introductory text 

to read as follows: 

§ 1.121 Manner of making amendments in 

applications. 

* * * * * 

(d) Drawings. One or more application 

drawings shall be amended in the 

following manner: Any changes to an 

application drawing must be in 

compliance with § 1.84 or, for a 

nonprovisional international design 

application, in compliance with 

§§ 1.84(c) and 1.1026 and must be 

submitted on a replacement sheet of 

drawings which shall be an attachment 

to the amendment document and, in the 

top margin, labeled ‘‘Replacement 

Sheet.’’ Any replacement sheet of 

drawings shall include all of the figures 

appearing on the immediate prior 

version of the sheet, even if only one 

figure is amended. Any new sheet of 

drawings containing an additional 

figure must be labeled in the top margin 

as ‘‘New Sheet.’’ All changes to the 

drawings shall be explained, in detail, 

in either the drawing amendment or 

remarks section of the amendment 

paper. 

* * * * * 

■ 30. Section 1.130 is amended by 

revising paragraph (d) to read as 

follows: 

§ 1.130 Affidavit or declaration of 

attribution or prior public disclosure under 

the Leahy-Smith America Invents Act. 

* * * * * 

(d) Applications and patents to which 

this section is applicable. The 

provisions of this section apply to any 

application for patent, and to any patent 

issuing thereon, that contains, or 

contained at any time: 

(1) A claim to a claimed invention 

that has an effective filing date as 

defined in § 1.109 that is on or after 

March 16, 2013; or 

(2) A specific reference under 35 

U.S.C. 120, 121, 365(c), or 386(c) to any 

patent or application that contains, or 

contained at any time, a claim to a 

claimed invention that has an effective 

filing date as defined in § 1.109 that is 

on or after March 16, 2013. 

■ 31. Section 1.131 is amended by 

revising paragraph (d) to read as 

follows: 

§ 1.131 Affidavit or declaration of prior 

invention or to disqualify commonly owned 

patent or published application as prior art. 

* * * * * 

(d) The provisions of this section 

apply to any application for patent and 

to any patent issuing thereon, that 

contains, or contained at any time: 

(1) A claim to an invention that has 

an effective filing date as defined in 

§ 1.109 that is before March 16, 2013; or 

(2) A specific reference under 35 

U.S.C. 120, 121, 365(c), or 386(c) to any 

patent or application that contains, or 

contained at any time, a claim to an 

invention that has an effective filing 

date as defined in § 1.109 that is before 

March 16, 2013. 

* * * * * 

■ 32. Section 1.137 is amended by 

revising paragraphs (d)(1)(ii) and (d)(2) 

to read as follows: 

§ 1.137 Revival of abandoned application, 

or terminated or limited reexamination 

prosecution. 

* * * * * 

(d) * * * 

(1) * * * 

(ii) The period extending beyond 

twenty years from the date on which the 

application for the patent was filed in 

the United States or, if the application 

contains a specific reference to an 

earlier filed application(s) under 35 

U.S.C. 120, 121, 365(c), or 386(c) from 

the date on which the earliest such 

application was filed. 

(2) Any terminal disclaimer pursuant 

to paragraph (d)(1) of this section must 

also apply to any patent granted on a 

continuing utility or plant application 

filed before June 8, 1995, or a 

continuing design application, that 

contains a specific reference under 35 

U.S.C. 120, 121, 365(c), or 386(c) to the 

application for which revival is sought. 

* * * * * 

■ 33. Section 1.155 is amended by 

revising paragraph (a)(1) to read as 

follows: 

§ 1.155 Expedited examination of design 

applications. 

(a) * * * 


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(1) The application must include 

drawings in compliance with § 1.84, or 

for an international design application 

that designates the United States, must 

have been published pursuant to Hague 

Agreement Article 10(3); 

* * * * * 

■ 34. Section 1.175 is amended by 

revising paragraph (f)(1) introductory 

text to read as follows: 

§ 1.175 Inventor’s oath or declaration for a 

reissue application. 

* * * * * 

(f)(1) The requirement for the 

inventor’s oath or declaration for a 

continuing reissue application that 

claims the benefit under 35 U.S.C. 120, 

121, 365(c), or 386(c) in compliance 

with § 1.78 of an earlier-filed reissue 

application may be satisfied by a copy 

of the inventor’s oath or declaration 

from the earlier-filed reissue 

application, provided that: 

* * * * * 

■ 35. Section 1.211 is amended by 

revising paragraph (b) to read as follows: 

§ 1.211 Publication of applications. 

* * * * * 

(b) Provisional applications under 35 

U.S.C. 111(b) shall not be published, 

and design applications under 35 U.S.C. 

chapter 16, international design 

applications under 35 U.S.C. chapter 38, 

and reissue applications under 35 

U.S.C. chapter 25 shall not be published 

under this section. 

* * * * * 

■ 36. Subpart I to part 1 is added to read 

as follows: 

Subpart I—International Design Application 

General Information 

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 

§ 1.1001 Definitions related to international 

design applications. 

