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

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

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

[Docket No.: PTO-P-2013-0025]

RIN 0651-AC87

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

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Final rule.

SUMMARY:

Title I of the Patent Law Treaties Implementation Act of 2012 (“PLTIA”) amends the United States patent laws to implement the provisions of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, July 2, 1999, (hereinafter “Hague Agreement”) and is to take effect on the entry into force of the Hague Agreement with respect to the United States. Under the Hague Agreement, qualified applicants may apply for design protection in the Contracting Parties to the Hague Agreement by filing a single, standardized international design application in a single language. The United States Patent and Trademark Office is revising the rules of practice to implement title I of the PLTIA.

DATES:

Effective date:

The changes in this final rule take effect on May 13, 2015.

Applicability date:

The changes to 37 CFR 1.32, 1.46, 1.63, 1.76, and 1.175 in this final rule apply only to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012. The changes to 37 CFR 1.53(b) and (c) and 1.57(a)(4) in this final rule apply only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013.

FOR FURTHER INFORMATION CONTACT:

Boris Milef, Senior PCT Legal Examiner, International Patent Legal Administration, at (571) 272-3288 or David R. Gerk, Patent Attorney, Office of Policy and International Affairs, at (571) 272-9300.

SUPPLEMENTARY INFORMATION:

Executive Summary: Purpose:

Under the Hague Agreement available at

http://www.wipo.int/treaties/en/registration/hague/,

qualified applicants may apply for design protection in the Contracting Parties to the Hague Agreement by filing a single, standardized international design application in a single language. Title I of the PLTIA amends title 35, United States Code, to implement the provisions of the Hague Agreement and is to take effect on the entry into force of the Hague Agreement with respect to the United States. This final rule revises the relevant rules of practice in title 37, chapter I, of the Code of Federal Regulations to implement title I of the PLTIA.

Summary of Major Changes to U.S. Practice:

The major changes to U.S. practice in title I of the PLTIA pertain to: (1) Standardizing formal requirements for international design applications; (2) establishing the United States Patent and Trademark Office (“USPTO” or “Office”) as an office through which international design applications may be filed; (3) providing a right of priority with respect to international design applications; (4) treating an international design application that designates the United States as having the same effect from its filing date as that of a national design application; (5) providing provisional rights for published international design applications that designate the United States; (6) setting the patent term for design patents issuing from both national design applications under chapter 16 and international design applications designating the United States to 15 years from the date of patent grant; (7) providing for examination by the Office of international design applications that designate the United States; and (8) permitting an applicant's failure to act within prescribed time limits in an international design application to be excused as to the United States under certain conditions. In addition, as to the applicability dates for certain provisions in existing rules, this final rule makes those applicability dates more accessible by stating them directly in the body of those rules.

The Office is specifically revising the rules of practice (37 CFR parts 1, 3, 5, 11, and 41) to provide for the filing of international design applications by applicants in the USPTO as an office of indirect filing. The Office will transmit the international design application and any collected international fees to the International Bureau of the World Intellectual Property Organization (“WIPO”), subject to national security review and payment of a transmittal fee. The International Bureau will review the application for compliance with the applicable formal requirements under the Hague Agreement.

The Office is also revising the rules of practice to set forth the formal requirements of an international design application, including specific content requirements where the United States is designated. Specifically, an international design application designating the United States must identify the inventor and include a claim and the inventor's oath or declaration. The final rules also specify that an international design application designating the United States may be refused by the Office as a designated office if the applicant is not a person qualified under 35 U.S.C. chapter 11 to be an applicant.

Additionally, the Office is revising the rules of practice to provide for examination of international design applications that designate the United States. International design applications are reviewed by the International Bureau for compliance with requirements under the Hague Agreement. Where these requirements have been met, the International Bureau will register the industrial design in the International Register and, subsequently, publish the international registration and send a copy of the publication to each designated office. Since international registration will only occur after the International Bureau finds that the application conforms to the applicable formal requirements, examination before the Office will generally be limited to substantive matters. With certain exceptions, the Hague Agreement imposes a time period of up to 12 months from the date of publication of the international registration for an examining office to refuse an international design application. The rules are revised to provide for the applicability of the requirements of 35 U.S.C. chapter 16 to examination of international design applications consistent with the Hague Agreement and to provide for the various notifications to the International Bureau required of an examining office under the Hague Agreement.

The Office is further revising the rules of practice to provide for: (1) Review of a filing date established by the International Bureau; (2) excusing an applicant's failure to act within prescribed time limits in connection with an international design application; (3) priority claims with respect to international design applications; (4) payment of fees; and (5) treatment of international design applications for national security review.

Costs and Benefits:

This rulemaking is not economically significant under Executive Order 12866 (Sept. 30, 1993).

Background:

The Hague Agreement, negotiated under the auspices of WIPO, is the latest revision to the 1925 Hague Agreement Concerning the International Deposit of Industrial Designs (“1925

Agreement”). The United States is not a party to the 1925 Agreement and did not join any of the subsequent Acts revising the 1925 Agreement, because those agreements either did not provide, or did not adequately provide, for substantive examination of international design applications by national offices. The Hague Agreement, adopted at a diplomatic conference on July 2, 1999, is the first Act that adequately provides for a system of individual review by the national offices of Contracting Parties.

In accordance with Article 28, the Hague Agreement will enter into force for the United States three months after the date that the United States deposits its instrument of ratification with the Director General of the International Bureau of WIPO or at any later date indicated in the instrument. As stated in the President's November 13, 2006, Letter of Transmittal to the Senate, the United States will not deposit its instrument of ratification until the necessary implementing legal structure has been established domestically. Treaty Doc. 109-21. Title I of the PLTIA, enacted on December 18, 2012, amended title 35, United States Code, in order to implement the Hague Agreement.

See

Public Law 112-211, sections 101-103, 126 Stat. 1527, 1527-33 (2012). Its provisions are to take effect on the entry into force of the Hague Agreement with respect to the United States. On February 13, 2015, the United States deposited its instrument of ratification with the Director General of the International Bureau of WIPO. These final rules implement title I of the PLTIA.

The main purpose of the Hague Agreement is to facilitate protection for industrial designs by allowing applicants to apply for protection in those countries and intergovernmental organizations that are Contracting Parties to the Hague Agreement by filing a single standardized application in a single language. Currently, a U.S. design applicant seeking global protection generally has to file separate design applications in each country or intergovernmental organization for which protection is sought, complying with the formal requirements imposed by each country or intergovernmental organization. The Hague Agreement simplifies the application process and reduces the costs for applicants seeking to obtain rights globally. The Hague Agreement also provides for centralized international registration of designs and renewal of registrations. The Hague Agreement imposes a time limit on a Contracting Party to refuse the effects of international registration in that Contracting Party if the conditions for the grant of protection under the law of that Contracting Party are not met.

Major provisions of the Hague Agreement as implemented by title I of the PLTIA include the following:

Article 3 of the Hague Agreement provides that “[a]ny person that is a national of a State that is a Contracting Party or of a State member of an intergovernmental organization that is a Contracting Party, or that has a domicile, a habitual residence or a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application.” Article 4(1)(a) provides that “[t]he international application may be filed, at the option of the applicant, either directly with the International Bureau or through the Office of the applicant's Contracting Party.” Article 4(2) allows “[t]he Office of any Contracting Party [to] require that the applicant pay a transmittal fee to it, for its own benefit, in respect of any international application filed through it.”

Section 101(a) of the PLTIA adds 35 U.S.C. 382 to implement the provisions of Articles 3 and 4. 126 Stat. at 1528. Section 382(a) provides that “[a]ny person who is a national of the United States, or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States, may file an international design application by submitting to the Patent and Trademark Office an application in such form, together with such fees, as may be prescribed by the Director.”

Id.

Section 382(b) requires the Office to “perform all acts connected with the discharge of its duties under the [Hague Agreement], including the collection of international fees and the transmittal thereof to the International Bureau.”

Id.

Transmittal of the international design application is subject to 35 U.S.C. chapter 17 and payment of a transmittal fee.

Id.

Article 5 of the Hague Agreement and Rule 7 of the “Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement” (“Hague Agreement Regulations” or “Regulations”) concern the contents of an international design application. Article 5(1) requires the international design application to be in one of the prescribed languages and specifies the contents required for all international design applications. Specifically, it provides that the application “shall contain or be accompanied by (i) a request for international registration under [the Hague Agreement]; (ii) the prescribed data concerning the applicant; (iii) the prescribed number of copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international application, presented in the prescribed manner; however, where the industrial design is two-dimensional and a request for deferment of publication is made in accordance with [Article 5(5)], the international application may, instead of containing reproductions, be accompanied by the prescribed number of specimens of the industrial design; (iv) an indication of the product or products which constitute the industrial design or in relation to which the industrial design is to be used, as prescribed; (v) an indication of the designated Contracting Parties; (vi) the prescribed fees; [and] (vii) any other prescribed particulars.”

Article 5(2) of the Hague Agreement and Rule 11 of the Hague Agreement Regulations set forth additional mandatory contents that may be required by any Contracting Party whose Office is an Examining Office and whose law, at the time it becomes party to the Hague Agreement, so requires. Specifically, Article 5(2) provides that “an application for the grant of protection to an industrial design . . . [may], in order for that application to be accorded a filing date under that law” be required to contain any of the following elements: “(i) Indications concerning the identity of the creator of the industrial design that is the subject of that application; (ii) a brief description of the reproduction or of the characteristic features of the industrial design that is the subject of that application; [and] (iii) a claim.”

Section 101(a) of the PLTIA adds 35 U.S.C. 383 to provide that, “[i]n addition to any requirements pursuant to chapter 16, the international design application shall contain—(1) a request for international registration under the treaty; (2) an indication of the designated Contracting Parties; (3) data concerning the applicant as prescribed in the treaty and the Regulations; (4) copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international design application, presented in the number and manner prescribed in the treaty and the Regulations; (5) an indication of the product or products that constitute the industrial design or in relation to which the industrial design is to be used, as prescribed in the treaty and the Regulations; (6) the fees prescribed in the treaty and the Regulations; and (7) any other particulars prescribed in the Regulations.” 126 Stat. at 1528-29.

Article 6 of the Hague Agreement provides a right of priority with respect to international design applications. Article 6(1) provides that “[t]he international design application may contain a declaration claiming, under Article 4 of the Paris Convention, the priority of one or more earlier applications filed in or for any country party to that Convention or any Member of the World Trade Organization.” Article 6(2) provides that “[t]he international [design] application shall, as from its filing date and whatever may be its subsequent fate, be equivalent to a regular filing within the meaning of Article 4 of the Paris Convention.”

