MPEP § 2914 — MPEP § 2914
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 2900 

 Section 2914 
 

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

 
 35 U.S.C. 384 
 Filing date. 

 
 (a) IN GENERAL.—Subject to subsection (b), the filing
 date of an international design application in the United States shall be the
 effective registration date. Notwithstanding 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.
 

 (b) REVIEW.—An applicant may request review by the
 Director of the filing date of the international design application in the United
 States. The 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. The 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. 
 

 
 

 
 37 CFR 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 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.
 

 
 

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

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

 Pursuant to 37 CFR 1.1052(b) , if a decision
 granting a petition to convert under 37 CFR 1.1052(a) is issued prior to
 transmittal of the international design application to the International Bureau under
 37 CFR
 1.1045 , then the decision will be effective to convert the
 international design application to an application for a design patent under
 37 CFR
 1.53(b) for all purposes. In such case, the application materials
 will not be communicated to the International Bureau, and the USPTO will treat the
 international design application submission as an application for a design patent filed
 under 37 CFR
 1.53(b) . If, however, a decision granting a petition to convert under
 37 CFR
 1.1052(a) is issued after the application materials have been
 communicated to the International Bureau under 37 CFR
 1.1045 , then the decision will only be effective as to the United
 States, and the International Bureau will continue to process the international design
 application under the provisions of the Hague Agreement. In such case, because the
 international design application will have been converted to an application for a design
 patent under 37 CFR
 1.53(b) with respect to the designation of the United States, the
 Office will, upon grant of the petition, treat the designation of the United States in the
 international design application as not being made. 
 

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 2901-Basic Hague Agreement Principles 

 2902-Definitions 

 2903-Declarations under the Hague Agreement Made by the United States of America 

 2904-Who May File An International Design Application 

 2905-Where to File An International Design Application 
 2905.01-Filing Through the USPTO as an Office of Indirect Filing 

 
 

 2906-Filing Date Requirements 

 2907-International Registration and Date of the International Registration 

 2908-Filing Date in the United States 

 2909-Contents of the International Design Application 
 2909.01-Official Form for the Application for International Registration 

 2909.02-Reproductions (Drawings) 
 2909.02(a)-Reproductions Submitted Through the USPTO Patent Electronic Filing System 

 
 

 2909.03-Annexes 

 
 

 2910-International Design Application Fees 

 2911-Representation 

 2912-Correspondence in Respect of International Design Applications Filed With the USPTO as an Office of Indirect Filing 

 2913-Relief from Prescribed Time Limits 

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

 2915-2919-[Reserved] 

 2920-National Processing of International Design Applications Designating the United States 
 2920.01-Inventorship 

 2920.02-Applicant 

 2920.03-Correspondence Address 

 2920.04-Elements of a Nonprovisional International Design Application 
 2920.04(a)-Specification 

 2920.04(b)-Reproductions (Drawing Figures) 

 2920.04(c)-Inventor’s Oath or Declaration 

 
 

 2920.05-Examination 
 2920.05(a) -Notification of Refusal 

 2920.05(b)-One Independent and Distinct Design 

 2920.05(c) -Considerations Under 35 U.S.C. 112 

 2920.05(d)-Foreign Priority 

 2920.05(e)-Benefit Claims Under 35 U.S.C. 386(c) 

 2920.05(f)-Information Disclosure Statement in an International Design Application Designating the United States 

 
 

 2920.06-Allowance 

 
 

 2921-2929-[Reserved] 

 2930-Corrections and Other Changes in the International Register 

 2931-2939-[Reserved] 

 2940-Statement of Grant of Protection 

 2941-2949-[Reserved] 

 2950-Grant of Protection Only Upon Issuance of Patent; Term of Design Patent 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:42