(a) Article as used in this subpart 

means an article of the Hague 

Agreement; 

(b) Regulations as used in this 

subpart, when capitalized, means the 

‘‘Common Regulations Under the 1999 

Act and the 1960 Act of the Hague 

Agreement’’; 

(c) Rule as used in this subpart, when 

capitalized, means one of the 

Regulations; 

(d) Administrative Instructions as 

used in this subpart means the 

Administrative Instructions referred to 

in Rule 34; 

(e) 1960 Act as used in this subpart 

means the Act signed at the Hague on 

November 28, 1960, of the Hague 

Agreement; 

(f) Other terms and expressions in 

subpart I not defined in this section are 

as defined in Article 1, Rule 1, and 35 

U.S.C. 381. 

§ 1.1002 The United States Patent and 

Trademark Office as an office of indirect 

filing. 

(a) The United States Patent and 

Trademark Office, as an office of 

indirect filing, shall accept international 

design applications where the 

applicant’s Contracting Party is the 

United States. 

(b) The major functions of the United 

States Patent and Trademark Office as 

an office of indirect filing include: 

(1) Receiving and according a receipt 

date to international design 

applications; 

(2) Collecting and, when required, 

transmitting fees due for processing 

international design applications; 

(3) Determining compliance with 

applicable requirements of part 5 of this 

chapter; and 

(4) Transmitting an international 

design application to the International 

Bureau, unless prescriptions concerning 

national security prevent the 

application from being transmitted. 

§ 1.1003 The United States Patent and 

Trademark Office as a designated office. 

(a) The United States Patent and 

Trademark Office will act as a 

designated office (‘‘United States 

Designated Office’’) for international 

design applications in which the United 

States has been designated as a 

Contracting Party in which protection is 

sought. 

(b) The major functions of the United 

States Designated Office include: 

(1) Accepting for national 

examination international design 

applications which satisfy the 

requirements of the Hague Agreement, 

the Regulations, and the regulations; 

(2) Performing an examination of the 

international design application in 

accordance with 35 U.S.C. chapter 16; 

and 

(3) Communicating the results of 

examination to the International Bureau. 

§ 1.1004 The International Bureau. 

(a) The International Bureau is the 

World Intellectual Property 

Organization located at Geneva, 

Switzerland. It is the international 

intergovernmental organization which 

acts as the coordinating body under the 

Hague Agreement and the Regulations. 

(b) The major functions of the 

International Bureau include: 

(1) Receiving international design 

applications directly from applicants 

and indirectly from an office of indirect 

filing; 


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(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. 

§ 1.1005 Display of currently valid control 

number under the Paperwork Reduction 

Act. 

(a) Pursuant to the Paperwork 

Reduction Act of 1995 (44 U.S.C. 3501 

et seq.), the collection of information in 

this subpart has been reviewed and 

approved by the Office of Management 

and Budget under control number 0651– 

0075. 

(b) Notwithstanding any other 

provision of law, no person is required 

to respond to nor shall a person be 

subject to a penalty for failure to comply 

with a collection of information subject 

to the requirements of the Paperwork 

Reduction Act unless that collection of 

information displays a currently valid 

Office of Management and Budget 

control number. This section constitutes 

the display required by 44 U.S.C. 

3512(a) and 5 CFR 1320.5(b)(2)(i) for the 

collection of information under Office of 

Management and Budget control 

number 0651–0075 (see 5 CFR 

1320.5(b)(2)(ii)(D)). 

Who May File an International Design 

Application 

§ 1.1011 Applicant for international design 

application. 

(a) Only persons who are nationals of 

the United States or who have a 

domicile, a habitual residence, or a real 

and effective industrial or commercial 

establishment in the territory of the 

United States may file international 

design applications through the United 

States Patent and Trademark Office. 

(b) Although the United States Patent 

and Trademark Office will accept 

international design applications filed 

by any person referred to in paragraph 

(a) of this section, an international 

design application designating the 

United States may be refused by the 

Office as a designated office if the 

applicant is not a person qualified 

under 35 U.S.C. chapter 11 to be an 

applicant. 

§ 1.1012 Applicant’s Contracting Party. 

In order to file an international design 

application through the United States 

Patent and Trademark Office as an office 

of indirect filing, the United States must 

be applicant’s Contracting Party 

(Articles 4 and 1(xiv)). 

The International Design Application 

§ 1.1021 Contents of the international 

design application. 

(a) Mandatory contents. The 

international design application shall be 

in English, French, or Spanish (Rule 

6(1)) and shall contain or be 

accompanied by: 

(1) A request for international 

registration under the Hague Agreement 

(Article 5(1)(i)); 

(2) The prescribed data concerning 

the applicant (Article 5(1)(ii) and Rule 

7(3)(i) and (ii)); 

(3) The prescribed number of copies 

of a reproduction or, at the choice of the 

applicant, of several different 

reproductions of the industrial design 

that is the subject of the international 

design application, presented in the 

prescribed manner; however, where the 

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, 


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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 (§§ 1.1021(b)(1)(iii) and 

1.1025); 

(2) Indications concerning the identity 

of the creator (i.e., the inventor, see 

§ 1.9(d)) in accordance with Rule 11(1); 

and 

(3) The inventor’s oath or declaration 

(§§ 1.63 and 1.64). The requirements in 

§§ 1.63(b) and 1.64(b)(4) to identify each 

inventor by his or her legal name, 

mailing address, and residence, if an 

inventor lives at a location which is 

different from the mailing address, and 

the requirement in § 1.64(b)(2) to 

identify the residence and mailing 

address of the person signing the 

substitute statement will be considered 

satisfied by the presentation of such 

information in the international design 

application prior to international 

registration. 

