MPEP § 2920 — MPEP § 2920
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2900 

 Section 2920 
 

 
 
 
 
 
 2920 National Processing of International Design
 Applications Designating the United States [R-07.2022]
 

 
 35 U.S.C. 389 
 Examination of international design application. 

 
 (a) IN GENERAL.—The Director shall cause an examination
 to be made pursuant to this title of an international design application
 designating the United States.
 

 (b) APPLICABILITY OF CHAPTER 16.—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.
 

 (c) FEES.—The Director may prescribe fees for filing
 international design applications, for designating the United States, and for any
 other processing, services, or materials relating to international design
 applications, and may provide for later payment of such fees, including surcharges
 for later submission of fees. 
 

 (d) ISSUANCE OF PATENT.—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. 
 

 
 

 
 37 CFR 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.
 

 
 

 
 *****

 

 
 Hague Article 10 

 International Registration, Date of the
 International Registration, Publication and Confidential Copies of the International
 Registration 

 *****

 
 (3) [ Publication ] 
 
 (a) The international registration shall be
 published by the International Bureau. Such publication shall be deemed in
 all Contracting Parties to be sufficient publicity, and no other publicity
 may be required of the holder.
 

 (b) The International Bureau shall send a copy of
 the publication of the international registration to each designated
 Office.
 

 
 

 
 *****

 

 
 Hague Article 14 

 Effects of the International
 Registration 

 
 (1) [ Effect as Application Under Applicable
 Law ] The 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.
 

 
 *****

 

 
 Hague Article 12 

 Refusal 

 
 (1) [ Right to Refuse ] The 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 in the territory of the said Contracting Party, provided 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 this Act or the Regulations
 or are additional to, or different from, those requirements have not been
 satisfied under the law of the Contracting Party concerned. 
 

 
 *****

 

 The Office will examine an international design application
 designating the United States pursuant to Title 35 United States Code. See
 35 U.S.C.
 389(a) . An applicant does not need to file any submissions with the
 Office to initiate examination 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 pursuant to
 Hague Agreement Article 10(3) and examined in due course. 
 

 Upon receipt of the publication under Article 10(3), the
 Office will establish an application file for examination. Where the Office was also the
 office of indirect filing, the application file established as the office of indirect
 filing will be used as the application for examination, thus retaining the same application
 number. The Office will send a filing receipt to the applicant shortly after receipt of the
 publication under Article 10(3) indicating the U.S. application number, U.S. filing date,
 inventorship, applicant, and other relevant application data of record. 
 

 The U.S. application file will be made available to the
 public via Patent Center after publication under Article 10(3) of an international
 registration designating the United States. The U.S. application number corresponding to
 the international registration may be found by searching the international registration
 number using Patent Center. Prior to publication, access will only be provided in
 accordance with 37
 CFR 1.14 . See 37 CFR 1.14(j) .
 

 Pursuant to 37 CFR 1.9(a)(1) , the term “national
 application” as used in the U.S. rules includes 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. Pursuant to 37 CFR 1.9(a)(3) ,
 the term “nonprovisional application” as used in the U.S. rules includes 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. 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 is also referred
 to herein as a “nonprovisional international design application”. 
 

 
 2920.01 Inventorship [R-01.2024]

 
 37 CFR 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 .
 

 
 

 Pursuant to 37 CFR 1.41(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).
 

 Inventorship may be corrected in accordance with the
 provisions of 37 CFR
 1.48(a) . See MPEP § 602.01(c) et seq. for a detailed discussion of correction of inventorship,
 correcting or updating the name of an inventor, and adjusting the order of the names of
 joint inventors. Note that a request to correct the inventorship filed under
 37 CFR
 1.48(a) should identify the inventorship change and must be
 accompanied by a corrected application data sheet (ADS) including the legal name,
 residence, and mailing address of the inventor or each actual joint inventor (see
 37 CFR
 1.76(b)(1) ) and the processing fee set forth in 37 CFR
 1.17(i) . The ADS submitted with a request under 37 CFR 1.48(a) 
 must identify the information being changed with underlining for insertions and
 strike-through or brackets for text removed. See MPEP §
 602.01(c)(1) . In addition, in accordance with
 37 CFR
 1.48(c) , a request to correct or change the inventorship under
 37 CFR
 1.48(a) filed after the Office action on the merits has been given
 or mailed in the application must also be accompanied by the fee set forth in
 37 CFR
 1.17(d) .
 

 37 CFR 1.48(b) provides that an oath
 or declaration as required by 37 CFR 1.63 , or a substitute statement in
 compliance with 37
 CFR 1.64 , will be required for any actual inventor who has not yet
 executed such an oath or declaration. Accordingly, where an inventor is added pursuant
 to 37 CFR
 1.48(a) after publication of the international registration, an
 executed oath or declaration from the inventor will be required. See
 MPEP §
 2920.04(c) . 
 

 The name of an inventor may be corrected or updated and
 the order of the names of the joint inventors may be adjusted in accordance with the
 provisions of 37 CFR
 1.48(f) . 37 CFR 1.48(f) specifically provides
 that any request to correct or update the name of the inventor or a joint inventor, or
 the order of the names of joint inventors, in a nonprovisional application must include:
 (1) an ADS in accordance with 37 CFR 1.76 that identifies each
 inventor by his or her legal name in the desired order (identifying the information that
 is being changed as required by 37 CFR 1.76(c)(2) ); and (2) the
 processing fee set forth in 37 CFR 1.17(i) . In addition to the
 corrected ADS, the request should also identify the desired inventor name change. See
 MPEP §
 602.01(c)(2) .
 

 Under the laws of certain foreign countries, the creator
 may be a legal entity. Under U.S. national law, however, the inventor cannot be a
 juristic entity. Where a nonprovisional international design application identifies a
 juristic entity as an inventor, Form Paragraph 29.04 should be used to reject the claim
 under 35 U.S.C.
 171 and 35 U.S.C. 115 for failing to set
 forth the correct inventorship: 
 

 ¶ 29.04 Statement of Statutory Bases, Improper Inventorship in
 International Design Application
 

 Requirements applicable to design applications under 35 U.S.C. chapter 16
 apply to international design applications except as otherwise provided under 35 U.S.C.
 chapter 38. See 35
 U.S.C. 382(c) , 383 , and 389(b) .
 

 35 U.S.C. 171(b) reads as follows:
 

 (b) APPLICABILITY OF THIS TITLE.—The provisions of this title
 relating to patents for inventions shall apply to patents for designs, except as otherwise
 provided.
 

 35 U.S.C. 115(a) reads as follows (in
 part):
 

 An application for patent that is filed under section
 111(a) or commences the national stage under section 371 shall include, or be
 amended to include, the name of the inventor for any invention claimed in the application.
 

 The present application sets forth incorrect inventorship because
 [1] .
 

 The claim is rejected under 35 U.S.C. 171 and 35 U.S.C. 115 for
 failing to set forth the correct inventorship for the reasons stated above.
 

 Applicant may correct inventorship pursuant to 37 CFR 1.48(a) by
 submitting to the USPTO a properly signed and marked-up application data sheet (ADS)
 identifying each inventor by his or her legal name and accompanied by the required processing
 fee ( 37 CFR
 1.17(i) ). Any request to correct or change the inventorship under
 37 CFR
 1.48(a) filed after the Office action on the merits has been given or
 mailed in the application must also be accompanied by the fee set forth in 37 CFR
 1.17(d) . A corrected application data sheet in compliance with
 37 CFR
 1.76(c) must identify the information that is being changed, with
 underlining for insertions, and strike-through or brackets for text removed. In addition, an
 oath or declaration as required by 37 CFR 1.63 , or a substitute statement in
 compliance with 37 CFR
 1.64 , will be required for any actual inventor who has not yet executed
 such an oath or declaration. See 37 CFR 1.48(b) . The ADS, inventor's
 declaration, and substitute statement forms are available on the website of the USPTO at
 www.uspto.gov/patent/forms/forms .
 

 Examiner Note:

 In bracket 1, insert the basis for concluding that the
 inventorship is incorrect (e.g., "under U.S. national law, the inventor cannot be a
 juristic entity").
 

 

 

 
 2920.02 Applicant [R-07.2022]

 The rules governing the applicant for patent set forth in
 37 CFR
 1.42 - 1.46 are generally applicable to
 nonprovisional international design applications. See 37 CFR
 1.1061 ; see also MPEP §
 605.01 for a detailed discussion regarding the applicant for
 patent. 
 