Section 101(a) of the PLTIA adds 35 U.S.C. 386 to provide for a right of priority with respect to international design applications. Section 386(a) provides that “[i]n accordance with the conditions and requirements of subsections (a) through (d) of section 119 and section 172, a national application shall be entitled to the right of priority based on a prior international design application that designated at least 1 country other than the United States.” 126 Stat. at 1529. Section 386(b) provides that “[i]n accordance with the conditions and requirements of subsections (a) through (d) of section 119 and section 172 and the treaty and the Regulations, an international design application designating the United States shall be entitled to the right of priority based on a prior foreign application, a prior international application as defined in section 351(c) designating at least 1 country other than the United States, or a prior international design application designating at least 1 country other than the United States.”

Id.

Section 386(c) provides for domestic benefit claims with respect to international design applications designating the United States in accordance with the conditions and requirements of 35 U.S.C. 120. 126 Stat. at 1529-30.

Article 7 of the Hague Agreement and Rule 12 of the Hague Agreement Regulations provide for designation fees. Under Article 7(2) and Rule 12(3), the designation fee may be an “individual designation fee.” Article 7(2) provides that for any Contracting Party whose Office is an Examining Office, the “amount may be fixed by the said Contracting Party . . . for the maximum period of protection allowed by the Contracting Party concerned.” Rule 12(3) provides that the individual designation fee may “comprise[ ] two parts, the first part to be paid at the time of filing the international design application and the second part to be paid at a later date which is determined in accordance with the law of the Contracting Party concerned.” Rule 12(1) lists other fees concerning the international design application, including the basic fee and publication fee.

Article 8(1) of the Hague Agreement and Rule 14 of the Hague Agreement Regulations provide that the International Bureau will examine the international design application for compliance with the requirements of the Hague Agreement and Regulations and invite the applicant to make any required correction within a prescribed time limit. Under Article 8(2), the failure to timely comply with the invitation will result in abandonment of the application, except where the irregularity concerns a requirement under Article 5(2) or a special requirement under the Regulations, in which case the failure to timely correct will result in the application being deemed not to contain the designation of the Contracting Party concerned.

Article 9 of the Hague Agreement establishes the filing date of an international design application. Article 9(1) provides that “[w]here the international application is filed directly with the International Bureau, the filing date shall, subject to [Article 9(3)], be the date on which the International Bureau receives the international application.” Article 9(2) provides that “[w]here the international application is filed through the Office of the applicant's Contracting Party, the filing date shall be determined as prescribed.” The filing date of an international application filed with an office of indirect filing is prescribed in Rule 13(3) of the Regulations.

Article 9(3) provides that “[w]here the international application has, on the date on which it is received by the International Bureau, an irregularity which is prescribed as an irregularity entailing a postponement of the filing date of the international application, the filing date shall be the date on which the correction of such irregularity is received by the International Bureau.” Rule 14(1) sets forth the time limit in which the applicant is required to correct such irregularities, and Rule 14(2) sets forth the irregularities that are prescribed as entailing postponement of the filing date of the international design application.

The PLTIA adds 35 U.S.C. 384, which provides in subsection (a) that the filing date of an international design application in the United States shall be the “effective registration date” subject to review under subsection (b). 126 Stat. at 1529. The term “effective registration date” is defined in section 381(a)(5), added by the PLTIA, as “the date of international registration determined by the International Bureau under the treaty.” 126 Stat. at 1528. Section 384(b) provides that “[a]n applicant may request review by the Director of the filing date of the international design application in the United States” and that “[t]he Director may determine that the filing date of the international design application in the United States is a date other than the effective registration date.” 126 Stat. at 1529. It also authorizes the Director to “establish procedures, including the payment of a surcharge, to review the filing date under this section.”

Id.

Section 384(a) also provides that “any international design application designating the United States that otherwise meets the requirements of chapter 16 may be treated as a design application under chapter 16.”

Id.

Article 10(1) of the Hague Agreement provides that “[t]he International Bureau shall register each industrial design that is the subject of an international application immediately upon receipt by it of the international application or, where corrections are invited under Article 8, immediately upon receipt of the required corrections.” Article 10(2) provides that “[s]ubject to subparagraph (b), the date of the international registration shall be the filing date of the international application.” Article 10(2)(b) provides that “[w]here the international application has, on the date on which it is received by the International Bureau, an irregularity that relates to Article 5(2), the date of the international registration shall be the date on which the correction of such irregularity is received by the International Bureau or the filing date of the international application, whichever is the later.” Under Rule 15(2) of the Regulations, “[t]he international registration shall contain (i) all the data contained in the international application . . . ; (ii) any reproduction of the industrial design; (iii) the date of the international registration; (iv) the number of the international registration; [and] (v) the relevant class of the International Classification, as determined by the International Bureau.”

Article 10(3)(a) of the Hague Agreement provides that “[t]he international registration shall be published by the International Bureau.” Under Article 10(3)(b), “[t]he International Bureau shall send a copy of the publication of the international registration to each designated Office.”

Section 101(a) of the PLTIA adds 35 U.S.C. 390 to provide that “[t]he publication under the treaty of an

international design application designating the United States shall be deemed a publication under [35 U.S.C.] 122(b).” 126 Stat. at 1531.

Article 10(4) of the Hague Agreement provides that the International Bureau shall, subject to Articles 10(5) and 11(4)(b), keep each international application and international registration confidential until publication. Under Article 10(5)(a), “[t]he International Bureau shall, immediately after registration has been effected, send a copy of the international registration, along with any relevant statement, document or specimen accompanying the international application, to each Office that has notified the International Bureau that it wishes to receive such a copy and has been designated in the international application.”

Article 11 of the Hague Agreement provides for deferment of publication under certain conditions. Article 11(3) prescribes the procedure where a request for deferment of publication is filed in an international design application designating a Contracting Party that has made a declaration under Article 11(1)(b) stating that deferment of publication is not possible under its law.

Article 12(1) of the Hague Agreement provides that “[t]he Office of any designated Contracting Party may, where the conditions for the grant of protection under the law of that Contracting Party are not met in respect of any or all of the industrial designs that are the subject of an international registration, refuse the effects, in part or in whole, of the international registration. . . .” Article 12(1) further provides that “no Office may refuse the effects, in part or in whole, of any international registration on the ground that requirements relating to the form or contents of the international application that are provided for in [the Hague Agreement] or the Regulations or are additional to, or different from, those requirements have not been satisfied under the law of the Contracting Party concerned.” Article 12(2) provides that the refusal of the effects of an international registration shall be communicated to the International Bureau within the prescribed period and shall state the grounds on which the refusal is based. Under Rule 18(1) of the Hague Agreement Regulations, the prescribed period for sending the notification of refusal is six months from publication, or twelve months from publication where an office makes a declaration under Rule 18(1)(b). The declaration under Rule 18(1)(b) may state that the international registration shall produce the effects under Article 14(2)(a) at the latest “at a time specified in the declaration which may be later than the date referred to in that Article but which shall not be more than six months after the said date” or “at a time at which protection is granted according to the law of the Contracting Party where a decision regarding the grant of protection was unintentionally not communicated within the period applicable under [Rule 18(1)(a) or (b)].”

See

Rule 18(1)(c).

Rule 18(2)(b) provides that the notification of refusal “shall contain or indicate (i) the Office making the notification, (ii) the number of the international registration, (iii) all the grounds on which the refusal is based . . ., (iv) where the . . . refusal is based . . . [on] an earlier national, regional or international application or registration, the filing date and number, the priority date (if any), the registration date and number (if available), a copy of a reproduction of the earlier industrial design (if . . . accessible to the public) and the name and address of the owner . . ., (v) where the refusal does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate, (vi) whether the refusal may be subject to review or appeal . . ., and (vii) the date on which the refusal was pronounced.”

Article 12(3) of the Hague Agreement provides that “[t]he International Bureau shall, without delay, transmit a copy of the notification of refusal to the holder,” and that “[t]he holder shall enjoy the same remedies as if . . . the international registration had been the subject of an application for a grant of protection under the law applicable to the Office that communicated the refusal.” Under Article 12(4), “[a]ny refusal may be withdrawn, in part or in whole, at any time by the Office that communicated it.”

Article 13 of the Hague Agreement permits a Contracting Party to notify the Director General in a declaration, where the Contracting Party's “law, at the time it becomes party to this Act, requires that designs [in the] application conform to a requirement of unity of design, unity of production or unity of use, . . . or that only one independent and distinct design may be claimed in a single application.”

Under Article 14(1) of the Hague Agreement, “[t]he international registration shall, from the date of the international registration, have at least the same effect in each designated Contracting Party as a regularly-filed application for the grant of protection of the industrial design under the law of that Contracting Party.”

Section 101(a) of the PLTIA adds 35 U.S.C. 385 to provide that “[a]n international design application designating the United States shall have the effect, for all purposes, from its filing date . . ., of an application for patent filed in the Patent and Trademark Office pursuant to chapter 16 [of title 35, United States Code].” 126 Stat. at 1529. The PLTIA also amends 35 U.S.C. 154 to provide for provisional rights in international design applications that designate the United States. 126 Stat. at 1531-32.

Article 14(2)(a) of the Hague Agreement provides that “[i]n each designated Contracting Party the Office of which has not communicated a refusal in accordance with Article 12, the international registration shall have the same effect as a grant of [design] protection . . . under the law of that Contracting Party at the latest from the date of expiration of the period allowed for it to communicate a refusal or, where a Contracting Party has made a corresponding declaration under the Regulations, at the latest at the time specified in that declaration.” Article 14(2)(b) provides that “[w]here the Office of a designated Contracting Party has communicated a refusal and has subsequently withdrawn, in part or in whole, that refusal, the international registration shall, to the extent that the refusal is withdrawn, have the same effect in that Contracting Party as a grant of [design protection] under the law of the said Contracting Party at the latest from the date on which the refusal was withdrawn.” Rule 18(4) of the Hague Agreement Regulations sets forth the required contents of a notification of withdrawal of refusal. Alternatively, under Rule 18

bis

(2), the office of a Contracting Party may send the International Bureau a statement of grant of protection instead of a notification of withdrawal of refusal.