§ 1.1022 Form and signature. 

(a) The international design 

application shall be presented on the 

official form (Rules 7(1) and 1(vi)). 

(b) The international design 

application shall be signed by the 

applicant. 

§ 1.1023 Filing date of an international 

design application in the United States. 

(a) Subject to paragraph (b) of this 

section, the filing date of an 

international design application in the 

United States is the date of international 

registration determined by the 

International Bureau under the Hague 

Agreement (35 U.S.C. 384 and 

381(a)(5)). 

(b) Where the applicant believes the 

international design application is 

entitled under the Hague Agreement to 

a filing date in the United States other 

than the date of international 

registration, the applicant may petition 

the Director under this paragraph to 

accord the international design 

application a filing date in the United 

States other than the date of 

international registration. Such petition 

must be accompanied by the fee set 

forth in § 1.17(f) and include a showing 

to the satisfaction of the Director that 

the international design application is 

entitled to such filing date. 

§ 1.1024 The description. 

An international design application 

designating the United States must 

include a specification as prescribed by 

35 U.S.C. 112 and preferably include a 

brief description of the reproduction 

pursuant to Rule 7(5)(a) describing the 

view or views of the reproductions. 

§ 1.1025 The claim. 

The specific wording of the claim in 

an international design application 

designating the United States shall be in 

formal terms to the ornamental design 

for the article (specifying name of 

article) as shown, or as shown and 

described. More than one claim is 

neither required nor permitted for 

purposes of the United States. 

§ 1.1026 Reproductions. 

Reproductions shall comply with the 

requirements of Rule 9 and Part Four of 

the Administrative Instructions. 

§ 1.1027 Specimens. 

Where a request for deferment of 

publication has been filed in respect of 

a two-dimensional industrial design, the 

international design application may 

include specimens of the design in 

accordance with Rule 10 and Part Four 

of the Administrative Instructions. 

Specimens are not permitted in an 

international design application that 

designates the United States or any 

other Contracting Party which does not 

permit deferment of publication. 

§ 1.1028 Deferment of publication. 

The international design application 

may contain a request for deferment of 

publication, provided the application 

does not designate the United States or 

any other Contracting Party which does 

not permit deferment of publication. 

Fees 

§ 1.1031 International design application 

fees. 

(a) International design applications 

filed through the Office as an office of 

indirect filing are subject to payment of 

a transmittal fee (35 U.S.C. 382(b) and 

Article 4(2)) in the amount of $120. 

(b) The Schedule of Fees annexed to 

the Regulations (Rule 27(1)), a list of 

individual designation fee amounts, and 

a fee calculator may be viewed on the 

Web site of the World Intellectual 

Property Organization, currently 

available at http://www.wipo.int/hague. 

(c) The following fees required by the 

International Bureau may be paid either 

directly to the International Bureau or 

through the Office as an office of 

indirect filing in the amounts specified 

on the World Intellectual Property 

Organization Web site described in 

paragraph (b) of this section: 

(1) International application fees 

(Rule 12(1)); and 

(2) Fee for descriptions exceeding 100 

words (Rule 11(2)). 

(d) The fees referred to in paragraph 

(c) of this section may be paid as 

follows: 

(1) Directly to the International 

Bureau in Swiss currency (see 

Administrative Instruction 801); or 

(2) Through the Office as an office of 

indirect filing, provided such fees are 

paid no later than the date of payment 

of the transmittal fee required under 

paragraph (a) of this section. Any 

payment through the Office must be in 

U.S. dollars. Applicants paying the fees 

in paragraph (c) of this section through 

the Office may be subject to a 

requirement by the International Bureau 

to pay additional amounts where the 

conversion from U.S. dollars to Swiss 

currency results in the International 

Bureau receiving less than the 

prescribed amounts. 

(e) Payment of the fees referred to in 

Article 17 and Rule 24 for renewing an 

international registration (‘‘renewal 

fees’’) is not required to maintain a U.S. 

patent issuing on an international 

design application in force. Renewal 

fees, if required, must be submitted 

directly to the International Bureau. 

Any renewal fee submitted to the Office 

will not be transmitted to the 

International Bureau. 

Representation 

§ 1.1041 Representation in an international 

design application. 

(a) The applicant may appoint a 

representative before the International 

Bureau in accordance with Rule 3. 

(b) Applicants of international design 

applications may be represented before 

the Office as an office of indirect filing 

by a practitioner registered (§ 11.6) or 

granted limited recognition (§ 11.9(a) or 

(b)) to practice before the Office in 

patent matters. Such practitioner may 

act pursuant to § 1.34 or pursuant to 

appointment by the applicant. The 

appointment must be in writing signed 


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by the applicant, must give the 

practitioner power to act on behalf of 

the applicant, and must specify the 

name and registration number or limited 

recognition number of each practitioner. 

An appointment of a representative 

made in the international design 

application pursuant to Rule 3(2) that 

complies with the requirements of this 

paragraph will be effective as an 

appointment before the Office as an 

office of indirect filing. 

§ 1.1042 Correspondence respecting 

international design applications filed with 

the Office as an office of indirect filing. 