 With respect to applicants under 37 CFR 1.46 
 (i.e., the assignee, the person to whom the inventor is under an obligation to assign
 the invention, or the person who otherwise shows sufficient proprietary interest in the
 matter), 37
 CFR 1.46(b) provides that if a nonprovisional international design
 application is applied for by a person other than the inventor under 37 CFR
 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), that person must have been identified as the
 applicant in the publication of the international registration under Hague Agreement
 Article 10(3). Thus, a 37 CFR 1.46 applicant identified as
 the applicant in the publication of the international registration is the applicant in
 the nonprovisional international design application. 
 

 Any request to change the applicant under
 37 CFR
 1.46 after an original applicant has been specified must include a
 corrected application data sheet (ADS) under 37 CFR 1.76 specifying the applicant
 in the applicant information section in accordance with 37 CFR
 1.76(c)(2) and must comply with 37 CFR 3.71 
 and 3.73 . See 37 CFR 1.46(c)(2) . Thus, if there is
 a change of applicant under 37 CFR 1.46 (e.g., from the inventor
 to the assignee, or from one assignee to another assignee), the new applicant must
 establish its ownership of the application under 37 CFR 3.71(b) and 3.73 . See
 MPEP §
 605.01 , subsection II. 
 

 Any request to correct or update the name of the
 applicant under 37
 CFR 1.46 must include a corrected ADS under 37 CFR 1.76 
 specifying the correct or updated name of the applicant in the applicant information
 section. See 37 CFR 1.46(c)(1) . Thus, if there is no change in the applicant
 itself but just the applicant’s name (due to a correction or name change), the applicant
 need only submit a corrected ADS specifying the correct or updated name in the applicant
 information section. Any corrected ADS must identify the information being changed with
 underlining for insertions and strike-through or brackets for text removed as required
 by 37 CFR
 1.76(c)(2) . 
 

 A change in the name of the applicant under
 37 CFR
 1.46 recorded pursuant to Hague Agreement Article 16(1)(ii) may
 also be effective to change the name of the applicant in a nonprovisional international
 design application. See 37 CFR 1.46(c)(1) . The recording of
 the name change pursuant to Article 16(1)(ii) must have been made no later than payment
 of the issue fee. Hague Agreement 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 under
 37 CFR
 1.46 in a nonprovisional international design application 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). 
 

 

 
 2920.03 Correspondence Address [R-07.2015]

 
 37 CFR 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.
 

 
 

 37 CFR 1.1066(a) sets forth how the
 Office will establish the correspondence address for a nonprovisional international
 design application in the absence of a communication from the applicant changing the
 correspondence address. Specifically, 37 CFR 1.1066(a) provides that,
 unless the correspondence address is changed in accordance with 37 CFR 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 37 CFR 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.
 

 See MPEP § 601.03(a) for further
 information regarding changing the correspondence address in an application.
 

 

 
 2920.04 Elements of a Nonprovisional International Design
 Application [R-07.2015]
 

 
 2920.04(a) Specification [R-07.2022]
 I. TITLE 
 37 CFR 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.
 

 
 *****

 

 The title of the design identifies the article in
 which the design is embodied by the name generally known and used by the public.
 In general, the practice set forth in MPEP § 1503.01 with regard to
 titles in design applications filed under 35 U.S.C. chapter 16 applies to
 nonprovisional international design applications. Thus, for example, the title may
 be directed to the entire article embodying the design while the claimed design,
 as shown in the reproductions, or as shown and described, may be directed to only
 a portion of the article. However, the title may not be directed to less than the
 claimed design. 
 

 Pursuant to 35 U.S.C. 154(a)(1) , ‘‘[e]very
 patent shall contain a short title of the invention. . . ’’ In addition, the
 application’s title of the invention is indicated on the official filing receipt
 and the bibliographic data sheet contained in the image file wrapper (IFW). The
 Hague Agreement, however, does not provide for application titles for
 international design applications. Nevertheless, applicants may provide an
 application title in a nonprovisional international design application by
 furnishing the title in an application data sheet in accordance with
 37 CFR
 1.76 or by amending the specification in accordance with
 37 CFR
 1.121 to include the application title. In the absence of an
 application title furnished by the applicant, the Office will establish a title by
 retrieving the first listed product indication appearing on the published
 international registration (INID code 54). See 37 CFR
 1.1067(a) . The title established by the Office will appear
 on the official filing receipt and/or bibliographic data sheet. 
 

 Since 37 CFR 1.1067 requires that
 the title must designate the particular article, and since the claim must be in
 formal terms to the ornamental design for the article (specifying name) as shown,
 or as shown and described, the title and claim must correspond (i.e., the article
 named in the title must correspond to the article named in the claim). See
 37
 CFR 1.1025 and MPEP § 1503.01 , subsection I.
 When the article named in the title furnished by the applicant and the article
 named in the claim do not correspond, the examiner should object to the
 inconsistency under 37 CFR 1.1067 and require
 correction. Form paragraph 29.59.02 may be used if amendment of a title is
 necessary for consistency with the claim. When the applicant has furnished the
 title, applicant approval of an examiner’s amendment thereto is required. See
 MPEP §
 1302.04 . When the Office has established the title,
 applicant approval of an examiner’s amendment thereto is not required.
 

 Any amendment to the language of the title should
 also be made at each occurrence of the language of the title throughout the
 application, except in the oath or declaration. If the article named in the title
 is not present in the original figure descriptions, it is not necessary to
 incorporate the article into the figure descriptions as part of any amendment to
 the language of the title. Product indications required under Article 5(1)(iv) of
 the Hague Agreement (see MPEP § 2909 ) set forth in the
 specification may differ from the article named in the title and in the claim, as
 product indications “shall preferably be identified by using terms” appearing in
 the Locarno classification. See Rule 7(3)(iv). The form paragraphs below may be
 used in nonprovisional international design applications as appropriate. 
 

 ¶ 15.05.01 Title of Design Invention

 The title of a design must designate the name of the article in which the
 design is embodied or applied to. In addition, the title must correspond with the claim. See
 MPEP §
 1503.01 and 37 CFR 1.153 or MPEP §
 2920.04(a) and 37 CFR 1.1067 .
 

 

 ¶ 15.59 Amend Title

 For [1] , the title, and each occurrence of the language of
 the title, [2] amended throughout the application, original oath or declaration
 excepted, to read: [3] 

 Examiner Note:
 
 1. In bracket 1, insert reason.

 2. In bracket 2, insert --should be-- or --has been--.

 3. When the applicant has furnished the application title,
 applicant's authorization is required to make an examiner’s amendment to the application
 title. See MPEP §
 1302.04 . Where the changes are made by examiner's amendment,
 this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 . If an extension of time is
 required, use form paragraph 13.02.02 instead of form paragraphs
 13.02 and
 13.02.01 . 
 
 
 

 ¶ 29.59.01 Amend Title Except for Product Indication

 For [1] , the title, and each occurrence of the language of
 the title, [2] amended throughout the application, except for the Design
 No./Product(s) section and original oath or declaration, to read: [3] 

 Examiner Note:
 
 1. This form paragraph is only to be used in a nonprovisional
 international design application.
 

 2. This form paragraph may be used where the product indication
 does not correspond to the article named in the title but is identified by terms
 appearing in the Locarno classification. Where the title, and each occurrence of the
 language of the title, is to be amended through the entire application, including the
 product indication (e.g., when the product indication corresponds to the article named
 in the title), use form paragraph 15.59 instead.
 

 3. In bracket 1, insert reason.

 4. In bracket 2, insert --should be-- or --has been--. 

 5. When the applicant has furnished the application title,
 applicant's authorization is required to make an examiner's amendment to the application
 title. See MPEP §§
 1302.04 and 2920.04(a) . Where the changes are made by examiner's
 amendment, this form paragraph should be preceded by form paragraphs
 13.02 and
 13.02.01 .
 If an extension of time is required, use form paragraph 13.02.02 instead of form paragraphs
 13.02 and
 13.02.01 .
 
 
 

 ¶ 29.59.02 Amend Application Title to Correspond to the Claim

 For consistency with the claim, the title of the application has been
 amended to read: [1] 

 Examiner Note:
 
 1. This form paragraph is only to be used in a nonprovisional
 international design application.
 

 2. This form paragraph may be used in an Examiner's Amendment where
 the application title (the title appearing in the Bib Data Sheet) is being amended to
 correspond to the claim (i.e., the article named in the application title is being
 amended to correspond to the article named in the claim).
 

 3. When the applicant has furnished the application title,
 applicant's authorization is required to make an examiner's amendment to the application
 title, and this form paragraph should be preceded by form paragraphs
 13.02 and
 13.02.01 .
 See MPEP §§
 1302.04 and 2920.04(a) . If an extension of time is required, use form
 paragraph 13.02.02 instead of form paragraphs
 13.02 and
 13.02.01 .
 