Article 16 of the Hague Agreement and Rule 21 of the Hague Agreement Regulations provide for the recording of certain changes in the International Register by the International Bureau, such as changes in ownership or the name or address of the holder. Under Article 16(2), any such recording at the International Bureau “shall have the same effect as if it had been made in the Register of the Office of each of the Contracting Parties concerned, except that a Contracting Party may, in a declaration, notify the Director General that a recording [of a change in ownership] shall not have that effect in that Contracting Party until the Office of that Contracting Party has received the

statements or documents specified in that declaration.”

Under Article 17 of the Hague Agreement, an “international design registration shall be effected for an initial term of five years counted from the date of international registration” and “may be renewed for additional terms of five years, in accordance with the prescribed procedure and subject to payment of the prescribed fees.” The initial term of protection and additional terms may be replaced by a maximum period of protection allowed by a Contracting Party.

See

Article 7(2). The PLTIA amends 35 U.S.C. 173 to set the term of a design patent to 15 years from date of grant. 126 Stat. at 1532.

The PLTIA adds 35 U.S.C. 387 to allow the Director to establish procedures, including a requirement for payment of the fee specified in 35 U.S.C. 41(a)(7), to excuse as to the United States “[a]n applicant's failure to act within prescribed time limits in connection with requirements pertaining to an international design application” upon a showing of unintentional delay. 126 Stat. at 1530.

Hague Agreement Regulations Rule 8 provides for certain requirements concerning the applicant and the creator. Under Rule 8(1)(a)(ii), “[w]here the law of a Contracting Party bound by the 1999 Act requires the furnishing of an oath or declaration of the creator, that Contracting Party may, in a declaration, notify the Director General of that fact.” Rule 8(1)(b) provides that the declarations referred to in Rules 8(1)(a)(i) and (a)(ii) shall specify the form and mandatory contents of any required statement, document, oath, or declaration. Rule 8(3) provides that “[w]here an international application contains the designation of a Contracting Party that has made the declaration referred to in paragraph (1)(a)(ii) it shall also contain indications concerning the identity of the creator of the industrial design.”

See

discussion of § 1.1021(d).

Relevant documents, including the implementing legislation (title I of the PLTIA), Senate Committee Reports, and the Transmittal Letter, are available on the USPTO Web site at

http://www.uspto.gov/patents/int_protect/index.jsp.

This Web site also contains a link to WIPO's Web site, which makes available relevant treaty documents, currently at

http://www.wipo.int/hague/en/legal_texts/.

Discussion of Specific Rules

The following is a discussion of the amendments to title 37 of the Code of Federal Regulations, parts 1, 3, 5, 11, and 41.

Section 1.4:

Section 1.4(a)(2) is amended to include a reference to the final rules relating to international design applications in subpart I.

Section 1.5:

Section 1.5(a) is amended to provide that the international registration number may be used on correspondence directed to the Office to identify an international design application. The international registration number is the number assigned by the International Bureau upon registration of the international design in the International Register.

See

Rule 15 of the Regulations.

Section 1.6:

Section 1.6(d)(3) is amended to include the filing of an international design application among the correspondence for which facsimile transmission is not permitted and, if submitted, will not be accorded a receipt date. This is consistent with the treatment of the filing of national patent applications and international applications under the Patent Cooperation Treaty (“PCT”).

Section 1.6(d)(4) is amended to prohibit the filing of color drawings by facsimile in an international design application. This is consistent with the treatment of color drawings in national applications and international applications under the PCT.

Section 1.6(d)(6) is amended to change “a patent application” to “an application” to clearly prohibit the submission of correspondence by facsimile in an international design application that is subject to a secrecy order under §§ 5.1 through 5.5.

Section 1.8:

Section 1.8(a)(2)(i) is amended to add a new paragraph (K) to include the filing of an international design application among the correspondence that will not receive benefit from a Certificate of Mailing or Transmission.

See

discussion of § 1.6(d)(3),

supra.

Section 1.9:

Sections 1.9(a)(1) and (a)(3) are amended to include in the definitions of “national application” and “nonprovisional application,” respectively, an international design application filed under the Hague Agreement for which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10. Pursuant to 35 U.S.C. 385, added by section 101(a) of the PLTIA, an international design application that designates the United States has the effect from its filing date under 35 U.S.C. 384 of an application for patent filed in the United States Patent and Trademark Office pursuant to 35 U.S.C. chapter 16. 126 Stat. at 1529. The filing date of an international design application is, subject to review, the international registration date.

See

discussion of § 1.1023,

infra.

Under Article 10, the International Bureau will send a copy of the international registration to each designated office after publication (Article 10(3)) or, upon notification by the Contracting Party, immediately after international registration (Article 10(5)). Consequently, the Office will receive a copy of the international registration pursuant to Article 10 only if the United States has been designated. The Office notes that, while the definition of “nonprovisional application” in § 1.9(a)(3) may include international applications under the PCT and international design applications under the Hague Agreement satisfying certain conditions, neither the PCT, the Hague Agreement, nor U.S. law provides for provisional international applications or international design applications.

Sections 1.9(l) and 1.9(m) are added to define “Hague Agreement,” “Hague Agreement Article,” “Hague Agreement Regulations,” and “Hague Agreement Rule” as used in chapter I of title 37 of the Code of Federal Regulations (“CFR”).

Section 1.9(n) is added to define “international design application” as used in chapter I of title 37 of the CFR. Section 1.9(n) further provides that unless otherwise clear from the wording, reference to “design application” or “application for a design patent” in chapter I of the CFR includes an international design application that designates the United States.

Section 1.14:

Section 1.14(a)(1) introductory text is amended to add a reference to added paragraph (j) concerning international design applications.

Section 1.14(a)(1)(ii) is amended to replace the reference to “abandoned application that has been published as a patent application publication” with a reference to “abandoned published application.” This change is consistent with the language of § 1.11(a) to which § 1.14(a)(1)(ii) refers. In addition, the term “published application” is defined in § 1.9(c) as “an application for patent which has been published under 35 U.S.C. 122(b).” Pursuant to 35 U.S.C. 374 and 35 U.S.C. 390, international applications and international design applications that designate the United States and are published under the respective treaty, “shall be deemed a publication under section 122(b).” Accordingly, a published application for purposes of § 1.14 will include a publication by the International Bureau of either an international application under the PCT or an international design application under the Hague Agreement that designates the United

States. Access to such published applications is permitted under PCT Article 30 and Hague Agreement Article 10. In contrast, the term “patent application publication” refers to a publication by the Office under § 1.215. The Office will not publish international design applications under § 1.215 (

see

§ 1.211), as international design applications are published in English by the International Bureau under the Hague Agreement.

See

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

See also

35 U.S.C. 390, added by the PLTIA, deeming a publication under the Hague Agreement as a publication under 35 U.S.C. 122(b). 126 Stat. at 1531. In addition, the Office does not publish applications for design patents under 35 U.S.C. chapter 16.

See

§ 1.211(b).

Sections 1.14(a)(1)(iv)-(vi) are amended to include a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States among the publications for which access to an unpublished application may be obtained. Section 1.14(a)(1)(iv) is amended to permit access to the file contents of an unpublished abandoned application where the application is identified in the publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States, or where benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent or has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). Section 1.14(a)(1)(v) is amended to permit access to the file contents of an unpublished pending application where benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent or has published as a statutory invention registration, a U.S. patent application publication, an international publication under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). Section 1.14(a)(1)(vi) is amended to permit access to a copy of the application as originally filed of an unpublished pending application if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States.

Section 1.14(a)(1)(vii) is amended consistent with amendments to §§ 1.14(a)(1)(iv)-(vi).

Section 1.14(a)(2)(iv) is amended to add a reference to benefit claims under 35 U.S.C. 386, as provided by the PLTIA. 126 Stat. 1529-30.

Section 1.14(j) is added to set forth the conditions under which the records of an international design application maintained by the Office will be made available to the public.

Section 1.14(j)(1) provides that, with respect to an international design application maintained by the Office in its capacity as a designated office for national processing, the records associated with the international design application may be made available as provided under §§ 1.14(a)-(i). Under Hague Agreement Article 10(5), the Office is to keep international design registrations confidential until publication of the international registration by the International Bureau. This provision does not alter the Office's long-standing practice to make application files available to the public to satisfy the constitutionally mandated quid pro quo requiring public disclosure of patented inventions.

See United States ex rel. Pollok

v.

Hall,

1889 Dec. Comm'r Pat. 582, 48 O.G. 1263 (D.C. 1888) (recognizing that the rights of exclusivity and confidentiality stem from Article I, Section 8, clause 8, of the Constitution in holding that the Office must make available to the public an abandoned application specifically referenced in a patent); P.J. Federico,

Commentary on the New Patent Act,

reprinted in 75 J. Pat. & Trademark Off. Soc'y 161, 196-97 (1993) (as background discussion to the addition of section 122 to the 1952 Patent Act, noting that for nearly 100 years the Office has had regulations requiring that applications be maintained confidential while recognizing public accessibility when an abandoned application is referenced in a later issued patent);

see also

Metropolitan West Side Elevated Railroad Co. et al.

v.

Siemans,

1898 Dec. Comm'r Pat. 220, 222, 85 O.G. 290 (Comm'r Pat. 1898);

In re Reed Manufacturing Co.,

1900 Dec. Comm'r Pat. 140, 92 O.G. 2001 (Comm'r Pat. 1900);

Ex parte Lewis and Unger,

1903 Dec. Comm'r Pat. 303, 106 O.G. 543 (Comm'r Pat. 1903);

In re Doman,

1905 Dec. Comm'r Pat. 101, 115 O.G. 804 (Comm'r Pat. 1905). As a designated office, the Office will establish a file for national processing upon receipt of the published international registration from the International Bureau. In such cases, the records of the application file will be available pursuant to §§ 1.14(a)(ii)-(iii). The provisions of § 1.14(j)(1) provide for access to such international design applications maintained by the Office for national processing, thus treating international design applications the same as regular national applications.

Section 1.14(j)(2) provides that, with respect to an international design application maintained by the Office in its capacity as an office of indirect filing (§ 1.1002), the records of the international design application may be available under § 1.14(j)(1) when they are contained in the file of the international design application maintained by the Office for national processing. Also, if benefit of the international design application is claimed under 35 U.S.C. 386(c) in a U.S. patent or published application, the file contents of the application may be made available to the public, or the file contents of the application, a copy of the application-as-filed, or a specific document in the file of the application may be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)). The Office will place the application filed with the Office as an office of indirect filing in the file used for national processing as a designated office. Consequently, the records maintained by the Office as an office of indirect filing may be available where the records are part of the file maintained by the Office as a designated office and are available pursuant to § 1.14(j)(1). The records maintained by the Office as an office of the indirect filing may also be available where benefit to the international design application is claimed under 35 U.S.C. 386(c) in a U.S. patent or published application. Under the provisions of 35 U.S.C. 386(c) and 35 U.S.C. 388, applicants may claim benefit to an international design application that designates the United States provided the application claiming benefit of the international design application is filed before the date of withdrawal, renunciation, cancellation, or abandonment of the international application, either generally or as to the United States.