The applicant may specify a 

correspondence address for 

correspondence sent by the Office as an 

office of indirect filing. Where no such 

address has been specified, the Office 

will use as the correspondence address 

the address of applicant’s appointed 

representative (§ 1.1041) or, where no 

representative is appointed, the address 

as specified in Administrative 

Instruction 302. 

Transmittal of International Design 

Application to the International Bureau 

§ 1.1045 Procedures for transmittal of 

international design application to the 

International Bureau. 

(a) Subject to paragraph (b) of this 

section and payment of the transmittal 

fee set forth in § 1.1031(a), transmittal of 

the international design application to 

the International Bureau shall be made 

by the Office as provided by Rule 13(1). 

At the same time as it transmits the 

international design application to the 

International Bureau, the Office shall 

notify the International Bureau of the 

date on which it received the 

application. The Office shall also notify 

the applicant of the date on which it 

received the application and of the 

transmittal of the international design 

application to the International Bureau. 

(b) No copy of an international design 

application may be transmitted to the 

International Bureau, a foreign 

designated office, or other foreign 

authority by the Office or the applicant, 

unless the applicable requirements of 

part 5 of this chapter have been 

satisfied. 

(c) Once transmittal of the 

international design application has 

been effected under paragraph (a) of this 

section, except for matters properly 

before the United States Patent and 

Trademark Office as an office of indirect 

filing or as a designated office, all 

further correspondence concerning the 

application should be sent directly to 

the International Bureau. The United 

States Patent and Trademark Office will 

generally not forward communications 

to the International Bureau received 

after transmittal of the application to the 

International Bureau. Any reply to an 

invitation sent to the applicant by the 

International Bureau must be filed 

directly with the International Bureau, 

and not with the Office, to avoid 

abandonment or other loss of rights 

under Article 8. 

Relief From Prescribed Time Limits; 

Conversion to a Design Application 

Under 35 U.S.C. Chapter 16 

§ 1.1051 Relief from prescribed time limits. 

(a) If the delay in an applicant’s 

failure to act within prescribed time 

limits under the Hague Agreement in 

connection with requirements 

pertaining to an international design 

application was unintentional, a 

petition may be filed pursuant to this 

section to excuse the failure to act as to 

the United States. A grantable petition 

pursuant to this section must be 

accompanied by: 

(1) A copy of any invitation sent from 

the International Bureau setting a 

prescribed time limit for which 

applicant failed to timely act; 

(2) The reply required under 

paragraph (c) of this section, unless 

previously filed; 

(3) The fee as set forth in § 1.17(m); 

(4) A certified copy of the originally 

filed international design application, 

unless a copy of the international design 

application was previously 

communicated to the Office from the 

International Bureau or the international 

design application was filed with the 

Office as an office of indirect filing, and 

a translation thereof into the English 

language if it was filed in another 

language; 

(5) A statement that the entire delay 

in filing the required reply from the due 

date for the reply until the filing of a 

grantable petition pursuant to this 

paragraph was unintentional. The 

Director may require additional 

information where there is a question 

whether the delay was unintentional; 

and 

(6) A terminal disclaimer (and fee as 

set forth in § 1.20(d)) required pursuant 

to paragraph (d) of this section. 

(b) Any request for reconsideration or 

review of a decision refusing to excuse 

the applicant’s failure to act within 

prescribed time limits in connection 

with requirements pertaining to an 

international design application upon 

petition filed pursuant to this section, to 

be considered timely, must be filed 

within two months of the decision 

refusing to excuse or within such time 

as set in the decision. Unless a decision 

indicates otherwise, this time period 

may be extended under the provisions 

of § 1.136. 

(c) Reply. The reply required may be: 

(1) The filing of a continuing 

application. If the international design 

application has not been subject to 

international registration, the reply must 

also include a grantable petition under 

§ 1.1023(b) to accord the international 

design application a filing date; or 

(2) A grantable petition under 

§ 1.1052, where the international design 

application was filed with the Office as 

an office of indirect filing. 

(d) Terminal disclaimer. Any petition 

pursuant to this section must be 

accompanied by a terminal disclaimer 

and fee as set forth in § 1.321 dedicating 

to the public a terminal part of the term 

of any patent granted thereon equivalent 

to the period beginning on the due date 

for the reply for which applicant failed 

to timely act and ending on the date of 

filing of the reply required under 

paragraph (c) of this section and must 

also apply to any patent granted on a 

continuing design application that 

contains a specific reference under 35 

U.S.C. 120, 121, 365(c) or 386(c) to the 

application for which relief under this 

section is sought. 

§ 1.1052 Conversion to a design 

application under 35 U.S.C. chapter 16. 

(a) An international design 

application designating the United 

States filed with the Office as an office 

of indirect filing and meeting the 

requirements under § 1.53(b) for a filing 

date for an application for a design 

patent may, on petition under this 

section, be converted to an application 

for a design patent under § 1.53(b) and 

accorded a filing date as provided 

therein. A petition under this section 

must be accompanied by the fee set 

forth in § 1.17(t) and be filed prior to 

publication of the international 

registration under Article 10(3). The 

conversion of an international design 

application to an application for a 

design patent under § 1.53(b) will not 

entitle applicant to a refund of the 

transmittal fee or any fee forwarded to 

the International Bureau, or the 

application of any such fee toward the 

filing fee, or any other fee, for the 

application for a design patent under 

§ 1.53(b). The application for a design 

patent resulting from conversion of an 

international design application must 

also include the basic filing fee 

(§ 1.16(b)), the search fee (§ 1.16(l)), the 

examination fee (§ 1.16(p)), the 

inventor’s oath or declaration (§ 1.63 or 

1.64), and a surcharge if required by 

§ 1.16(f). 