 

 4. When the Office has established the application title,
 applicant's authorization is not required to make an examiner's amendment to the
 application title, and this form paragraph should be preceded by form paragraph
 13.02 . 
 
 
 
 II. DESCRIPTION 
 37 CFR 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.
 

 
 *****

 

 No description of the design in the specification
 beyond a brief description of the drawing is generally necessary, since as a rule
 the illustration in the drawing views is its own best description. In re
 Freeman, 23 App. D.C. 226 (App. D.C. 1904). However, while not
 required, such a description is not prohibited and may be incorporated into the
 specification. 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 provides a clear and accurate
 description of the views.
 

 Applicants are cautioned against using “reference
 view” as a figure description in international design applications designating the
 United States. While “reference view” is commonly used in some foreign countries
 as a figure description, this term does not have any special meaning in U.S
 practice. Accordingly, the reference view will be treated as another view of the
 design, and any inconsistencies between the reference view and the other figures
 of the claimed design may cause uncertainty as to the scope of the claim,
 resulting in a rejection under 35 U.S.C. 112(a) and
 (b) , as nonenabling and indefinite. A reference view
 described in the description as not included in the claimed design may result in
 uncertainty as the scope of the design claimed where the reference view includes
 features of the claimed design shown in the other views. 
 

 In addition to the figure descriptions, statements
 that are permissible in the specification of a design application filed under 35
 U.S.C. chapter 16 are permissible in the specification of a nonprovisional
 international design application. See MPEP § 1503.01 , subsection II for
 a list of such permissible statements. This includes, for example, statements
 indicating the nature and environmental use of the claimed design, and statements
 indicating the purpose of broken lines in the drawing, for example, environmental
 structure or boundaries that form no part of the design to be patented. In
 addition, Administrative Instruction 403 permits matter shown in a reproduction
 for which protection is not sought to be indicated in the description and/or by
 means of broken or dotted lines or coloring. Accordingly, the specification may
 include statements explaining that protection is not sought for certain features
 shown in the reproduction, or that protection is not sought for matter shown in a
 specified color in the reproduction. When protection is not sought for portions of
 subject matter shown in a reproduction, applicants are strongly encouraged to
 indicate such subject matter by means of broken lines (or coloring) and include a statement in the specification explaining the meaning of the
 broken lines (or coloring). See MPEP § 2920.05(c)
 .
 

 The specification of a nonprovisional international
 design application is not permitted to include statements describing matters that
 are directed to function or are unrelated to the design. In addition, the
 specification may not include statements that describe or suggest other
 embodiments of the claimed design which are not illustrated in the drawing
 disclosure, except one that is a mirror image of that shown or has a shape and
 appearance that would be evident from the one shown. However, such statements may
 be included in the design application as originally filed to provide antecedent
 basis for a future amendment. In addition, statements which attempt to broaden the
 scope of the claimed design beyond that which is shown in the drawings are not
 permitted. 
 

 The form paragraphs set forth in
 MPEP §
 1503.01 , subsection II, pertaining to the description
 may be used in nonprovisional international design applications. In addition, the
 following form paragraphs may be used to amend the specification by examiner’s
 amendment to include figure descriptions and/or a description of broken lines or
 coloring, as appropriate: 
 

 ¶ 29.60.02 Objection to Specification - Missing Figure
 Descriptions
 

 The specification is objected to under 37 CFR 1.1067 
 for failing to provide figure descriptions. The description should indicate the type of view
 shown in the corresponding figure, such as "front view," "perspective view," "top view,"
 etc.
 

 Examiner Note:

 If some, but not all, figure descriptions are missing, the
 examiner should indicate which descriptions are missing, e.g. "Descriptions for Figures
 [add numbers of figures without a corresponding description] have not been provided."
 

 

 ¶ 29.22 Description of Broken Lines Added by Examiner's Amendment (International Design
 Application)
 

 The following sentence has been added to the
 specification immediately preceding the claim:
 

 
 --The broken line showing of [1] is for the purpose
 of illustrating [2] and forms no part of the claimed design.--
 

 
 Examiner Note:
 
 1. This form paragraph should only be used in an
 international design application in an Examiner's Amendment for explaining the meaning
 of the broken lines.
 

 2. In bracket 1, insert name of
 structure. 
 

 3. In bracket 2, insert --portions of the "article"-- or
 --environmental structure--. 
 

 4. Applicant's authorization is required. This form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 where an extension of time
 is not necessary. If an extension of time is needed, form paragraph
 13.02.02 
 should be used instead of form paragraphs 13.02 and 13.02.01 .
 
 
 

 ¶ 29.24 Description of Broken Lines as Boundary of Design Added by Examiner's Amendment
 (International Design Application)
 

 The following sentence has been added to the specification
 immediately preceding the claim:
 

 
 --The [1] broken line(s) define the bounds of the
 claimed design and form no part thereof.--
 

 
 Examiner Note:
 
 1. This form paragraph should only be used in an international
 design application in an Examiner’s Amendment for explaining the meaning of the broken
 line(s).
 

 2. In bracket 1, insert type of broken line, e.g. dashed or
 dot-dash or dot-dot-dash.
 

 3. Applicant's authorization is required. This form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 where an extension of time
 is not necessary. If an extension of time is needed, form paragraph
 13.02.02 
 should be used instead of form paragraphs 13.02 and 13.02.01 .
 
 
 

 ¶ 29.26 Description of Coloring Added by Examiner's Amendment (International Design
 Application)
 

 The following sentence has been added to the
 specification immediately preceding the claim:
 

 
 --The portion of the design shown in the color [1] is
 for the purpose of illustrating [2] and forms no part of the claimed
 design.--
 

 
 Examiner Note:
 
 1. This form paragraph should only be
 used in an international design application in an Examiner’s Amendment for
 explaining the meaning of color used in the reproductions.
 

 2. In bracket 1, identify the color
 indicating the matter excluded from the claim. 
 

 3. In bracket 2, insert --portions of
 the “article”-- or --environmental structure--.
 

 4. Applicant's authorization is required. This form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 where an extension of time
 is not necessary. If an extension of time is needed, form paragraph
 13.02.02 
 should be used instead of form paragraphs 13.02 and 13.02.01 .
 
 
 

 Where the application contains at least one color
 drawing or color photograph, the examiner should not require the applicant to
 amend the specification to add a reference to the color drawing or photograph.
 Instead, the examiner may amend the specification by Examiner’s Amendment to
 indicate the presence of the color drawing or photograph using the form paragraph
 below. The applicant’s authorization is not required.
 

 ¶ 29.61.01 At-least-one-color-drawing Statement

 The application contains at least one color drawing or color photograph.
 The specification has been amended to include the following language as the first paragraph of
 the brief description of the drawings section:
 

 
 -- The file of this patent contains at least one
 drawing/photograph executed in color. Copies of this patent with color
 drawing(s)/photograph(s) will be provided by the Office upon request and payment of the
 necessary fee. --
 

 
 Examiner Note:

 This form paragraph is only for use in an Examiner's Amendment in
 international design applications. Authorization for this Examiner's Amendment is not
 required.
 

 
 III. CLAIM 
 37 CFR 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.
 

 

 The form and content of a claim in a nonprovisional
 international design application is set forth in 37 CFR
 1.1025 .
 

 A design patent application may only include a
 single claim. The specific wording of the claim must be in formal terms to the
 ornamental design for the article (the article which embodies the design or to
 which it is applied) as shown, or as shown and described. The description of the
 article in the claim should be consistent in terminology with the title of the
 invention. See MPEP § 2920.04(a) , subsection
 I.
 

 When the specification includes a proper descriptive
 statement of the design (see MPEP § 2920.04(a) , subsection
 II), or a proper showing of modified forms of the design or other descriptive
 matter has been included in the specification, the words “and described” must be
 added to the claim following the term “shown”; i.e., the claim must read “The
 ornamental design for (the article which embodies the design or to which it is
 applied) as shown and described.” Unless the claim was amended by the applicant
 pursuant to 37
 CFR 1.121 , the examiner should not object to the claim as to
 matters of form but rather should amend the claim by examiner’s amendment to
 include the words “and described.” 
 

 Form paragraphs 15.62 , 15.63 and
 15.64 
 may be used in international design applications as appropriate.
 

 ¶ 15.62 Amend Claim “As Shown”

 For proper form ( 37 CFR 1.153 or 37 CFR 1.1025 ),
 the claim [1] amended to read: “ [2] claim: The ornamental design for
 [3] as shown.”
 

 Examiner Note:
 
 1. In bracket 1, insert --must be--
 or --has been--.
 

 2. In bracket 2, insert --I-- or
 --We--.
 

 3. In bracket 3, insert title of
 the article in which the design is embodied or applied.
 
 
 

 ¶ 15.63 Amend Claim “As Shown and Described”

 For proper form ( 37 CFR 1.153 or 37 CFR 1.1025 ),
 the claim [1] amended to read: “ [2] claim: The ornamental design for
 [3] as shown and described.”
 