Section 1.16:

Sections 1.16(b), (l), and (p) are amended to clarify that the design application fees specified therein are applicable only to design applications filed under 35 U.S.C. 111 (

i.e.,

an application filed under 35

U.S.C. chapter 16). The other provisions of § 1.16 are not changed.

Section 1.17:

Section 1.17(f) is amended to specify the fee for filing a petition under § 1.1023 to review the filing date of an international design application in the United States. Section 101(a) of the PLTIA adds 35 U.S.C. 384, which provides that the filing date of an international application in the United States is the effective registration date (35 U.S.C. 384(a)), and authorizes the Director to establish procedures, including the payment of a surcharge, to review the filing date, which may result in a determination that the application has a filing date in the United States other than the effective registration date (35 U.S.C. 384(b)). 126 Stat. at 1529. The review procedure authorized under 35 U.S.C. 384(b) is set forth in § 1.1023, discussed

infra,

which requires,

inter alia,

the fee set forth in § 1.17(f). Under 35 U.S.C. 389(b), added by the PLTIA, all questions of procedures regarding an international design application designating the United States, unless required by the Hague Agreement and Hague Agreement Regulations, shall be determined as in the case of applications filed under 35 U.S.C. chapter 16. 126 Stat. at 1530. Accordingly, pursuant to the authority under 35 U.S.C. 389(b), the fee for filing a petition to review the filing date of an international design application under § 1.1023 is the same as the fee for filing a petition to accord a filing date in a national application (

see

§ 1.53(e)).

Section 1.17(g) is amended to specify the fee for filing a petition under § 1.55(g) for acceptance of a belated certified copy of a foreign application in a design application.

See

discussion of § 1.55(g).

Section 1.17(i)(1) is amended to remove the processing fee under § 1.55 for entry of a priority claim or certified copy of a foreign application after payment of the issue fee.

See

discussion of § 1.55(g).

Section 1.17(m) is amended to set forth the fee for filing a petition to excuse an applicant's failure to act within prescribed time limits in an international design application. Section 101(a) of the PLTIA adds 35 U.S.C. 387 to provide that an applicant's failure to act within prescribed time limits in connection with requirements pertaining to an international design application may be excused as to the United States upon a showing satisfactory to the Director of unintentional delay and under such conditions, including a requirement for payment of the fee specified in 35 U.S.C. 41(a)(7), as may be prescribed by the Director. 126 Stat. at 1530. The conditions for excusing an applicant's failure to act within the prescribed time limits in an international design application are set forth in § 1.1051, discussed

infra.

These requirements include,

inter alia,

the requirement to pay the fee set forth in § 1.17(m). The fee set forth in § 1.17(m) does not include a micro entity amount as this fee is set under 35 U.S.C. 41(a)(7) as amended by section 202(b)(1)(A) of the PLTIA, and not section 10(a) of the AIA. Section 10(b) of the AIA provides that the micro entity discount applies to fees set under section 10(a) of the AIA.

See

Public Law 112-29, 125 Stat. 284, 316-17 (2011). The Office will consider including a micro entity amount in § 1.17(m) in the event that patent fees are again set or adjusted under section 10(a) of the AIA.

Section 1.17(t) is amended to specify the fee for filing a petition under § 1.1052 to convert an international design application to a design application under 35 U.S.C. chapter 16.

See

discussion of § 1.1052,

infra.

The petition fee is not being set pursuant to section 10(a) of the AIA. Rather, the Office is setting this fee in this rulemaking pursuant to its authority under 35 U.S.C. 41(d)(2), which provides that fees for all processing, services, or materials relating to patents not specified in 35 U.S.C. 41 are to be set at amounts to recover the estimated average cost to the Office of such processing, services, or materials.

The Office uses an Activity Based Information (“ABI”) methodology to determine the estimated average costs (or expense) on a per process, service, or material basis including the particular processes and services addressed in this rulemaking. The ABI analysis includes compiling the Office costs for a specified activity, including the direct-expense (

e.g.,

direct personnel compensation, contract services, maintenance and repairs, communications, utilities, equipment, supplies, materials, training, rent, and program-related information technology (“IT”) automation), an appropriate allocation of allocated direct expense (

e.g.,

rent, program-related automation, and personnel compensation benefits such as medical insurance and retirement), and an appropriate allocation of allocated indirect expense (

e.g.,

general financial and human resource management, nonprogram specific IT automation, and general Office expenses). The direct expense for an activity plus its allocated direct expense and allocated indirect expense is the “fully burdened” expense for that activity. The “fully burdened” expense for an activity is then divided by production measures (number of that activity completed) to arrive at the fully burdened per-unit cost for that activity. The cost for a particular process is then determined by ascertaining which activities occur for the process and how often each such activity occurs for the process. If historical activity level information is not available for a particular fee, then ABI uses a cost build-up approach using position, salary, and burdening rate data to determine the full cost of work related to a particular fee. The ABI analysis in this rulemaking is based upon fiscal year 2012 expense. The prospective fees are calculated using the ABI expense and applying adjustment factors to estimate the cost in fiscal year 2015 expense, as fiscal year 2015 may be the next opportunity to consider whether to revisit the fees under section 10(a) of the AIA. This analysis uses 2012 expense as a proxy and adjusts for yearly inflation in the out-years.

The Office is estimating the fiscal year 2015 cost in this rulemaking by using the change in the Consumer Price Index for All Urban Consumers (“CPI-U”) for fiscal years 2013, 2014, and 2015, as the CPI-U is a reasonable basis for determining the change in Office costs between fiscal year 2012 and fiscal year 2015. The individual CPI-U increases for each fiscal year are multiplied together to obtain a cumulative CPI-U from fiscal year 2013 through fiscal year 2015. The actual CPI-U increase for fiscal year 2013 was 1.4 percent. The CPI-U increase for fiscal year 2014 is forecasted to be 1.6 percent. The CPI-U increase for fiscal year 2015 is forecasted to be 2.0 percent.

See Fiscal Year 2015 Analytical Perspectives, http://www.whitehouse.gov/sites/default/files/omb/budget/fy2015/assets/spec.pdf.

Thus, the estimated fiscal year 2015 cost amounts are calculated by multiplying the actual expense amount for fiscal year 2012 by 1.051 (1.014 multiplied by 1.016 multiplied by 1.020 equals 1.051). The estimated fiscal year 2015 cost amounts are then rounded to the nearest ten dollars by applying standard arithmetic rules so that the resulting fee amounts will be convenient for international design application users.

The processing of a petition to convert an international design application to a design application under 35 U.S.C. chapter 16 involves review and preparation of a decision for the petition. An estimate of the number of hours required for a GS-12, Step 5, attorney to review the petition and draft a decision is two hours. The ABI analysis indicates that the estimated fully burdened expense during fiscal

year 2012 to review and prepare a decision for the petition is $172 ($86 fully burdened labor cost per hour multiplied by 2). Thus, the Office estimates that the fiscal year prospective unit cost to review the petition and draft a decision, using the estimated CPI-U increase for fiscal years 2013, 2014, and 2015, is $181 ($172 multiplied by 1.051), which, when rounded to the nearest ten dollars, is a petition fee for conversion of $180. Additional information concerning the Office's analysis of the estimated fiscal year 2015 costs for converting an international design application to a design application under 35 U.S.C. chapter 16 is available upon request.

Section 1.18:

Section 1.18(b)(3) is added to provide that an issue fee paid through the International Bureau in an international design application designating the United States shall be in the amount specified on the Web site of WIPO, currently available at

http://www.wipo.int/hague,

at the time the fee is paid. The option for applicants to pay the issue fee through the International Bureau is provided for in Hague Agreement Rule 12(3)(c) and is in lieu of paying the issue fee under § 1.18(b)(1). Article 7(2) permits a Contracting Party to declare that the prescribed designation fee shall be replaced by an individual designation fee, whose amounts can be changed in further declarations. The International Bureau accepts payment only in Swiss currency (see Hague Agreement Rule 28(1)) and all fee amounts specified on the WIPO Web site are in Swiss currency.

Section 1.25:

Section 1.25(b) is amended to provide that international design application fees may be charged to a deposit account. International design application fees are set forth in § 1.1031. Section 1.25(b) is also amended to provide that a general authorization to charge fees in an international design application set forth in § 1.1031 will only be effective for the transmittal fee (§ 1.1031(a)). The international fees set forth in § 1.1031, other than the transmittal fee set forth in § 1.1031(a), are not required to be paid to the Office as an office of indirect filing.

See

§ 1.1031(d).

Section 1.27:

The introductory text of § 1.27(c)(3) is amended to provide that the payment, by any party, of the small entity first part of the individual designation fee for the United States to the International Bureau will be treated as a written assertion of entitlement to small entity status. The change to § 1.27(c)(3) will permit international design applicants to establish small entity status for the purpose of the United States by payment to the International Bureau of the small entity first part of the individual designation fee for the United States.

Section 1.29:

Section 1.29(e) is amended to provide that a micro entity certification filed in an international design application may be signed by a person authorized to represent the applicant under § 1.1041 before the International Bureau where the micro entity certification is filed with the International Bureau.

Section 1.32:

The introductory text of § 1.32(d) is amended to add a reference to benefit claims under 35 U.S.C. 386(c), as provided by the PLTIA. 126 Stat. 1529-30. Thus, a power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 386(c) in a continuing international design application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application, subject to the conditions set forth in § 1.32(d).

Section 1.41:

Section 1.41(f) is added to set forth the inventorship in an international design application designating the United States. Specifically, the inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). Section 1.41(f) further provides that any correction of inventorship must be pursuant to § 1.48.

Section 1.46:

The introductory text of § 1.46(b) is amended to provide that if an application entering the national stage under 35 U.S.C. 371 or a nonprovisional international design application is applied for by a person other than the inventor under § 1.46(a) (

i.e.,

the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter, as provided under 35 U.S.C. 118), that person must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3). The amendment does not change the current practice with respect to national stage applications under 35 U.S.C. 371, where a person seeking to become an applicant under § 1.46 in the national phase was not named as an applicant for the United States in the international phase. In such case, that person must comply with the requirements under § 1.46(c), including the requirements of §§ 3.71 and 3.73, to be an applicant in the national phase. The amendment treats international design applications in the same manner as international applications under the PCT.