(b) An international design 

application will be converted to an 


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application for a design patent under 

§ 1.53(b) if a decision on petition under 

this section is granted prior to 

transmittal of the international design 

application to the International Bureau 

pursuant to § 1.1045. Otherwise, a 

decision granting a petition under this 

section will be effective to convert the 

international design application to an 

application for a design patent under 

§ 1.53(b) only for purposes of the 

designation of the United States. 

(c) A petition under this section will 

not be granted in an abandoned 

international design application absent 

a grantable petition under § 1.1051. 

(d) An international design 

application converted under this section 

is subject to the regulations applicable 

to a design application filed under 35 

U.S.C. chapter 16. 

National Processing of International 

Design Applications 

§ 1.1061 Rules applicable. 

(a) The rules relating to applications 

for patents for other inventions or 

discoveries are also applicable to 

international design applications 

designating the United States, except as 

otherwise provided in this chapter or 

required by the Articles or Regulations. 

(b) The provisions of § 1.74, § 1.84, 

except for § 1.84(c), and §§ 1.152 

through 1.154 shall not apply to 

international design applications. 

§ 1.1062 Examination. 

(a) Examination. The Office shall 

make an examination pursuant to title 

35, United States Code, of an 

international design application 

designating the United States. 

(b) Timing. For each international 

design application to be examined 

under paragraph (a) of this section, the 

Office shall, subject to Rule 18(1)(c)(ii), 

send to the International Bureau within 

12 months from the publication of the 

international registration under Rule 

26(3) a notification of refusal (§ 1.1063) 

where it appears that the applicant is 

not entitled to a patent under the law 

with respect to any industrial design 

that is the subject of the international 

registration. 

§ 1.1063 Notification of refusal. 

(a) A notification of refusal shall 

contain or indicate: 

(1) The number of the international 

registration; 

(2) The grounds on which the refusal 

is based; 

(3) A copy of a reproduction of the 

earlier industrial design and 

information concerning the earlier 

industrial design, where the grounds of 

refusal refer to similarity with an 

industrial design that is the subject of an 

earlier application or registration; 

(4) Where the refusal does not relate 

to all the industrial designs that are the 

subject of the international registration, 

those to which it relates or does not 

relate; and 

(5) A time period for reply under 

§§ 1.134 and 1.136, where a reply to the 

notification of refusal is required. 

(b) Any reply to the notification of 

refusal must be filed directly with the 

Office and not through the International 

Bureau. The requirements of § 1.111 

shall apply to a reply to a notification 

of refusal. 

§ 1.1064 One independent and distinct 

design. 

(a) Only one independent and distinct 

design may be claimed in a 

nonprovisional international design 

application. 

(b) If the requirements under 

paragraph (a) of this section are not 

satisfied, the examiner shall in the 

notification of refusal or other Office 

action require the applicant in the reply 

to that action to elect one independent 

and distinct design for which 

prosecution on the merits shall be 

restricted. Such requirement will 

normally be made before any action on 

the merits but may be made at any time 

before the final action. Review of any 

such requirement is provided under 

§§ 1.143 and 1.144. 

§ 1.1065 Corrections and other changes in 

the International Register. 

(a) The effects of any correction in the 

International Register by the 

International Bureau pursuant to Rule 

22 in a pending nonprovisional 

international design application shall be 

decided by the Office in accordance 

with the merits of each situation, subject 

to such other requirements as may be 

imposed. A patent issuing from an 

international design application may 

only be corrected in accordance with 

the provisions of title 35, United States 

Code, for correcting patents. Any 

correction under Rule 22 recorded by 

the International Bureau with respect to 

an abandoned nonprovisional 

international design application will 

generally not be acted upon by the 

Office and shall not be given effect 

unless otherwise indicated by the 

Office. 

(b) A recording of a partial change in 

ownership in the International Register 

pursuant to Rule 21(7) concerning a 

transfer of less than all designs shall not 

have effect in the United States. 

§ 1.1066 Correspondence address for a 

nonprovisional international design 

application. 

(a) Unless the correspondence address 

is changed in accordance with § 1.33(a), 

the Office will use as the 

correspondence address in a 

nonprovisional international design 

application the address according to the 

following order: 

(1) The correspondence address under 

§ 1.1042; 

(2) The address of applicant’s 

representative identified in the 

publication of the international 

registration; and 

(3) The address of the applicant 

identified in the publication of the 

international registration. 

(b) Reference in the rules to the 

correspondence address set forth in 

§ 1.33(a) shall be construed to include a 

reference to this section for a 

nonprovisional international design 

application. 

§ 1.1067 Title, description, and inventor’s 

oath or declaration. 

(a) The title of the design must 

designate the particular article. Where a 

nonprovisional international design 

application does not contain a title of 

the design, the Office may establish a 

title. No description, other than a 

reference to the drawing, is ordinarily 

required in a nonprovisional 

international design application. 