 Examiner Note:
 
 1. In bracket 1, insert --must be--
 or --has been--.
 

 2. In bracket 2, insert --I-- or
 --We--.
 

 3. In bracket 3, insert title of
 the article in which the design is embodied or applied.
 
 
 

 ¶ 15.64 Addition of “And Described” to Claim

 Because of [1] -- and described -- [2] added to the claim after “shown.”
 

 Examiner Note:
 
 1. In bracket 1, insert reason.

 2. In bracket 2, insert --must be-- or --has been--.
 
 

 

 
 2920.04(b) Reproductions (Drawing Figures) [R-07.2022]

 
 37 CFR 1.1026 Reproductions. 

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

 

 Every nonprovisional international design application
 must include a reproduction of the claimed design. A reproduction may be either a
 drawing, in black and white or in color, or a photograph of the industrial design. As
 the drawing or photograph constitutes the entire visual disclosure of the claim, it
 is of utmost importance that the drawing or photograph be a clear and complete
 depiction of the design applied to the article designated in the title, and that
 nothing regarding the design sought to be patented is left to conjecture. 
 

 Formal requirements for reproductions applicable to
 nonprovisional international design applications are set forth in Hague Agreement
 Rule 9 and Part Four of the Administrative Instructions. See 37 CFR
 1.1026 . Hague Agreement Rule 9 and the relevant provisions of
 the Administrative Instructions are reproduced in MPEP §
 2909.02 . Drawing requirements set forth in
 37 CFR
 1.84 do not apply to nonprovisional international design
 applications, except for those set forth in 37 CFR 1.84(c) . See
 37 CFR
 1.1061(b) .
 

 Figure numbering requirements for international
 design applications are different from figure numbering requirements for design
 applications filed under 35 U.S.C. chapter 16. Pursuant to Administrative Instruction
 405, “[w]hen the same industrial design is represented from different angles, the
 numbering shall consist of two separate figures separated by a dot (e.g., 1.1, 1.2,
 1.3, etc. for the first design, 2.1, 2.2, 2.3, etc. for the second design, and so
 on).” The figure numbering appearing in the published international registration
 should be preserved during prosecution of the nonprovisional international design
 application before the USPTO. If designs are cancelled, for example, as a result of a
 restriction requirement, applicants should not renumber the figures of the remaining
 design(s). 
 

 Reproductions published as part of the international
 registration have been reviewed by the International Bureau for compliance with the
 formal requirements of Hague Agreement Rule 9 and Part Four of the Administrative
 Instructions and thus should not be objected to by the examiner on such grounds. See
 Hague Agreement Article 12(1). Amended reproductions that are submitted directly to
 the Office pursuant to 37 CFR 1.121 are not subject to
 review by the International Bureau and thus may be objected to under
 37 CFR
 1.1026 as to matters of form where appropriate. Form Paragraph
 29.10 may
 be used to object to amended reproductions that fail to comply with the formal
 requirements of Hague Agreement Rule 9 and Part Four of the Administrative
 Instructions. 
 

 ¶ 29.10 Reproductions Objected to, Amended Reproductions Do Not Comply With Formal
 Requirements
 

 The amended reproductions received on
 [1] are objected to because [2] . See 37 CFR
 1.1026 .
 

 Examiner Note:
 
 1. Use this form paragraph in an international design application to
 object to amended reproductions that fail to comply with the formal
 requirements for reproductions set forth in Rule 9 of the Common Regulations
 Under the 1999 Act and the 1960 Act of the Hague Agreement and Part Four of
 the Administrative Instructions thereunder. Do not use this form paragraph
 to object to reproductions that were contained in the international
 registration published by the International Bureau.
 

 2. In bracket 1, insert the date the
 amended reproductions were received.
 

 3. In bracket 2, insert the reason for
 the objection, for example, --the reproductions are not of a quality
 permitting all the details of the industrial design to be clearly
 distinguished-- or --the reproductions contain explanatory text or
 legends--.
 

 4. Follow this form paragraph with form
 paragraph 15.05.04 . 
 
 
 

 When inconsistencies are found among the views, the
 examiner should object to the reproductions and request that the views be made
 consistent. Pursuant to Hague Agreement Rule 9(4), “[a] Contracting Party may however
 refuse the effects of the international registration on the ground that the
 reproductions contained in the international registration are not sufficient to
 disclose fully the industrial design.” When the inconsistencies are of such magnitude
 that the overall appearance of the design is unclear, the claim should be rejected
 under 35
 U.S.C. 112(a) and (b) , as nonenabling and
 indefinite. See MPEP §
 1504.04 , subsection I. 
 

 ¶ 29.11 Reproductions Objected to, Design Not Fully Disclosed in Reproductions

 The reproductions are objected to for failing to
 fully disclose the industrial design because [1] . See 37 CFR
 1.1026 and Rule 9 of the Common Regulations Under the 1999 Act
 and the 1960 Act of the Hague Agreement.
 

 Examiner Note:
 
 1. Use this form paragraph in an international design application
 where the reproductions are not sufficient to fully disclose the industrial
 design, but such failure does not render the claimed invention non-enabled
 and/or indefinite under 35 U.S.C. 112 . This
 may occur, for example, where there are minor inconsistencies in the
 illustration of the design among the different views of the design. Where
 the failure to fully disclose the industrial design in the reproductions
 renders the claimed invention non-enabled and/or indefinite under
 35 U.S.C. 112 , use form paragraph
 15.21 or 15.22 , as appropriate,
 instead of this form paragraph.
 

 2. In bracket 1, explain why the
 reproductions are not sufficient to fully disclose the industrial
 design.
 

 3. Follow this form paragraph with form
 paragraph 15.05.04 .
 
 
 

 The practice set forth in MPEP § 1503.02 ,
 subsections I-IV with respect to views, surface shading, broken lines, and surface
 treatment is generally applicable to nonprovisional international design
 applications. 
 

 In addition to the use of broken or dotted lines to
 indicate matter shown in a reproduction for which protection is not sought,
 Administrative Instruction 403 permits such matter to be indicated in the description
 and/or by coloring. See MPEP § 2920.05(c) regarding
 considerations under 35 U.S.C. 112 when indicating
 matter pursuant to Administrative Instruction 403. Form paragraph
 29.20 may
 be used in an international design application as appropriate. 
 

 ¶ 29.20 Matter Not Forming Part of Design (International Design Application)

 Matter, such as environmental structure or portions of the "article," which is shown in a
 reproduction but for which protection is not sought may be indicated by statement in the
 description and/or by means of dotted or broken lines or coloring in the reproduction. See
 37 CFR
 1.1026 and Hague Agreement Administrative Instruction 403.
 

 Examiner Note:
 
 Use this form paragraph only in an international design
 application.
 
 
 

 

 
 2920.04(c) Inventor’s Oath or Declaration [R-07.2015]

 
 37 CFR 1.1021 Contents of the international design application. 

 *****

 
 (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:
 
 *****

 (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.
 

 
 

 
 

 
 37 CFR 1.1067 Title, description, and inventor’s oath or declaration. 

 *****

 
 (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) ). 
 

 
 

 International design applications designating the
 United States are required to contain the inventor’s oath or declaration
 ( 37 CFR
 1.63 and 1.64 ). See 37 CFR
 1.1021(d)(3) . The International Bureau reviews international
 design applications designating the United States to ensure that the required
 inventor’s oath or declaration is provided for the inventors identified in the
 international design application. The inventor’s oath or declaration is communicated
 by the International Bureau to the Office when the published international
 registration is sent to the Office pursuant to Hague Agreement Article 10(3). 
 

 Section 1.1067(b) provides for notifying
 the applicant in a notice of allowability of a requirement to provide the inventor’s
 oath or declaration. As compliance with the requirement for the inventor’s oath or
 declaration will have been reviewed by the International Bureau, 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
 37 CFR
 1.48(a) after publication of the international registration and
 an executed oath or declaration from the inventor has not been received. See
 37 CFR
 1.48(b) . 
 

 

 

 
 2920.05 Examination [R-07.2015]

 
 35 U.S.C. 389 
 Examination of international design application. 

 
 (a) IN GENERAL.—The Director shall cause an
 examination to be made pursuant to this title of an international design
 application designating the United States.
 

 (b) APPLICABILITY OF CHAPTER 16.—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.
 

 (c) FEES.—The Director may prescribe fees for filing
 international design applications, for designating the United States, and for
 any other processing, services, or materials relating to international design
 applications, and may provide for later payment of such fees, including
 surcharges for later submission of fees. 
 