See

discussion of § 1.1011(b),

infra

(regarding who may be an applicant for an international design application designating the United States).

Section 1.46(c) is amended to provide for the correction or update in the name of the applicant in paragraph (c)(1) and a change in the applicant in paragraph (c)(2). Section 1.46(c)(1) corresponds to the first sentence of paragraph (c) of former § 1.46 and further provides that a change in the name of the applicant under § 1.46 recorded pursuant to Hague Agreement Article 16(1)(ii) will be effective to change the name of the applicant in a nonprovisional international design application. Article 16(1)(ii) provides for recording in the International Register by the International Bureau of a change in the name of the holder. Under Article 16(2), such recording has the same effect as if made in the office of each of the designated Contracting Parties. Thus, where the applicant in a nonprovisional international design application under § 1.46 is the holder of the international registration, correction or update of the applicant's name may be made through the mechanism under Article 16(1)(ii). Section 1.46(c)(1) also clarifies that a correction or update of the name of the applicant using an application data sheet must be made in accordance with § 1.76(c)(2), which requires that the information that is changed be indicated by underlining, strike-though, or brackets, as appropriate.

Section 1.46(c)(2) corresponds to the second sentence of paragraph (c) of former § 1.46 and provides that any request to change the applicant under § 1.46 after an original applicant has been specified must include an application data sheet under § 1.76 specifying the applicant in the applicant information section (§ 1.76(b)(7)) in accordance with § 1.76(c)(2) and comply with §§ 3.71 and 3.73. The language of § 1.46(c)(2) is amended to clarify that any change in the applicant under § 1.46 once an applicant has been specified requires identification of the new applicant in an application data sheet in accordance with § 1.76(c)(2) and comply with §§ 3.71 and 3.73. There was some confusion with respect to the proper way to change the applicant where (1) the inventor was the original applicant or (2) the applicant is being changed from a second (or subsequent) applicant to a new applicant. Specifying the applicant in an application filed under 35 U.S.C. 111 may be accomplished

either by the person who has made the application or by the Office where the applicant has not been specified by the time the filing receipt is issued. The Office previously indicated that the inventors may be considered the applicant where an applicant has not otherwise been specified and that compliance with §§ 3.71 and 3.73 is required for any change in the applicant from the inventors.

See Changes To Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act,

77 FR 48775, 48785 (Aug. 14, 2012). In an application entering the national stage under 35 U.S.C. 371, the original applicant specified is the person identified as the applicant for the United States in the international stage of the international application. In a nonprovisional international design application, the original applicant specified is the person identified as the applicant in the publication of the international registration under Hague Agreement Article 10(3). Section 1.46 does not govern changes in inventorship. Rather, any request to add or delete an inventor, or to correct or update the name of an inventor, must be made in accordance with the provisions of § 1.48.

Section 1.53:

The introductory text of § 1.53(b) is amended to include a reference to 35 U.S.C. 386(c), as added by the PLTIA. Thus, § 1.53(b) provides that a continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and § 1.78.

Section 1.53(c)(4) is amended to include a reference to 35 U.S.C. 386(a) and 386(c), as added by the PLTIA, thus making clear that a provisional application is not entitled to a right of priority or to the benefit of the filing date of an international design application.

Section 1.53(d)(1)(ii) is amended to provide that a continued prosecution application (“CPA”) of a prior nonprovisional application may be filed where the prior nonprovisional application is a design application, but not an international design application, that is complete as defined by § 1.51(b), except for the inventor's oath or declaration if the application is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in § 1.53(f)(3)(i).

Section 1.55:

Section 1.55 is revised to provide for a right of priority under 35 U.S.C. 386 with respect to international design applications and for other matters, as discussed below. In addition, as to the applicability dates for certain provisions in existing rules, this final rule makes those applicability dates more accessible by stating them directly in the body of those rules. In particular, the requirements of § 1.55 set forth in the following final rules have been consolidated in this final rule:

Changes To Implement the Patent Law Treaty,

78 FR 62368, 62399 (Oct. 21, 2013) (changes to § 1.55 made therein applicable to any patent application filed before, on, or after December 18, 2013, except for the changes to § 1.55(f), which is applicable to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013);

Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act,

78 FR 11024 (Feb. 14, 2013) (applicable to any application filed under 35 U.S.C. 111 or 363 on or after March 16, 2013);

Changes To Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act,

77 FR 48776 (Aug. 14, 2012) (applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012); and

Changes to Implement Eighteen-Month Publication of Patent Applications,

65 FR 57024 (Sept. 20, 2000) (applicable to patent applications filed on or after November 29, 2000).

Section 1.55(a) is amended to provide that an applicant in a nonprovisional application may claim priority to one or more prior foreign applications under the conditions specified in 35 U.S.C. 386(a) and (b) and this section.

Section 1.55(b) is amended to clarify which application is the “subsequent application” for purposes of § 1.55. Section 1.55(b) provides that the nonprovisional application must be: Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of the section (a subsequent application); or entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of the section. Thus, the subsequent application in either § 1.55(b)(1) or (b)(2) is the application required to be filed within the period set forth in § 1.55(b)(1). For purposes of § 1.55(b)(2), the subsequent application may be a nonprovisional application, an international application designating the United States, or international design application designating the United States.

Section 1.55(c) is amended to provide for restoration of priority claims under 35 U.S.C. 386(a) or (b). Restoration of the right of priority is provided for under 35 U.S.C. 119(a), as amended by title II of the PLTIA. 126 Stat. 1534. Section 1.55 was previously amended to implement the provisions of 35 U.S.C. 119, as amended by title II of the PLTIA.

See Changes To Implement the Patent Law Treaty,

78 FR 62368, 62399 (Oct. 21, 2013). Under 35 U.S.C. 386(a) and (b), entitlement to priority to a prior application shall be “[i]n accordance with the conditions and requirements of subsections (a) through (d) of section 119 and section 172 . . . .” Consequently, § 1.55(c) is amended in this final rule to provide that restoration of the right of priority is available for priority claims under 35 U.S.C. 386(a) and (b).

Section 1.55(c) is also amended to provide that a petition to restore the right of priority filed on or after May 13, 2015 (the effective date of this final rule) must be filed in the subsequent application or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. The Office has received inquiries from the public asking in which application the petition to restore the right of priority under § 1.55(c) must be filed where there is a chain of applications claiming benefit under 35 U.S.C. 120, 121, or 365(c) to the application for which filing was unintentionally delayed. The amendment to § 1.55(c) is intended to provide clarification by requiring that, on or after May 13, 2015, a petition to restore the right of priority under this paragraph be filed in the subsequent application or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. If a petition under § 1.55(c) to restore the right of priority is granted, a further petition under § 1.55(c) is not required in an application entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of the subsequent application for which the right of priority was restored.

Requiring the filing of the petition under § 1.55(c) in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, when the subsequent application is not a nonprovisional application, is

appropriate because the Office may not have an application file established for the subsequent application. This would occur, for example, where an international application designating the United States was filed in a foreign Receiving office and the applicant files a continuation of the international application under 35 U.S.C. 111(a) rather than entering the national phase under 35 U.S.C. 371. Nevertheless, the statement required under § 1.55(c)(3) must still relate to the unintentional delay in filing the subsequent application,

i.e.,

the international application, in such instance.

Section 1.55(e) is amended to provide that unless such claim is accepted in accordance with the provisions of § 1.55(e), any claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) not presented in the manner required by § 1.55(d) or (m) during pendency and within the time period provided by § 1.55(d) (if applicable) is considered to have been waived. Section 1.55(e) is also amended to provide for the acceptance of a delayed priority claim considered to have been waived under § 1.55 and to provide for acceptance of an unintentionally delayed priority claim under 35 U.S.C. 386(a) or 386(b).

35 U.S.C. 119(b), amended in section 4503 of the American Inventors Protection Act of 1999 (AIPA), provides in paragraph (b)(1) that “[n]o application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director.”

See

Pub. L. 106-113, 113 Stat. 1501 (1999). 35 U.S.C. 119(b), amended under the AIPA, further provides, in paragraph (b)(2) that “[t]he Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim under this section.”

Id.

Section 4503 of the AIPA applies “only to applications (including international applications designating the United States) filed on or after [November 29, 2000].”

See Intellectual Property and High Technology Technical Amendments Act of 2002,

Public Law 107-273, 116 Stat. 1757. 35 U.S.C. 119(b)(2) was subsequently amended under title II of the PLTIA to provide for the payment of the fee specified in 35 U.S.C. 41(a)(7). 126 Stat. 1536. Pursuant to the authority under 35 U.S.C. 119(b)(2), the Office established procedures to accept an unintentionally delayed claim for priority in utility applications.

See Changes to Implement Eighteen-Month Publication of Patent Applications,

65 FR 57024 (Sept. 20, 2000). However, no procedures were established for accepting an unintentionally delayed priority claim in a design application. The change to § 1.55(e) makes the petition procedure therein applicable to design applications, thus according design applicants the same remedy available to applicants in utility applications.

Section 1.55(f) is amended to provide for an exception under § 1.55(h) to the requirement for a certified copy of the prior foreign application.

See

discussion of § 1.55(h),

infra.

Section 1.55(g) is amended to provide that the claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under § 1.55(e) or (f) or with a petition accompanied by the fee set forth in § 1.17(g), which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. MPEP 216.01 provides for the submission of a request for certificate of correction under § 1.323 along with, where applicable, a petition under § 1.55(e), to perfect a claim for priority under 35 U.S.C. 119(a)-(d) and (f) in a patent under certain conditions, including the case where the certified copy was not in the application that issued as a patent but was filed in a parent application. Where the conditions set forth in MPEP 216.01 do not apply, perfection of the claim for foreign priority generally required the filing of a reissue application.

See

MPEP 1417. Section 1.55(g), as amended in this final rule, eliminates the need in many instances to file a reissue application in order to perfect a claim for foreign priority by allowing the certified copy of the foreign application required under § 1.55 to be filed in the application with a petition under § 1.55(f) or as provided in § 1.55(g), together with the fee set forth in § 1.17(g), that includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application. In addition, where a priority claim under § 1.55 was not timely made, § 1.55(g) as amended in this final rule allows the priority claim and certified copy required under § 1.55 to be filed pursuant to a petition under § 1.55(e) even if the application is not pending (

e.g.,

a patented application). Furthermore, where the priority claim required under § 1.55 was timely filed in the application but was not included on the patent because the requirement under § 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and § 1.323, accompanied by a grantable petition under § 1.55(f) or (g), without the need for a petition under § 1.55(e) to accept an unintentionally delayed priority claim.