(b) An international design 

application designating the United 

States must include the inventor’s oath 

or declaration. See § 1.1021(d). If the 

applicant is notified in a notice of 

allowability that an oath or declaration 

in compliance with § 1.63, or substitute 

statement in compliance with § 1.64, 

executed by or with respect to each 

named inventor has not been filed, the 

applicant must file each required oath 

or declaration in compliance with 

§ 1.63, or substitute statement in 

compliance with § 1.64, no later than 

the date on which the issue fee is paid 

to avoid abandonment. This time period 

is not extendable under § 1.136 (see 

§ 1.136(c)). 

§ 1.1068 Statement of grant of protection. 

Upon issuance of a patent on an 

international design application 

designating the United States, the Office 

may send to the International Bureau a 

statement to the effect that protection is 

granted in the United States to those 

industrial design or designs that are the 

subject of the international registration 

and covered by the patent. 

§ 1.1070 Notification of Invalidation. 

(a) Where a design patent that was 

granted from an international design 


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application is invalidated in the United 

States, and the invalidation is no longer 

subject to any review or appeal, the 

patentee shall inform the Office. 

(b) After receiving a notification of 

invalidation under paragraph (a) of this 

section or through other means, the 

Office will notify the International 

Bureau in accordance with Hague Rule 

20. 

§ 1.1071 Grant of protection for an 

industrial design only upon issuance of a 

patent. 

A grant of protection for an industrial 

design that is the subject of an 

international registration shall only 

arise in the United States through the 

issuance of a patent pursuant to 35 

U.S.C. 389(d) or 171, and in accordance 

with 35 U.S.C. 153. 

PART 3—ASSIGNMENT, RECORDING 

AND RIGHTS OF ASSIGNEE 

■ 37. The authority citation for part 3 

continues to read as follows: 

Authority: 15 U.S.C. 1123; 35 U.S.C. 

2(b)(2). 

■ 38. Section 3.1 is amended by revising 

the definition of ‘‘Application’’ to read 

as follows: 

§ 3.1 Definitions. 

* * * * * 

Application means a national 

application for patent, an international 

patent application that designates the 

United States of America, an 

international design application that 

designates the United States of America, 

or an application to register a trademark 

under section 1 or 44 of the Trademark 

Act, 15 U.S.C. 1051, or 15 U.S.C. 1126, 

unless otherwise indicated. 

* * * * * 

■ 39. Section 3.21 is revised to read as 

follows: 

§ 3.21 Identification of patents and patent 

applications. 

An assignment relating to a patent 

must identify the patent by the patent 

number. An assignment relating to a 

national patent application must 

identify the national patent application 

by the application number (consisting of 

the series code and the serial number; 

e.g., 07/123,456). An assignment 

relating to an international patent 

application which designates the United 

States of America must identify the 

international application by the 

international application number; e.g., 

PCT/US2012/012345. An assignment 

relating to an international design 

application which designates the United 

States of America must identify the 

international design application by the 

international registration number or by 

the U.S. application number assigned to 

the international design application. If 

an assignment of a patent application 

filed under § 1.53(b) of this chapter is 

executed concurrently with, or 

subsequent to, the execution of the 

patent application, but before the patent 

application is filed, it must identify the 

patent application by the name of each 

inventor and the title of the invention so 

that there can be no mistake as to the 

patent application intended. If an 

assignment of a provisional application 

under § 1.53(c) of this chapter is 

executed before the provisional 

application is filed, it must identify the 

provisional application by the name of 

each inventor and the title of the 

invention so that there can be no 

mistake as to the provisional application 

intended. 

PART 5—SECRECY OF CERTAIN 

INVENTIONS AND LICENSES TO 

EXPORT AND FILE APPLICATIONS IN 

FOREIGN COUNTRIES 

■ 40. The authority citation for 37 CFR 

part 5 continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2), 41, 181–188, 

as amended by the Patent Law Foreign Filing 

Amendments Act of 1988, Pub. L. 100–418, 

102 Stat. 1567; the Arms Export Control Act, 

as amended, 22 U.S.C. 2751 et seq.; the 

Atomic Energy Act of 1954, as amended, 42 

U.S.C. 2011 et seq.; the Nuclear Non 

Proliferation Act of 1978, 22 U.S.C. 3201 et 

seq.; and the delegations in the regulations 

under these Acts to the Director (15 CFR 

370.10(j), 22 CFR 125.04, and 10 CFR 810.7), 

as well as the Export Administration Act of 

1979, 50 U.S.C. app. 2401 et seq.; the 

International Emergency Economic Powers 

Act, 50 U.S.C. 1701 et seq.; E.O. 12938, 59 

FR 59099, 3 CFR, 1994 Comp., p. 950; E.O. 

1322, 66 FR 44025, 3 CFR, 2001 Comp., p. 

783; Notice of August 2, 2005, 70 FR 45273 

(August 5, 2005). 

■ 41. Section 5.1 is amended by revising 

paragraph (b) to read as follows: 

§ 5.1 Applications and correspondence 

involving national security. 

* * * * * 

(b) Definitions. (1) Application as 

used in this part includes provisional 

applications (§ 1.9(a)(2) of this chapter), 

nonprovisional applications (§ 1.9(a)(3)), 

international applications (§ 1.9(b)), or 

international design applications 

(§ 1.9(n)). 