 (d) ISSUANCE OF PATENT.—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. 
 

 
 

 
 37 CFR 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.
 

 
 

 
 37 CFR 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. 
 

 
 

 International design applications designating the United
 States are examined pursuant to title 35, United States Code. All questions of substance
 and, unless otherwise required by the Hague Agreement or Regulations thereunder,
 procedures regarding an international design application designating the United States
 shall be determined as in the case of design applications filed under 35 U.S.C. chapter
 16. See 35
 U.S.C. 389 . Accordingly, the practices set forth in
 MPEP §§
 1504.01 (Statutory Subject Matter for Designs),
 1504.02 (Novelty), 1504.03 (Nonobviousness),
 1504.04 (Considerations Under 35 U.S.C. 112),
 1504.05 (Restriction), and 1504.06 (Double
 Patenting) are generally applicable to international design applications designating the
 United States.
 

 While there is substantial overlap in examining practices
 with respect to international design applications designating the United States and
 design applications filed under 35 U.S.C. chapter 16, there are also differences. These
 differences include:
 

 
 (1) the Office sends a Notification of Refusal to the
 International Bureau for forwarding to the holder of the international
 registration where it is determined that the conditions for the grant of a patent
 are not met in respect of any or all designs that are the subject of international
 registration;
 

 (2) upon issuance of a patent, the Office sends a
 statement of grant of protection to the International Bureau indicating that
 protection is granted in the United States to those designs that are the subject
 of the international registration and covered by the patent.
 

 
 Regulations concerning international design applications
 are set forth in 37 CFR Part 1, subpart I.
 

 
 2920.05(a) Notification of Refusal [R-07.2022]

 
 Hague Article 12 

 Refusal 

 *****

 
 (2) [ Notification of Refusal ] 
 
 (a) The refusal of the effects of an
 international registration shall be communicated by the Office to the
 International Bureau in a notification of refusal within the
 prescribed period.
 

 (b) Any notification of refusal shall state
 all the grounds on which the refusal is based.
 

 
 

 
 *****

 

 
 Hague Rule 18 

 Notification of Refusal 

 
 (1) [Period for Notification of Refusal] 
 
 (a) The prescribed period for the
 notification of refusal of the effects of an international
 registration in accordance with Article 12(2) of the 1999 Act or
 Article 8(1) of the 1960 Act shall be six months from the publication
 of the international registration as provided for by Rule 26(3).
 

 (b) Notwithstanding subparagraph (a), any
 Contracting Party whose Office is an Examining Office, or whose law
 provides for the possibility of opposition to the grant of protection,
 may, in a declaration, notify the Director General that, where it is
 designated under the 1999 Act, the period of six months referred to in
 that subparagraph shall be replaced by a period of 12 months.
 

 (c) The declaration referred to in
 subparagraph (b) may also state that the international registration
 shall produce the effect referred to in Article 14(2)(a) of the 1999
 Act at the latest
 
 (i) 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
 

 (ii) 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 subparagraph
 (a) or (b); in such a case, the Office of the Contracting Party
 concerned shall notify the International Bureau accordingly and
 endeavor to communicate such decision to the holder of the
 international registration concerned promptly thereafter.
 

 
 

 
 

 (2) [ Notification of
 Refusal ]
 
 (a) The notification of any refusal shall
 relate to one international registration, shall be dated and shall be
 signed by the Office making the notification.
 

 (b) The notification 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 together with a reference to the corresponding
 essential provisions of the law,
 

 (iv) where the grounds on which the
 refusal is based refer to similarity with an industrial design
 which has been the subject of 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 that reproduction is accessible to the
 public) and the name and address of the owner of the said
 industrial design, as provided for in the Administrative
 Instructions,
 

 (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, if so, the time limit,
 reasonable under the circumstances, for any request for review
 of, or appeal against, the refusal and the authority to which
 such request for review or appeal shall lie, with the
 indication, where applicable, that the request for review or the
 appeal has to be filed through the intermediary of a
 representative whose address is within the territory of the
 Contracting Party whose Office has pronounced the refusal, and
 (vii) the date on which the refusal was pronounced.
 

 
 

 
 

 
 *****

 

 
 37 CFR 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. 
 

 
 

 Under Article 12 of the Hague Agreement, “[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 in the
 territory of the said Contracting Party, provided 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 design application
 that are provided for in this Act or the Regulations or are additional to, or
 different from, those requirements have not been satisfied under the law of the
 Contracting Party concerned.” This refusal of the effects of an international
 registration is called a “notification of refusal.” See Article 12(2). The
 notification of refusal is transmitted to the International Bureau who, without
 delay, transmits a copy of the notification to the holder of the international
 registration. Hague Agreement Rule 18 prescribes a time period for sending of the
 notification of refusal and the content of the notification.
 

 In accordance with 37 CFR
 1.1062(b) , a notification of refusal is to be sent to the
 International Bureau within 12 months from the publication of the international
 registration where it appears that the applicant is not entitled to a patent under
 the law of the United States with respect to any industrial design that is the
 subject of the international registration. The notification of refusal may be sent
 after this 12-month period where the failure to send the notification within the
 12-month period was unintentional.
 

 The notification of refusal contains or indicates: (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 37 CFR 1.134 
 and 1.136 where a reply to the notification of refusal is
 required. See 37 CFR 1.1063(a) .
 

 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.
 171 , 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 taken prior to examination, including
 cancellation of industrial designs in the international design application by
 amendment, or by an express abandonment of the application pursuant to
 37 CFR
 1.138 or the renunciation of the designation of the United
 States (see MPEP § 2930 ). 
 

 Objections based on requirements relating to the form
 or content of the application provided for in the Hague Agreement and Regulations
 thereunder are not prohibited by Article 12(1) where the International Bureau is not
 responsible for verifying compliance with such requirements. Such may arise, for
 example, where the applicant submits amended drawings directly to the Office in the
 course of examination that fail to comply with the formal requirements applicable to
 reproductions under Hague Agreement Rule 9 and Part Four of the Administrative
 Instructions. Nor does Article 12(1) prohibit objections based on inconsistencies
 among the views of the reproductions or incorrect or inaccurate statements contained
 in the description. 
 

 As in the case of Office actions in design
 applications filed under 35 U.S.C. chapter 16, copies of references cited by the
 examiner should be included with the notification of refusal. In addition, because
 Hague Agreement Rule 18(2)(b)(iv) does not distinguish references used in a ground of
 refusal based on where the reference originated from, the examiner should also
 include any U.S. patent or U.S. patent application publication used in a grounds of
 refusal (e.g., a rejection under 35 U.S.C. 102 or
 103 ). See 37 CFR 1.1063(a)(3) . Copies of
 references cited by the applicant in an information disclosure statement do not need
 to be included with the notification of refusal. 
 

 The notification of refusal should include a time
 period for reply under 37 CFR 1.134 and
 1.136 to avoid abandonment where a reply to the notification
 of refusal is required. This time period will normally be made in the Office Action
 Summary, Form PTOL-326, accompanying a Notification of Refusal cover sheet, Form
 PTO-2319. 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 “Notification of Partial Refusal,” (Form PTO-2321) 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.
 

 The Hague system does not require any submission from
 the applicant to the USPTO to initiate examination of a nonprovisional international
 design application. In many cases the applicant will not have retained the services
 of an attorney or agent registered to practice before the USPTO (“patent
 practitioner”) prior to receipt of the notification of refusal. Where there is no
 patent practitioner of record, the examiner should include the following form
 paragraph in the refusal to remind applicants of the signature requirements
 applicable to a reply to a notification of refusal:
 

 ¶ 29.100 Reply Reminder 

 Applicant is reminded that any reply to this communication must be signed
 either by a patent practitioner (i.e., a patent attorney or agent registered to practice
 before the United States Patent and Trademark Office) or by the applicant. If the applicant is
 a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b) .
 

 Examiner Note:

 Add this paragraph at the end of a notification of refusal or
 other Office action where a patent attorney or agent registered to practice before the
 United States Patent and Trademark Office has not been appointed as applicant's
 representative. If this paragraph was included in a prior Office action, it may be, but is
 not required to be, included in a subsequent Office action.
 

 

 In addition, the following form paragraph may be
 included in the notification of refusal to provide information to applicants
 regarding who may discuss the merits of the application with the examiner:
 

 ¶ 29.101 Discussion of the Merits of the Application

 All discussions between the applicant and the examiner regarding the
 merits of a pending application will be considered an interview and are to be made of record.
 See MPEP §
 713 . The examiner will not discuss the merits of the application
 with applicant's representative if the representative is not registered to practice before the
 USPTO. Appointment as applicant’s representative before the International Bureau pursuant to
 Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such
 representative to represent the applicant before the USPTO. Furthermore, an applicant that is
 a juristic entity must be represented by a patent attorney or agent registered to
 practice before the USPTO. Additional information regarding interviews is set forth below.
 