Section 1.55(g) is also amended to remove the requirement for the processing fee set forth in § 1.17(i) where the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid. Section 1.55(g), however, retains the provision of former § 1.55(g) that if the claim for priority or the certified copy is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.

Section 1.55(h) provides that the requirement in § 1.55(f) and (g) for a certified copy of the foreign application will be considered satisfied in a reissue application if the patent for which reissue is sought satisfies the requirement of this section for a certified copy of the foreign application and such patent is identified in the reissue application as containing the certified copy. Section 1.55(h) further provides that the requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will also be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and such prior-filed nonprovisional application is identified as containing a certified copy of the foreign application. The exception under § 1.55(h) to the requirement to provide the certified copy of the foreign application is in accord with long-standing Office policy.

See, e.g.,

MPEP 215(III) (9th ed., Mar. 2014).

Sections 1.55(i)-(l) in this final rule correspond to the provisions of paragraphs (h)-(k) of former § 1.55. Section 1.55(i)(4) is also amended, consistent with Office practice, to provide that the request under that paragraph may be filed with a petition under § 1.55(f).

See AIA Frequently Asked Questions,

Question FITF3500,

http://www.uspto.gov/aia_implementation/faqs_first_inventor.jsp.

Section 1.55(j)(2) is amended to provide for a time period to submit the copy of the foreign application and separate cover sheet in a national stage application to include the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)) or four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage. Section 1.55(j)(2) is also amended to provide for the submission of the copy of the foreign application and separate cover sheet with a petition under § 1.55(f).

Id.

Nonprovisional international design applications are also excluded from the transition provision of § 1.55(k), as such applications can only be filed on or after the date the treaty takes effect as to the United States.

Section 1.55(m) sets forth the time for filing a priority claim and certified copy of a foreign application in an international design application designating the United States. Section 1.55(m) provides that in an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations. Section 1.55(m) further provides that in a nonprovisional international design application, the priority claim, unless made in accordance with the Hague Agreement and the Hague Agreement Regulations, must be presented in an application data sheet (§ 1.76(b)(6)) identifying the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in § 1.55(g).

Section 1.55(o) provides, in accordance with the effective date provision of title I of the PTLIA, that the right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon. 126 Stat. 1532.

Section 1.55(p) provides that the time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4). Section 1.55(p) in this final rule corresponds to the provisions contained in paragraphs (b) and (l) of former § 1.55 and further provide that the time periods are subject to Hague Agreement Rule 4(4). Rule 4(4) provides that if a period expires on a day on which the International Bureau or the office concerned is not open to the public, the period shall expire on the first subsequent day on which the International Bureau or the office concerned is open to the public. Section 101(a) of the PLTIA adds 35 U.S.C. 386(b), which provides: “[i]n accordance with the conditions and requirements of subsections (a) through (d) of section 119 and section 172 and the treaty and the Regulations, an international design application designating the United States shall be entitled to the right of priority based on a prior foreign application . . . .” 126 Stat. at 1529. Thus, pursuant to 35 U.S.C. 386(b), the priority period in an international design application designating the United States is subject to Rule 4(4).

Section 1.57:

Section 1.57(a)(4) is amended to change the reference from “§ 1.55(h)” to “§ 1.55(i)” in light of the changes to § 1.55 in this final rule. The introductory text of § 1.57(b) is amended to include a reference to priority and benefit claims to international design applications. Section 101(a) of the PLTIA adds 35 U.S.C. 386 to provide for a right of priority or benefit with respect to an international design application. 126 Stat. at 1529-30. Accordingly, the introductory text of § 1.57(b) is amended to provide for incorporation by reference to an inadvertently omitted portion of the specification or drawings based on a claim for priority under § 1.55 or benefit claim under § 1.78 to an international design application present upon filing. Section 1.57(b)(4) is also added to provide that any amendment to an international design application pursuant to § 1.57(b)(1) shall be effective only as to the United States and shall have no effect on the filing date of the application and that no request under § 1.57(b) to add the inadvertently omitted portion of the specification or drawings in an international design application will be acted upon by the Office prior to the international design application becoming a nonprovisional application. Section 1.57(b)(4) is similar to § 1.57(b)(2), which applies to international applications.

Section 1.63:

Section 1.63(d)(1) is amended to add references to § 1.1021(d) and 35 U.S.C. 386(c) so as to provide that a newly executed oath or declaration under § 1.63, or substitute statement under § 1.64, is not required under §§ 1.51(b)(2) and 1.53(f), or under §§ 1.497 and 1.1021(d), for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed is submitted in the continuing application. Title I of the PLTIA amends 35 U.S.C. 115(g)(1) (as amended by the Leahy-Smith America Invents Act) by adding a reference to benefit claims under 35 U.S.C. 386(c).

See

126 Stat. 1531. The amendment to § 1.63(d)(1) is consistent with this statutory change.

Section 1.76:

Section 1.76(a) is amended to provide for the filing of an application data sheet in a nonprovisional international design application and to include a reference to priority and benefit claims under 35 U.S.C. 386 with respect to international design applications. Section 1.76(b)(5) is amended to provide for domestic benefit information pertaining to benefit claims under 35 U.S.C. 386(c). Section 1.76(b)(6) is amended to provide that the foreign priority information section of the application data sheet may include the intellectual property authority rather than country of filing. This change is for consistency with the requirements of 35 U.S.C. 119(b) and § 1.55.

Section 1.78:

Section 1.78 is amended, as discussed below, to provide for benefit claims under 35 U.S.C. 386(c) with respect to international design applications designating the United States. In addition, as to the applicability dates for certain provisions in existing rules, this final rule makes those applicability dates more accessible by stating them directly in the body of those rules. In particular, the requirements of § 1.78 set forth in the following final rules have been consolidated in this final rule:

Changes To Implement the Patent Law Treaty,

78 FR 62368, 62399 (Oct. 21, 2013) (applicable to any patent application filed before, on, or after December 18, 2013);

Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act,

78 FR 11024 (Feb. 14, 2013) (applicable to any application filed under 35 U.S.C. 111 or 363 on or after March 16, 2013);

Changes To Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act,

77 FR 48776 (Aug. 14, 2012) (applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on

or after September 16, 2012); and

Changes to Implement Eighteen-Month Publication of Patent Applications,

65 FR 57024 (Sept. 20, 2000) (applicable to patent applications filed on or after November 29, 2000).

Section 1.78(a)(1) is amended to clarify which application is the “subsequent application” for purposes of § 1.78. Section 1.78(a)(1) provides that the nonprovisional application, other than for a design patent, or international application designating the United States must be: Filed not later than twelve months after the date on which the provisional application was filed, subject to paragraph (b) of the section (a subsequent application); or entitled to claim the benefit under 35 U.S.C. 120, 121, or 365(c) of a subsequent application that was filed within the period set forth in paragraph (a)(1)(i) of the section. Thus, the subsequent application in either § 1.78(a)(1)(i) or (a)(1)(ii) is the application required to be filed within the period set forth in § 1.78(a)(1)(i). For purposes of § 1.78(a)(1)(ii), the subsequent application may be a nonprovisional application or an international application designating the United States.

Section 1.78(b) is amended to provide, in paragraph (b)(1), that a petition to restore the benefit of a provisional application under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application. A similar change was made to § 1.55.

See

discussion of § 1.55(c),

supra.

If a petition under § 1.78(b) to restore benefit of a provisional application is granted, a further petition under § 1.78(b) is not required in an application entitled to claim the benefit under 35 U.S.C. 120, 121, or 365(c) of the subsequent application for which benefit of the provisional application was restored.

The introductory text of § 1.78(d) is amended to provide for benefit claims under 35 U.S.C. 386(c) with respect to international design applications designating the United States. Section 1.78(d)(1)(ii) provides that the prior-filed application to which benefit is claimed may be an international design application entitled to a filing date in accordance with § 1.1023 and designating the United States.

Section 1.78(d)(2) is amended to provide that the reference required under this paragraph to a prior filed international design application designating the United States may identify the international design application by international registration number and filing date under § 1.1023. Where the international design application becomes a nonprovisional application, which occurs when the Office receives a copy of the international registration from the International Bureau pursuant to Article 10 of the Hague Agreement (

see

§ 1.9), the required reference can identify the nonprovisional application number instead of the international registration number and filing date under § 1.1023. Identifying the prior international design application by the nonprovisional application number is preferable to the Office and simpler for applicants.

Section 1.78(d)(3) is amended to provide, in paragraph (d)(3)(i), that the reference required by 35 U.S.C. 120 and § 1.78(d)(2) must be submitted during the pendency of the later-filed application. Section 1.78(d)(3)(ii) sets forth the time period for submitting the reference required under 35 U.S.C. 120 and § 1.78(d)(2) in a later-filed application under 35 U.S.C. 111(a) (excluding design applications) and in a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371 and substantially corresponds to the provisions contained in paragraph (d)(3) of former § 1.78. Section 1.78(d)(3)(iii) provides that, except as provided in § 1.78(e), the failure to timely submit the reference required by 35 U.S.C. 120 and § 1.78(d)(2) is considered a waiver of any benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. The changes to § 1.78(d)(3) in this final rule would make the procedures under § 1.78(e) to accept an unintentionally delayed benefit claim applicable to design applications and thus accord applicants in design applications the same remedy for accepting an unintentionally delayed benefit claim that is available to applicants in utility applications. The establishment of such procedures is provided for in 35 U.S.C. 120, as amended in section 4503 of the AIPA.

See

discussion of § 1.55(e),

supra

(regarding acceptance of an unintentionally delay claim of priority in a design application).

Section 1.78(d)(6) is amended to exclude nonprovisional international design applications, as such applications can only be filed on or after the date the Hague Agreement takes effect as to the United States.

Section 1.78(d)(7) is added to provide that where benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application or an international design application, which designates but did not originate in the United States, the Office may require a certified copy of such application together with an English translation thereof if filed in another language. The authority to require a certified copy of an international design application that designates the United States but did not originate in the United States, and an English translation thereof, is provided in 35 U.S.C. 386(c). Similar authority with respect to international applications that designate the United States but do not originate in the United States is provided in 35 U.S.C. 365(c). Since international applications are published under PCT Article 21(2) and international design applications are published under Hague Agreement Article 10(3), the Office would not ordinarily require a certified copy of the international application or international design application pursuant to § 1.78(d)(7). Rather, the Office foresees use of § 1.78(d)(7) primarily in instances where the international application or international design application did not publish under the respective treaty or where there is a question as to the content of the disclosure of the application as of its filing date and the certified copy and any English translation are needed to determine entitlement to the benefit of the filing date of the international application or international design application in order to, for example, overcome a prior art reference.