(2) Foreign application as used in this 

part includes, for filing in a foreign 

country, foreign patent office, foreign 

patent agency, or international agency 

(other than the United States Patent and 

Trademark Office acting as a Receiving 

Office for international applications (35 

U.S.C. 361, § 1.412) or as an office of 

indirect filing for international design 

applications (35 U.S.C. 382, § 1.1002)) 

any of the following: An application for 

patent, international application, 

international design application, or 

application for the registration of a 

utility model, industrial design, or 

model. 

* * * * * 

■ 42. Section 5.3 is amended by revising 

paragraph (d) to read as follows: 

§ 5.3 Prosecution of application under 

secrecy orders; withholding patent. 

* * * * * 

(d) International applications and 

international design applications under 

secrecy order will not be mailed, 

delivered, or otherwise transmitted to 

the international authorities or the 

applicant. International applications 

under secrecy order will be processed 

up to the point where, if it were not for 

the secrecy order, record and search 

copies would be transmitted to the 

international authorities or the 

applicant. 

* * * * * 

■ 43. Section 5.11 is amended by 

revising the section heading and 

paragraphs (a) through (c), (e)(3)(i), and 

(f) to read as follows: 

§ 5.11 License for filing in, or exporting to, 

a foreign country an application on an 

invention made in the United States or 

technical data relating thereto. 

(a) A license from the Commissioner 

for Patents under 35 U.S.C. 184 is 

required before filing any application 

for patent including any modifications, 

amendments, or supplements thereto or 

divisions thereof or for the registration 

of a utility model, industrial design, or 

model, in a foreign country, foreign 

patent office, foreign patent agency, or 

any international agency (other than the 

United States Patent and Trademark 

Office acting as a Receiving Office for 

international applications (35 U.S.C. 

361, § 1.412) or as an office of indirect 

filing for international design 

applications (35 U.S.C. 382, § 1.1002)), 

if the invention was made in the United 

States, and: 

(1) An application on the invention 

has been filed in the United States less 

than six months prior to the date on 

which the application is to be filed; or 

(2) No application on the invention 

has been filed in the United States. 

(b) The license from the 

Commissioner for Patents referred to in 

paragraph (a) of this section would also 

authorize the export of technical data 

abroad for purposes relating to the 

preparation, filing or possible filing and 

prosecution of a foreign application 

without separately complying with the 


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17970 Federal Register / Vol. 80, No. 63 / Thursday, April 2, 2015 / Rules and Regulations 

regulations contained in 22 CFR parts 

120 through 130 (International Traffic in 

Arms Regulations of the Department of 

State), 15 CFR parts 730 through 774 

(Export Administration Regulations of 

the Bureau of Industry and Security, 

Department of Commerce), and 10 CFR 

part 810 (Assistance to Foreign Atomic 

Energy Activities Regulations of the 

Department of Energy). 

(c) Where technical data in the form 

of a patent application, or in any form, 

are being exported for purposes related 

to the preparation, filing or possible 

filing and prosecution of a foreign 

application, without the license from 

the Commissioner for Patents referred to 

in paragraphs (a) or (b) of this section, 

or on an invention not made in the 

United States, the export regulations 

contained in 22 CFR parts 120 through 

130 (International Traffic in Arms 

Regulations of the Department of State), 

15 CFR parts 730 through 774 (Export 

Administration Regulations of the 

Bureau of Industry and Security, 

Department of Commerce), and 10 CFR 

part 810 (Assistance to Foreign Atomic 

Energy Activities Regulations of the 

Department of Energy) must be 

complied with unless a license is not 

required because a United States 

application was on file at the time of 

export for at least six months without a 

secrecy order under § 5.2 being placed 

thereon. The term ‘‘exported’’ means 

export as it is defined in 22 CFR part 

120, 15 CFR part 734, and activities 

covered by 10 CFR part 810. 

* * * * * 

(e) * * * 

(3) * * * 

(i) A license is not, or was not, 

required under paragraph (e)(2) of this 

section for the foreign application; 

* * * * * 

(f) A license pursuant to paragraph (a) 

of this section can be revoked at any 

time upon written notification by the 

United States Patent and Trademark 

Office. An authorization to file a foreign 

application resulting from the passage of 

six months from the date of filing of a 

United States patent application may be 

revoked by the imposition of a secrecy 

order. 

■ 44. Section 5.12 is amended by 

revising paragraph (a) to read as follows: 

§ 5.12 Petition for license. 

(a) Filing of an application on an 

invention made in the United States 

will be considered to include a petition 

for license under 35 U.S.C. 184 for the 

subject matter of the application. The 

filing receipt or other official notice will 

indicate if a license is granted. If the 

initial automatic petition is not granted, 

a subsequent petition may be filed 

under paragraph (b) of this section. 

* * * * * 

■ 45. Section 5.13 is revised to read as 

follows: 

§ 5.13 Petition for license; no 

corresponding application. 

If no corresponding national, 

international design, or international 

application has been filed in the United 

States, the petition for license under 

§ 5.12(b) must also be accompanied by 

a legible copy of the material upon 

which a license is desired. This copy 

will be retained as a measure of the 

license granted. 

■ 46. Section 5.14 is amended by 

revising paragraph (c) to read as follows: 

§ 5.14 Petition for license; corresponding 

U.S. application. 