 Telephonic or in person
 interviews 

 A telephonic or in person interview may only be conducted with an
 attorney or agent registered to practice before the USPTO ("registered practitioner") or with
 a pro se applicant (an applicant who is the inventor and who is not
 represented by a registered practitioner).
 

 The registered practitioner may either be of record or not of record.
 To become "of record," a power of attorney (POA) in accordance with 37 CFR 1.32 must be
 filed in the application. Form PTO/AIA/80 "Power of Attorney to Prosecute Applications Before
 the USPTO," available at www.uspto.gov/
 patent/forms/forms-patent-applications-filed-or-after-september-16-2012 ,
 may be used for this purpose. See MPEP § 402.02(a) for further information.
 Interviews may also be conducted with a registered practitioner not of record provided the
 registered practitioner can show authorization to conduct an interview by completing, signing
 and filing an "Applicant Initiated Interview Request Form" (PTOL-413A) (available at the USPTO
 web page indicated above). See MPEP § 405 . For acceptable ways to submit forms to the USPTO, see
 "When Responding to Official USPTO Correspondence" below. 
 

 Examiner Note:

 Add this paragraph at the end of the Refusal where a patent
 attorney or agent registered to practice before the United States Patent and Trademark
 Office has not been appointed as applicant's representative.
 

 

 Any reply to the notification of refusal must be filed
 directly with the Office and not through the International Bureau. See
 37 CFR
 1.1063(b) . A reply to the notification of refusal is subject to
 the requirements of 37 CFR 1.111 . 
 

 Any further Office action following the notification
 of refusal, such as a Final Rejection, will normally be sent directly to the
 applicant. 
 

 

 
 2920.05(b) One Independent and Distinct
 Design [R-07.2022]
 

 
 Hague Article 13 

 Special Requirements Concerning Unity of
 Design 

 
 (1) [ Notification of Special
 Requirements ] Any Contracting Party whose law, at the time it
 becomes party to this Act, requires that designs that are the subject of the
 same application conform to a requirement of unity of design, unity of
 production or unity of use, or belong to the same set or composition of
 items, or that only one independent and distinct design may be claimed in a
 single application, may, in a declaration, notify the Director General
 accordingly. However, no such declaration shall affect the right of an
 applicant to include two or more industrial designs in an international
 application in accordance with Article 5(4), even if the application
 designates the Contracting Party that has made the declaration. 
 

 (2) [ Effect of Declaration ]Any
 such declaration shall enable the Office of the Contracting Party that has
 made it to refuse the effects of the international registration pursuant to
 Article 12(1) pending compliance with the requirement notified by that
 Contracting Party. 
 

 
 *****

 

 
 37 CFR 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 .
 

 
 

 Only one independent and distinct design may be claimed
 in a nonprovisional international design application. See 37 CFR
 1.1064 . Under Article 13 of the Hague Agreement, 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, 123 USPQ 210 (CCPA 1959); In re
 Platner, 155 USPQ 222 (Comm’r Pat. 1967); MPEP § 1504.05 .
 The practice set forth in MPEP § 1504.05 is generally
 applicable to nonprovisional international design applications. If more than one
 independent and distinct design is claimed in the nonprovisional international design
 application, the examiner should 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. The
 requirement should 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
 37 CFR
 1.143 and 1.144 . 
 

 Renumbering of the figures following cancellation of
 non-elected embodiments is not required. See MPEP §
 2920.04(b) . In addition, applicants should consider the
 need to correct inventorship under 37 CFR 1.48 as a result of a
 restriction requirement and further note that correction of inventorship after an
 Office action on the merits is subject to an additional fee under 37 CFR 1.48(c) .
 See MPEP
 § 602.01(c)(1) . Examiners should use FP
 29.102 
 to remind applicants that renumbering of the drawing figures following cancellation
 of non-elected embodiments is not required and to consider the need to correct
 inventorship due to the cancellation of non-elected designs. 
 

 ¶ 29.102 Reply Reminder for Restriction Requirements Concerning Figure
 Numbering
 

 In replying to this Refusal electing a Group for prosecution,
 applicant should also consider amending the application to cancel the drawing figures and
 remove the description corresponding to the nonelected Group(s), and to correct inventorship,
 as appropriate, resulting from such amendment pursuant to 37 CFR 1.48 . See MPEP §
 602.01(c)(1) . Applicant should note that correcting inventorship
 after an Office action on the merits has been given or mailed in the application will require
 an additional fee pursuant to 37 CFR 1.48(c) .
 

 Renumbering of the drawing figures is not required. To maintain consistency
 with the published International Registration, it is recommended that the numbering of the
 drawing figures included in the elected Group not be changed even if non-elected embodiments
 are cancelled. Any amendment to the drawing figures should comply with 37 CFR 1.1026 
 and Part Four of the Administrative Instructions (in particular, see Section 405 of the
 Administrative Instructions with respect to numbering of reproductions).
 

 Examiner Note:

 Add this paragraph at the end of a restriction requirement in a
 nonprovisional international design application. If there is no patent practitioner of record,
 also include form paragraph 29.100 Reply Reminder.
 

 

 Protection of designs cancelled from a nonprovisional
 international design application as a result of a restriction requirement may be
 pursued through the filing of a divisional application(s). Such a divisional
 application may be filed either as a design application under 35 U.S.C. chapter 16 or
 as an international design application designating the United States. For further
 information regarding divisional applications, see MPEP §
 2920.05(e) . 
 

 

 
 2920.05(c) Considerations Under 35 U.S.C. 112 [R-07.2015]

 The requirements of 35 U.S.C.
 112(a) and (b) apply to nonprovisional
 international design applications. See 35 U.S.C.
 389 . Accordingly, the practice set forth in
 MPEP §
 1504.04 regarding considerations under 35 U.S.C.
 112 is generally applicable to nonprovisional international
 design applications. This section addresses certain additional considerations
 relevant to international design applications. 
 

 As discussed in MPEP §
 2920.04(b) , Administrative Instruction 403 allows matter
 shown in a reproduction for which protection is not sought to be indicated “(i) in
 the description referred to in Rule 7(5)(a) and/or (ii) by means of dotted or broken
 lines or coloring.” When using broken or dotted lines or coloring in a reproduction
 to indicate matter shown in a reproduction for which protection is not sought,
 applicants are encouraged to include an explanation of the purpose of the broken or
 dotted lines or coloring in the description. This may help to avoid uncertainty as to
 the scope of the claimed design. Similarly, applicants are encouraged not to simply
 rely on a description to indicate matter shown in a reproduction for which protection
 is not sought, but rather to also identify the matter for which protection is not
 sought through the use of broken or dotted lines or coloring. 
 

 The following form paragraphs may be used where the
 presence of undescribed broken lines or color renders the scope of the claimed design
 unclear.
 

 ¶ 29.21 Rejection, 35 U.S.C. 112(b) - Undescribed Broken Lines (International Design
 Application)
 

 The claim is rejected for failing to particularly point out and
 distinctly claim the invention as required in 35 U.S.C. 112(b) . The claim is indefinite
 because the reproductions include, in figure(s) [1] , broken lines that are not
 described in the specification, and the scope of the claimed design cannot be determined.
 

 If the broken line(s) represent portions of the article or
 environmental structure for which protection is not sought, applicant may overcome this
 rejection by inserting a statement similar to the following into the specification immediately
 preceding the claim, provided such statement does not introduce new matter (see
 35 U.S.C.
 132 ):
 

 
 --The broken line showing of [2] is for the purpose
 of illustrating [3] and forms no part of the claimed design.--
 

 
 Examiner Note:
 
 1. Use this form paragraph in an international design
 application where the reproductions include broken lines that are not described in the
 specification, and the scope of the claimed design cannot be determined.
 

 2. In bracket 1, insert the number(s) of
 the figure(s) containing the broken lines.
 

 3. In bracket 2, insert name of
 structure.
 

 4. In bracket 3, insert --portions of
 the “article”-- or --environmental structure--.
 
 
 

 ¶ 29.23 Rejection, 35 U.S.C. 112(b) - Undescribed Broken Lines as Boundary of Design
 (International Design Application)
 

 The claim is rejected for failing to particularly
 point out and distinctly claim the invention as required in 35 U.S.C.
 112(b) . The claim is indefinite because the reproductions
 include, in figure(s) [1] , broken lines that are not described in the
 specification, and the scope of the claimed design cannot be determined.
 