Section 1.78(e) is amended to provide for acceptance of a delayed benefit claim under 35 U.S.C. 386(c) to a prior filed international application designating the United States pursuant to the petition procedure set forth therein.

Section 1.78(i) is added to provide that where a petition under paragraphs (b), (c), or (e) of this section is required in an international application that was not filed with the United States Receiving Office and is not a nonprovisional application, then such petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application and will be treated as being filed in the international application. This provision is added because, in such instances, the Office does not have an application file established for the international application.

Section 1.78(j) provides, in accordance with the effective date provision of title I of the PTLIA, that benefit under 35 U.S.C. 386(c) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed

on or after May 13, 2015, and patents issuing thereon. 126 Stat. 1532.

Section 1.78(k) in this final rule corresponds to the provisions contained in paragraphs (h) and (a)(1) of former § 1.78 and further provides that the time periods are subject to Hague Agreement Rule 4(4).

Section 1.84:

Section 1.84(a)(2) is amended to eliminate the requirement for a petition and fee set forth in § 1.17(h) to accept color drawings or photographs in design applications. The requirements that the design application include the number of sets of color drawings required by § 1.84(a)(2)(ii) and that the specification contain the reference to the color drawings or photographs set forth in § 1.84(a)(2)(iii) are maintained. The reference set forth in § 1.84(a)(2)(iii) provides notice to the public should the design application issue as a patent that the patented design is in color. In addition, the petition requirement is maintained for utility patent applications. Section 1.84(a)(2) is also amended to reflect current requirements for color drawings submitted through EFS-Web.

See Legal Framework for Electronic Filing System—Web (EFS-Web),

74 FR 55200, 55208 (Oct. 27, 2009) (“The requirement for three (3) sets of color drawings under 37 CFR 1.84(a)(2)(ii) is not applicable to color drawings submitted via EFS-Web. Therefore, only one set of such color drawings is necessary when filing via EFS-Web.”).

Section 1.84(y) is amended to include a cross reference to international design application reproductions in § 1.1026.

Section 1.85:

Section 1.85(c) is amended to provide that if an amended drawing submitted under § 1.121(d) in a nonprovisional international design application does not comply with § 1.1026 at the time an application is allowed, the Office may notify the applicant in a notice of allowability and set a three-month period of time from the mail date of the notice of allowability within which the applicant must file a corrected drawing to avoid abandonment.

Section 1.97:

Section 1.97(b) is amended by revising paragraphs (b)(3) and (b)(4), and adding a new paragraph (b)(5) to provide that an information disclosure statement may be filed within three months of the date of publication of the international registration under Hague Agreement Article 10(3) in an international design application. An information disclosure statement may also be submitted with the international design application.

See

Hague Agreement Rule 7(5)(g) (“The international application may be accompanied by a statement that identifies information known by the applicant to be material to the eligibility for protection of the industrial design concerned.”).

Section 1.105:

The introductory text of § 1.105(a)(1) is amended to make a requirement for information under § 1.105 applicable to international design applications and to clarify that the requirement under § 1.105 is applicable to a reexamination proceeding ordered as a result of a supplemental examination proceeding.

Section 1.109:

Section 1.109 is revised such that its definition of “effective filing date” is no longer restricted only to first inventor to file applications, but applies regardless of whether an application is a first to invent or a first inventor to file application. This does not change or affect the meaning of effective U.S. filing date when used in the MPEP to discuss the treatment of first to invent (pre-AIA) applications or the order of examination.

Section 1.109(a)(2) is also amended to include, for purposes of determining the “effective filing date” for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent), a right of priority or benefit of an earlier filing date under 35 U.S.C. 386. Title I of the PLTIA amends 35 U.S.C. 100(i)(1)(B) (as amended by the Leahy-Smith America Invents Act) to include, within the meaning of “effective filing date” for a claimed invention in a patent or application, the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date under 35 U.S.C. 386.

See

126 Stat. 1531. The amendment to § 1.109(a)(2) is consistent with the change to 35 U.S.C. 100(i)(1)(B) as amended by title I of the PLTIA.

Section 1.114:

35 U.S.C. 132(b), which provides for the request for continued examination practice set forth in § 1.114, was added to title 35, United States Code, in section 4403 of the American Inventors Protection Act of 1999 (AIPA).

See

Public Law 106-113, 113 Stat. 1501, 1501A-561 (1999). With respect to international applications, section 4405(b)(1) of the AIPA provides that 35 U.S.C. 132(b) applies to “applications complying with section 371 of title 35, United States Code, that resulted from international applications filed on or after June 8, 1995.”

See

113 Stat. at 1501A-561. The Office recently revised its rules to permit applicants, including applicants in national stage applications under 35 U.S.C. 371, to postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance (subject to certain conditions).

See Changes to Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act,

77 FR 48776 (Aug. 14, 2012) (final rule). An international application, however, does not comply with the requirements of 35 U.S.C. 371 until the application includes the inventor's oath or declaration.

See

35 U.S.C. 371(c)(4);

see also

77 FR at 48777, 48780, 48795 (explaining that the inventor's oath or declaration is still required for a PCT international application to comply with 35 U.S.C. 371, notwithstanding the changes permitting applicants to postpone filing the inventor's oath or declaration until after a PCT international application enters the national stage). Thus, the Office is revising § 1.114(e)(3) to clarify that the request for continued examination practice set forth in § 1.114 added in section 4403 of the AIPA does not apply to an international application until the international application complies with 35 U.S.C. 371 (which requires the filing of the inventor's oath or declaration in the international application, as well as, for example, the basic national fee and an English language translation of the international application if filed in another language).

Section 1.114(e) also is amended to provide that a request for continued examination may not be filed in an international design application, as there is no statutory provision to permit the filing of a request for continued examination in an international design application. Section 4405(b)(2) of the AIPA specifically excludes design applications under 35 U.S.C. chapter 16 from the provisions of 35 U.S.C. 132(b), and there is no provision in the AIPA, PLTIA, or other legislative act making 35 U.S.C. 132(b) applicable to international design applications.

Section 1.121:

Section 1.121(d) is amended to provide for amendments to the drawings in a nonprovisional international design application and requires,

inter alia,

that any changes to the drawings be in compliance with §§ 1.84(c) and 1.1026.

Section 1.130:

Section 1.130(d) is amended to refer to the definition of “effective filing date” in § 1.109, rather than the definition of “effective filing date” in 35 U.S.C. 100(i). The definition of “effective filing date” in § 1.109 and 35 U.S.C. 100(i) are the same, and other rules of practice refer to definition of “effective filing date” in § 1.109.

See

§§ 1.78, 1.110. Section 1.130(d) is also amended to include a reference to 35 U.S.C. 386(c), added by title I of the PLTIA, concerning domestic benefit claims with respect to international

design applications that designate the United States. Pursuant to 35 U.S.C. 386(c), an application must comply with the conditions and requirements of 35 U.S.C. 120, which include,

inter alia,

a requirement that the application contain a specific reference to the earlier application whose filing date is claimed.

Section 1.131:

Section 1.131(d) is amended to refer to the definition of “effective filing date” in § 1.109, rather than the definition of “effective filing date” in 35 U.S.C. 100(i). The definition of “effective filing date” in § 1.109 and 35 U.S.C. 100(i) are the same, and other rules of practice refer to definition of “effective filing date” in § 1.109.

See

§§ 1.78, 1.110. Section 1.131(d) is also amended to include a reference to 35 U.S.C. 386(c), added by title I of the PLTIA, concerning domestic benefit claims with respect to international design applications that designate the United States.

Section 1.137:

Section 1.137(d)(1)(ii) and (d)(2) are amended to include a reference to 35 U.S.C. 386(c) concerning domestic benefit claims with respect to international design applications that designate the United States.

Section 1.155:

Section 1.155 is amended to provide for expedited examination of an international design application that designates the United States. To qualify for expedited examination, § 1.155(a)(1) provides that the international design application must have been published pursuant to Hague Agreement Article 10(3).

Section 1.175:

The introductory text of § 1.175(f)(1) is amended to include a reference to 35 U.S.C. 386(c) concerning domestic benefit claims with respect to international design applications that designate the United States.

Section 1.211:

Section 1.211(b) is amended to provide that an international design application under 35 U.S.C. chapter 38 shall not be published by the Office under § 1.211. International registrations are published by the International Bureau pursuant to Article 10(3) of the Hague Agreement. The international registration includes the data contained in the international design application and any reproduction of the industrial design.

See

Hague Agreement Rule 15(2).

Section 1.312:

The Office has decided not to amend § 1.312 in this final rule. Pursuant to Rule 29 of the Hague Agreement, where the second part of the individual U.S. designation fee (

i.e.,

the issue fee) is paid to the International Bureau, the International Bureau is to “immediately upon its receipt” credit payment of such fee to the Office. The proposed rule would create an administrative burden in international design applications where the issue fee was paid to the International Bureau in order to determine the appropriate date to be used for amendment entry purposes. The Office may reconsider the need for such a provision after it gains more experience with the crediting of fees by the International Bureau to the Office.

A new subpart I is added to provide for international and national processing of international design applications.

Section 1.1001:

Section 1.1001 is added to include definitions of terms used in subpart I.

Section 1.1002:

Section 1.1002 is added to indicate the major functions of the USPTO as an office of indirect filing. These include: (1) Receiving and according a receipt date to international design applications; (2) collecting and, when required, transmitting fees for processing international design applications; (3) determining compliance with applicable requirements of part 5 of chapter I of title 37 of the CFR; and (4) transmitting an international design application to the International Bureau, unless prescriptions concerning national security prevent the application from being transmitted.

Section 1.1003:

Section 1.1003 is added to indicate the major functions of the USPTO as a designated office. These include: (1) Accepting for national examination international design applications that satisfy the requirements of the Hague Agreement and Regulations; (2) performing an examination of the international design application in accordance with 35 U.S.C. chapter 16; and (3) communicating the results of examination to the International Bureau.