* * * * * 

(c) Where the application to be filed 

or exported abroad contains matter not 

disclosed in the United States 

application or applications, including 

the case where the combining of two or 

more United States applications 

introduces subject matter not disclosed 

in any of them, a copy of the application 

as it is to be filed or exported abroad, 

must be furnished with the petition. If, 

however, all new matter in the 

application to be filed or exported is 

readily identifiable, the new matter may 

be submitted in detail and the 

remainder by reference to the pertinent 

United States application or 

applications. 

* * * * * 

■ 47. Section 5.15 is amended by 

revising paragraphs (a) introductory 

text, (a)(3), (b), (d), and (e) to read as 

follows: 

§ 5.15 Scope of license. 

(a) Applications or other materials 

reviewed pursuant to §§ 5.12 through 

5.14, which were not required to be 

made available for inspection by 

defense agencies under 35 U.S.C. 181, 

will be eligible for a license of the scope 

provided in this paragraph. This license 

permits subsequent modifications, 

amendments, and supplements 

containing additional subject matter to, 

or divisions of, a foreign application, if 

such changes to the application do not 

alter the general nature of the invention 

in a manner that would require the 

United States application to have been 

made available for inspection under 35 

U.S.C. 181. Grant of this license 

authorizes the export and filing of an 

application in a foreign country or to 

any foreign patent agency or 

international patent agency when the 

subject matter of the foreign application 

corresponds to that of the domestic 

application. This license includes 

authority: 

* * * * * 

(3) To take any action in the 

prosecution of the foreign application 

provided that the adding of subject 

matter or taking of any action under 

paragraph (a)(1) or (2) of this section 

does not change the general nature of 

the invention disclosed in the 

application in a manner that would 

require such application to have been 

made available for inspection under 35 

U.S.C. 181 by including technical data 

pertaining to: 

(i) Defense services or articles 

designated in the United States 

Munitions List applicable at the time of 

foreign filing, the unlicensed 

exportation of which is prohibited 

pursuant to the Arms Export Control 

Act, as amended, and 22 CFR parts 120 

through 130; or 

(ii) Restricted Data, sensitive nuclear 

technology or technology useful in the 

production or utilization of special 

nuclear material or atomic energy, 

dissemination of which is subject to 

restrictions of the Atomic Energy Act of 

1954, as amended, and the Nuclear NonProliferation 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 


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Federal Register / Vol. 80, No. 63 / Thursday, April 2, 2015 / Rules and Regulations 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 § 5.12(a) on filing the 

corresponding United States 

application, any paper filed abroad or 

with an international patent agency that 

involves the disclosure of additional 

subject matter must be licensed in the 

same manner as a foreign application. 

* * * * * 

PART 11—REPRESENTATION OF 

OTHERS BEFORE THE UNITED 

STATES PATENT AND TRADEMARK 

OFFICE 

■ 48. The authority citation for 37 CFR 

part 11 continues to read as follows: 

Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 

U.S.C. 2(b)(2), 32, 41. 

■ 49. Section 11.10 is amended by 

revising paragraph (b)(3)(iii) to read as 

follows: 

§ 11.10 Restrictions on practice in patent 

matters. 

* * * * * 

(b) * * * 

(3) * * * 

(iii) Particular patent or patent 

application means any patent or patent 

application, including, but not limited 

to, a provisional, substitute, 

international, international design, 

continuation, divisional, continuationin-part, or reissue patent application, as 

well as any protest, reexamination, 

petition, appeal, interference, or trial 

proceeding based on the patent or 

patent application. 

* * * * * 

PART 41—PRACTICE BEFORE THE 

PATENT TRIAL AND APPEAL BOARD 

■ 50. The authority citation for part 41 

continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 

23, 32, 41, 134, 135, and Pub. L. 112–29. 

■ 51. Section 41.200 is revised by 

adding paragraph (b) to read as follows: 

§ 41.200 Procedure; pendency. 

* * * * * 

(b) Any reference to 35 U.S.C. 102 or 

135 in this subpart refers to the statute 

in effect on March 15, 2013, unless 

otherwise expressly indicated. Any 

reference to 35 U.S.C. 141 or 146 in this 

subpart refers to the statute applicable 

to the involved application or patent. 

* * * * * 

■ 52. Section 41.201 is amended by 

revising the definition of ‘‘Constructive 

reduction to practice’’ and paragraph 

(2)(ii) of the definition for ‘‘Threshold 

issue’’ to read as follows: 

§ 41.201 Definitions. 

* * * * * 

Constructive reduction to practice 

means a described and enabled 

anticipation under 35 U.S.C. 102(g)(1), 

in a patent application of the subject 

matter of a count. Earliest constructive 

reduction to practice means the first 

constructive reduction to practice that 

has been continuously disclosed 

through a chain of patent applications 

including in the involved application or 

patent. For the chain to be continuous, 

each subsequent application must 

comply with the requirements of 35 

U.S.C. 119–121, 365, or 386. 

* * * * * 

Threshold issue means an issue that, 

if resolved in favor of the movant, 

would deprive the opponent of standing 

in the interference. Threshold issues 

may include: 

* * * * * 

(2) * * * 

(ii) Unpatentability for lack of written 

description under 35 U.S.C. 112 of an 

involved application claim where the 

applicant suggested, or could have 

suggested, an interference under 

§ 41.202(a). 

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 


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