 If the broken lines represent a boundary line for which
 protection is not sought, applicant may overcome this rejection by inserting a statement
 similar to the following into the specification immediately preceding the claim, provided such
 statement does not introduce new matter (see 35 U.S.C. 132 ):
 

 
 --The [2] broken line(s) define the bounds of the
 claimed design and form no part thereof.--
 

 
 Examiner Note:
 
 1. Use this form paragraph in an
 international design application where the reproductions include broken
 lines that are not described in the specification, and the scope of the
 claimed design cannot be determined.
 

 2. In bracket 1, insert the number(s) of
 the figure(s) containing the broken lines.
 

 3. In bracket 2, insert type of broken
 line, e.g. dashed or dot-dash or dot-dot-dash.
 
 
 

 ¶ 29.25 Rejection, 35 U.S.C. 112(b) - Unclear Use of Coloring (International Design
 Application)
 

 The claim is rejected for failing to particularly
 point out and distinctly claim the invention as required in 35 U.S.C.
 112(b) . The claim is indefinite because the reproductions
 include coloring, in figure(s) [1] , that is not described in the
 specification, and the scope of the claimed design cannot be determined.
 

 If the coloring identifies matter for which
 protection is not sought, applicant may overcome this rejection by inserting a statement
 similar to the following into the specification immediately preceding the claim,
 provided such statement does not introduce new matter (see 35 U.S.C. 132 
 ):
 

 
 --The portion of the design shown in the color [2] is
 for the purpose of illustrating [3] and forms no part of the claimed
 design.--
 

 
 Examiner Note:
 
 1. Use this form paragraph in an
 international design application where the reproductions include coloring
 that is not described in the specification, and the scope of the claimed
 design cannot be determined.
 

 2. In bracket 1, insert the number(s) of
 the figure(s) containing the coloring.
 

 3. In bracket 2, identify the color
 indicating the matter excluded from the claim.
 

 4. In bracket 3, insert --portions of
 the “article”-- or --environmental structure--.
 
 
 

 Similar to the use of form paragraph
 15.20.02 in design applications filed under 35
 U.S.C. chapter 16, form paragraph 29.27 may be used in an international design
 application to suggest how a rejection under 35 U.S.C.
 112(a) and (b) as nonenabling and indefinite
 due to an insufficient drawing disclosure may be overcome. 
 

 ¶ 29.27 Suggestion To Overcome Rejection Under 35 U.S.C. 112(a) and (b) (International
 Design Application)
 

 Applicant may indicate that protection is not
 sought for those portions of the reproductions which are considered indefinite and
 nonenabling in the rejection under 35 U.S.C. 112 above by amending
 the reproductions to color those portions or convert those portions to broken lines and
 by amending the specification to include a statement that the portions of the
 [1] shown in broken lines form no part of the claimed design or a
 statement that the portions of the [1] shown by coloring form no part of
 the claimed design provided such amendments do not introduce new matter (see
 35 U.S.C.
 132 , 37 CFR 1.121 ).
 

 Examiner Note:
 
 Use this form paragraph only in an
 international design application.
 

 2. In bracket 1, insert title of the
 article.
 
 
 

 

 
 2920.05(d) Foreign Priority [R-01.2024]

 
 35 U.S.C. 386 
 Right of priority. 

 
 (a) NATIONAL APPLICATION.—In 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.
 

 (b) PRIOR FOREIGN APPLICATION.—In 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.
 

 
 *****

 

 
 37 CFR 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 35 U.S.C. 386(a) or (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 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 later-filed application is:
 
 (i) An application for a design
 patent; or
 

 (ii) An application filed under 35
 U.S.C. 111(a) before November 29, 2000.
 

 
 

 (2) Application under 35 U.S.C.
 371 . The claim for priority must be
 made within the time limit set forth in the PCT and the Regulations
 under the PCT in an international application entering the national
 stage under 35 U.S.C. 371 ,
 except as provided in paragraph (e) of this section. 
 

 
 

 (e) Delayed priority claim. Unless such claim is accepted in
 accordance with the provisions of this paragraph, any claim for priority
 under 35
 U.S.C. 119(a) through (d) or (f) , 365(a) or
 (b) , or 35 U.S.C. 386(a) or (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)-(d) or
 (f) , 365(a) or (b) , or
 386(a) or (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
 (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 [in]
 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;
 

 (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 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).
 

 
 

 Pursuant to 35 U.S.C.
 386(a) and 37 CFR 1.55 , a nonprovisional
 application may make a claim of foreign priority in accordance with the conditions
 and requirements of 35 U.S.C. 119(a)-(d) and 172 with
 respect to a prior international design application that designates at least one
 country other than the United States. Pursuant to 35 U.S.C.
 386(b) and 37 CFR 1.55 , an international
 design application designating the United States may make a claim of foreign priority
 in accordance with the conditions and requirements of 35 U.S.C.
 119(a)-(d) and 172 and the Hague Agreement and
 Regulations thereunder with respect to a prior foreign application, international
 application (PCT) designating at least one country other than the United States, or a
 prior international design application designating at least one country other than
 the United States. The provisions of 35 U.S.C. 386(a) and
 (b) apply to nonprovisional applications, international
 applications (PCT) and international design applications filed on or after May 13,
 2015, and patents issued therefrom. See 37 CFR 1.55(o) and
 MPEP
 §§ 213 et seq. and 1504.10 .
 

 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. See 37 CFR
 1.55(m) . Alternatively, in a nonprovisional international
 design application, the foreign priority claim may be presented in a corrected
 application data sheet ( 37 CFR 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. See MPEP § 601.05(a) , subsection II. The
 priority claim and certified copy must be furnished in accordance with the time
 period and other conditions set forth in 37 CFR 1.55(g) .
 

 Pursuant to Administrative Instruction 408, a
 priority claim made in accordance with Hague Agreement Rule 7(5)(c) may be
 accompanied by a WIPO Digital Access Service (DAS) access code, if available. The
 official form for the application for international registration (the DM/1 form or
 the electronic interface of the International Bureau’s electronic filing system
 having the same contents and format as the DM/1 form) includes a field in the
 priority claim section to provide the WIPO access code. See MPEP §§
 2909 and 2909.01 . Providing the WIPO access code in accordance with
 Administrative Instruction 408 will allow the USPTO to automatically attempt
 retrieval of the priority document via WIPO DAS in a nonprovisional international
 design application. If the USPTO is able to retrieve the priority document via WIPO
 DAS, the priority document will be considered to satisfy the requirement under
 37 CFR
 1.55 for a certified copy of the priority document. If the WIPO
 access code is not provided in accordance with Administrative Instruction 408, the
 WIPO access code may be provided to the USPTO by submitting in the nonprovisional
 international design application a corrected application data sheet
 ( 37 CFR
 1.76(c) ) and a request for a corrected filing receipt.
 Applicants are reminded that they continue to bear the ultimate responsibility for
 ensuring that the priority document is filed during the pendency of the application
 and before the patent is issued. Accordingly, applicants are encouraged to provide
 the WIPO access code to the USPTO as soon as possible and to check as necessary to
 confirm receipt by the USPTO of appropriate documents.
 

 When making a foreign priority claim to an earlier
 filed international design application pursuant to 35 U.S.C.
 386(a) or (b) and 37 CFR
 1.55 , the USPTO will accept identification of the earlier
 international design application either by the application number assigned by the
 International Bureau or by its international registration number. Applicants should
 note, however, that on January 15, 2020, the International Bureau became a depositing
 office under WIPO DAS for international design applications and, to utilize WIPO DAS
 for retrieval of an international design application, the international design
 application must be identified by the application number in a specified format (i.e.,
 WIPONNNNN or WIPONNNNNN (for electronic direct filings with the International
 Bureau), or NNNNNNNNN (for indirect filings or paper applications)). See Tip #5 on
 the Electronic Priority Document Exchange (PDX) Program site on www.uspto.gov/PatentsPDX/ .
 The USPTO site also includes information regarding the application number format for
 other types of foreign applications needed for retrieval via WIPO DAS.
 

 Pursuant to 35 U.S.C. 119(a) and
 172 , and 37 CFR 1.55(b)(1) , the
 nonprovisional international design application must be filed not later than six
 months after the date on which the foreign application was filed, or be entitled to
 claim the benefit under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) of an application that was
 filed within this six month period. Where a nonprovisional international design
 application directly claims priority to a foreign application, the six month period
 is measured with respect to the U.S. filing date of the international design
 application, which may or may not be the same as the international filing date
 assigned by the International Bureau. See MPEP §§
 2906-2908 . Where there was a delay in filing the subsequent
 application within this six month period, the right of priority may be restored under
 the conditions set forth in 37 CFR 1.55(c) and
 MPEP §
 213.03 , subsection III. 
 

 

 
 2920.05(e) Benefit Claims Under 35 U.S.C.
 386(c) [R-07.2015]
 

 
 35 U.S.C. 386 
 Right of priority. 

 *****

 
 (c) PRIOR NATIONAL APPLICATION.—In accordance
 with the conditions and requirements of section
 120 , an international design application designating
 the United States shall be entitled to the benefit of the filing date of a
 prior national application, a prior international application as defined in
 section
 351(c) designating the United States, or a prior
 international design application designating the United States, and a
 national application shall be entitled to the benefit of the filing date of
 a prior international design application designating the United States. If
 any claim for the benefit of an earlier filing date is based on a prior
 international application as defined in section 351(c) which
 designated but did not originate in the United States or a prior
 international design application which designated but did not originate in
 the United States, the Director may require the filing in the Patent and
 Trademark Office of a certified copy of such application together with a
 translation thereof into the English language, if it was filed in another
 language.
 

 
 

 
 37 CFR 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 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.
 

 
 *****

 
 (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 later-filed application is a continuation,
 divisional, or continuation-in-part of the prior-filed nonprovisional
 application, international application, or international design
 application.
 

 (3) 
 
 (i) The reference required by
 35 U.S.C.
 120 and paragraph (d)(2) of this section
 must be submitted during the pendency of the later-filed
 application.
 

 (ii) If the later-filed application is
 an application filed under 35
 U.S.C. 111(a) , this reference must also be
 submitted within the later of four months from the actual filing
 date of the later-filed application or sixteen months from the
 filing date of the prior-filed application. If the later-filed
 application is a nonprovisional application entering the
 national stage from an international application under
 35 U.S.C.
 371 , this reference must also be submitted
 within the later of four months from the date on which the
 national stage commenced under 35 U.S.C.
 371(b) or (f) (§ 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 cross-references to applications for
 which a benefit is not claimed under title 35, United States Code,
 must not be included in an application data sheet (§ 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
 prior-filed application, or the date that a first claim to a claimed
 invention that has an effective filing date on or after March 16,
 2013, is presented in the later-filed application. An applicant is not
 required to provide such a statement if either:
 
 (i) The application claims the
 benefit of a nonprovisional application in which a statement
 under § 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 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.
 

 
 

 
 *****

 
 (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).
 

 
 

 Pursuant to 35 U.S.C.
 386(c) , in accordance with the conditions and requirements of
 35 U.S.C.
 120 , an international design application designating the United
 States is entitled to claim the benefit of the filing date of a prior nonprovisional
 application, international application (PCT) designating the United States, or
 international design application designating the United States, and a nonprovisional
 application is entitled to the benefit of a prior international design application
 designating the United States. See MPEP §§
 211 and 1504.20 . An international design
 application designating the United States may not claim benefit to a provisional
 application. See 37 CFR 1.78(a) . 
 

 An application claiming benefit under
 35
 U.S.C. 386(c) to an international design application
 designating the United States may identify the international design application by
 the U.S. application number or by the international registration number and U.S.
 filing date under 37 CFR 1.1023 . See
 37 CFR
 1.78(d)(2) . To obtain benefit of the filing date of a prior
 international design application designating the United States, the international
 design application must be entitled to a filing date in accordance with
 37 CFR
 1.1023 . See 37 CFR 1.78(d)(1)(ii) . 
 

 When a later-filed international design application
 designating the United States is claiming the benefit of a prior-filed application
 under 35 U.S.C.
 120 , 121 , 365(c) , or
 386(c) , the later-filed application must be copending with the
 prior application or with an intermediate application similarly entitled to the
 benefit of the filing date of the prior application. In determining whether an
 international design application designating the United States is copending with a
 prior-filed application, it is the U.S. filing date of the international design
 application that is relevant, which may or may not be the same as the international
 filing date assigned by the International Bureau. See MPEP §§
 2906-2908 . Thus, if the international design application
 designating the United States has an international filing date before, but a U.S.
 filing date after, the date of abandonment of the prior-filed application, the
 benefit claim should be refused because the international design application
 designating the United States does not comply with the copendency requirement of
 35 U.S.C.
 120 . 
 

 For purposes of determining the effective filing date
 under AIA
 35 U.S.C. 100(i)(1)(B) with regard to a benefit claim under
 35
 U.S.C. 386(c) to a prior-filed international design application
 designating the United States, the U.S. filing date of the international design
 application rather than the international filing date, if different, should be used.
 
 

 

 
 2920.05(f) Information Disclosure Statement in an
 International Design Application Designating the United States [R-07.2022]
 

 An extensive discussion of Information Disclosure
 Statement (IDS) practice is set forth in MPEP § 609 . Although not
 specifically stated therein, the duty to disclose information material to
 patentability as defined in 37 CFR 1.56 is placed on
 individuals associated with the filing and prosecution of an international design
 application designating the United States in the same manner as for a domestic
 national application. An international design application designating the United
 States has the effect of a U.S. patent application and thus is subject to
 37 CFR
 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.”). 
 

 Pursuant to 37 CFR 1.56(c) , individuals
 associated with the filing or prosecution of a patent application for purposes of
 37 CFR
 1.56 are: “(1) Each inventor named in the application; (2) Each
 attorney or agent who prepares or prosecutes the application; and (3) 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.” For example,
 individuals who are neither inventors nor practitioners but 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 37 CFR 1.56 . In addition, the
 requirement under 37 CFR 1.63(c) and
 1.64(c) that a person may not execute the inventor’s oath or
 declaration for an application unless that person is aware of the duty to disclose to
 the Office all information known to the person to be material to patentability as
 defined in 37
 CFR 1.56 is applicable to the inventor’s oath or declaration
 filed in an international design application designating the United States. See
 37 CFR
 1.1021(d) .
 

 Applicant must adhere to the requirements set forth in
 37 CFR
 1.97 , 37 CFR 1.98 , and
 37 CFR
 1.33(b) to ensure consideration of an IDS by the examiner. When
 filing an international design application, an applicant may submit an IDS using
 Annex III to the official application form (DM/1 form). See MPEP §
 2909.03 . The International Bureau will send the annex to
 the USPTO when the published international registration is sent to the Office
 pursuant to Hague Agreement Article 10(3). However, the Office would prefer to
 receive the IDS from the applicant after publication of the international
 registration. Pursuant to 37 CFR 1.97(b)(5) , the IDS will
 be considered by the Office if filed by the applicant within three months of the date
 of publication of the international registration under Hague Agreement Article 10(3).
 The Office may also consider an IDS filed after this three month period as provided
 in 37 CFR
 1.97 . See MPEP § 609 for further
 information.
 

 

 

 
 2920.06 Allowance [R-01.2024]

 A Notice of Allowability For a Design Application (form
 PTOL-37D) is used whenever a nonprovisional international design application has been
 placed in condition for allowance. See MPEP § 1302.03 for further information
 concerning the Notice of Allowability. In addition, a Notice of Allowance (form PTOL-85
 (Hague)) is sent to the applicant requiring payment of the issue fee (i.e., second part
 of the U.S. designation fee). See 37 CFR 1.311 and 1.18(b) . The
 Notice of Allowance and the Notice of Allowability are communicated to the applicant at
 the correspondence address of record in the application. The International Bureau is
 also notified of the communication of the Notice of Allowance to the applicant. In
 response to such notification, the International Bureau sends a courtesy notification to
 the holder regarding payment of the second part of the U.S. designation fee.
 

 Since the Notice of Allowability is used whenever an
 application has been placed in a condition for allowance, the Notice of Allowability
 does not constitute a refusal of the effects of the international registration. However,
 a Notification of Partial Refusal (form PTO-2321) may be sent to the International
 Bureau concurrent with the sending of the Notice of Allowance to the applicant where all
 the designs contained in the international registration have not been allowed and were
 not previously the subject of a notification of refusal (e.g., all designs but the
 allowed design were removed by preliminary amendment prior to examination). See
 MPEP §
 2920.05(a) .
 

 The issue fee specified in the Notice of Allowance form
 PTOL-85 (Hague) may be paid directly to the Office or through the International Bureau.
 An issue fee paid through the International Bureau shall be in the amount established in
 Swiss currency pursuant to Rule 28 as of the date of mailing of the notice of allowance.
 See 37 CFR
 1.18(b)(3) . The International Bureau accepts payment only in Swiss
 currency (see Hague Agreement Rule 28(1)) and all fee amounts specified on the WIPO
 website are in Swiss currency). Further, the International Bureau will only accept
 payment in the amount corresponding to the entity status indicated in the Notice of
 Allowance. Any change in entity status from that shown in the Notice of Allowance must
 be communicated directly to the Office in accordance with U.S. rules, as instructed in
 the Notice of Allowance. 
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 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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 03/09/2026 20:50:51