Section 1.1004:

Section 1.1004 is added to indicate the major functions of the International Bureau. These include: (1) Receiving international design applications directly from applicants and indirectly from an office of indirect filing; (2) collecting required fees and crediting designation fees to the accounts of the Contracting Parties concerned; (3) reviewing international design applications for compliance with prescribed requirements; (4) translating international design applications into the required languages for recordation and publication; (5) registering the international design in the International Register where the international design application complies with the applicable requirements; (6) publishing international registrations in the International Designs Bulletin; and (7) sending copies of the publication of the international registration to each designated office.

Section 1.1005:

Section 1.1005 is added, pursuant to the Paperwork Reduction Act of 1995, to display the currently valid Office of Management and Budget control number for the collection of information in 37 CFR part 1, subpart I. Section 1.1005(a) provides that pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501

et seq.

), the collection of information in this subpart has been reviewed and approved by the Office of Management and Budget under control number 0651-0075. Section 1.1005(b) provides that notwithstanding any other provision of law, no person is required to respond to nor shall a person be subject to a penalty for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid Office of Management and Budget control number. Section 1.1005(b) further provides that § 1.1005 constitutes the display required by 44 U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of information under Office of Management and Budget control number 0651-0075.

Section 1.1011:

Section 1.1011(a) is added to specify who may file an international design application through the USPTO. Under Article 3, any person that is a national of a State that is a Contracting Party or a State member of an intergovernmental organization that is a Contracting Party, or that has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application. Under Article 4(1), the international application may be filed, at the option of the applicant, either directly with the International Bureau or through the office of the applicant's Contracting Party (

i.e.,

an office of indirect filing). Title I of the PLTIA adds 35 U.S.C. 382(a), which provides: “[a]ny person who is a national of the United States, or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States, may file an international design application by submitting to the Patent and Trademark Office an application in such form, together with such fees, as may be prescribed by the Director.” 126 Stat. at 1528. In accordance with 35 U.S.C. 382(a) and Articles 3 and 4(1), § 1.1011(a) specifies that only persons who are nationals of the United States or who have a domicile, a habitual residence, or a real and effective industrial or commercial establishment

in the territory of the United States may file international design applications through the United States Patent and Trademark Office.

Section 1.1011(b) is added to provide that, although the USPTO will accept international design applications filed by any person referred to in § 1.1011(a), an international design application designating the United States may be refused by the Office as a designated office if the applicant is not a person qualified under 35 U.S.C. chapter 11 to be an applicant. The PLTIA does not distinguish a person qualified to be an applicant for an international design application designating the United States from a person qualified to be an applicant in a national design application under 35 U.S.C. 171-173.

See

section 101(a) of the PLTIA, which adds: 35 U.S.C. 389(b) (“All questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16.”); 35 U.S.C. 382(c) (“Except as otherwise provided in this chapter, the provisions of chapter 16 shall apply.”); and 35 U.S.C. 383 (“In addition to any requirements pursuant to chapter 16, the international design application shall contain. . . .”). 126 Stat. at 1528-30.

Section 1.1012:

Section 1.1012 is added to provide that, in order to file an international design application through the United States Patent and Trademark Office as an office of indirect filing, the United States must be applicant's Contracting Party. Pursuant to Article 4, an international design application may be filed through the office of the “applicant's Contracting Party.” The term “applicant's Contracting Party” is defined in Article 1(xiv) as “the Contracting Party or one of the Contracting Parties from which the applicant derives its entitlement to file an international application by virtue of satisfying, in relation to that Contracting Party, at least one of the conditions specified in Article 3; where there are two or more Contracting Parties from which the applicant may, under Article 3, derive its entitlement to file an international application, `applicant's Contracting Party' means the one which, among those Contracting Parties, is indicated as such in the international application.” The indication of applicant's Contracting Party may be made in Box 4 of the application for international registration form (DM/1 form).

Section 1.1021:

Section 1.1021 is added to specify the contents of the international design application.

Section 1.1021(a) specifies the mandatory contents of an international design application. The international design application must be in English, French, or Spanish. In addition, the application shall contain or be accompanied by: (1) A request for international registration under the Hague Agreement (Article 5(1)(i)); (2) the prescribed data concerning the applicant (Article 5(1)(ii) and Rule 7(3)(i) and (ii)); (3) the prescribed number of copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international design application, presented in the prescribed manner; however, where the industrial design is two-dimensional and a request for deferment of publication is made in accordance with Article 5(5), the international design application may, instead of containing reproductions, be accompanied by the prescribed number of specimens of the industrial design (Article 5(1)(iii)); (4) an indication of the product or products that constitute the industrial design or in relation to which the industrial design is to be used, as prescribed (Article 5(1)(iv) and Rule 7(3)(iv)); (5) an indication of the designated Contracting Parties (Article 5(1)(v)); (6) the prescribed fees (Article 5(1)(vi) and Rule 12(1)); (7) the Contracting Party or Parties in respect of which the applicant fulfills the conditions to be the holder of an international registration (Rule 7(3)(iii)); (8) the number of industrial designs included in the international application, which may not exceed 100, and the number of reproductions or specimens of the industrial designs accompanying the international application (Rule 7(3)(v)); (9) the amount of the fees being paid and the method of payment or instructions to debit the required amount of fees to an account opened with the International Bureau and the identification of the party effecting the payment or giving the instructions (Rule 7(3)(vii)); and (10) an indication of applicant's Contracting Party as required under Rule 7(4)(a).

Section 1.1021(b) sets forth additional mandatory contents that may be required by certain Contracting Parties. These include: (1) Elements referred to in Article 5(2)(b) required for a filing date in the designated Contracting Party for which a declaration was made by that Contracting Party; and (2) a statement, document, oath, or declaration required pursuant to Rule 8(1) by a designated Contracting Party. The elements that may be required under Article 5(2)(b) are: (i) Indications concerning the identity of the creator; (ii) a brief description of the reproduction or of the characteristic features of the industrial design; and (iii) a claim.

Section 1.1021(c) identifies optional contents that the international design application may contain. These include: (1) Two or more industrial designs, subject to the prescribed conditions (Article 5(4) and Rule 7(7)); (2) a request for deferment of publication (Article 5(5) and Rule 7(5)(e)) or a request for immediate publication (Rule 17); (3) an element referred to in item (i) or (ii) of Article 5(2)(b) of the Hague Agreement or in Article 8(4)(a) of the 1960 Act even where that element is not required in consequence of a notification in accordance with Article 5(2)(a) of the Hague Agreement or in consequence of a requirement under Article 8(4)(a) of the 1960 Act (Rule 7(5)(a)); (4) the name and address of applicant's representative, as prescribed (Rule 7(5)(b)); (5) a claim of priority of one or more earlier filed applications in accordance with Article 6 and Rule 7(5)(c); (6) a declaration, for purposes of Article 11 of the Paris Convention, that the product or products that constitute the industrial design, or in which the industrial design is incorporated, have been shown at an official or officially recognized international exhibition, together with the place where the exhibition was held and the date on which the product or products were first exhibited there and, where less than all the industrial designs contained in the international application are concerned, the indication of those industrial designs to which the declaration relates or does not relate (Rule 7(5)(d)); (7) any declaration, statement, or other relevant indication as may be specified in the Administrative Instructions (Rule 7(5)(f)); (8) a statement that identifies information known by the applicant to be material to the eligibility for protection of the industrial design concerned (Rule 7(5)(g)); and (9) a proposed translation of any text matter contained in the international application for purposes of recording and publication (Rule 6(4)).

Section 1.1021(d) sets forth additional required contents for an international design application that designates the United States. Section 1.1021(d) provides that, in addition to the mandatory requirements set forth in § 1.1021(a), an international design application that designates the United States shall contain or be accompanied by: (1) A claim (§§ 1.1021(b)(1)(iii) and 1.1025); (2) indications concerning the

identity of the creator (

i.e.,

the inventor,

see

§ 1.9(d)) in accordance with Rule 11(1); and (3) the inventor's oath or declaration (§§ 1.63 and 1.64). Section 1.1021(d)(3) further provides that the requirements in §§ 1.63(b) and 1.64(b)(4) to identify each inventor by his or her legal name, mailing address, and residence, if an inventor lives at a location which is different from the mailing address, and the requirement in § 1.64(b)(2) to identify the residence and mailing address of the person signing the substitute statement, will be considered satisfied by the presentation of such information in the international design application prior to international registration.

Under Article 5(2), a Contracting Party may require an international design application to contain certain additional elements, where the law of that Contracting Party, at the time it becomes a party to the Hague Agreement, requires the application to contain such elements to be accorded a filing date. The elements set forth in Article 5(2) are: (1) Indications concerning the identity of the creator of the industrial design; (2) a brief description of the reproduction or of the characteristic features of the industrial design; and (3) a claim. Article 5(2) permits a Contracting Party to notify the Director General of the elements required in order for the application to be accorded a filing date.

A claim is a filing date requirement for design applications in the United States. While title II of the PLTIA, in implementing the Patent Law Treaty, eliminated the requirement for a claim as a filing date requirement in utility applications, it did not eliminate the requirement for a claim as a filing date requirement for design applications.

See

section 202 of the PLTIA (amending 35 U.S.C. 171 to provide that “[t]he filing date of an application for patent for design shall be the date on which the specification as prescribed by [35 U.S.C.] 112 and any required drawings are filed”). 126 Stat. 1535. The specific wording of the claim shall be as prescribed in § 1.1025.

Id.

Consequently, an international design application that designates the United States but does not contain a claim will not be registered by the International Bureau in the international register and thus will not be entitled to a filing date in the United States.

See

35 U.S.C. 384; Article 10(2). In such case, the International Bureau will invite the applicant to submit the claim within a prescribed time limit and will accord a date of international registration as of the date of receipt of the claim (assuming there are no other filing date defects).

See

Article 10(2)(b). Failure to timely submit the claim in response to the invitation by the International Bureau will result in the application being deemed not to contain the designation of the United States.

See

Article 8(2)(b).

Section 1.1021(d) also requires an international design application designating the United States to contain indications concerning the identity of the inventor (

i.e.,

creator) of the industrial design and the inventor's oath or declaration (§§ 1.63 or 1.64). The identity of the inventor and the inventor's oath or declaration are requirements applicable to design applications under 35 U.S.C. chapter 16.

See, e.g.,

35 U.S.C. 115; 35 U.S.C. 101. The PLTIA provides for parity in the treatment of international design applications designating the United States with design applications under 35 U.S.C. chapter 16, except where otherwise provided by the PLTIA, Hague Agreement, or Regulations.

See, e.g.,

35 U.S.C. 389(b) (“All questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16.”); 35 U.S.C. 382(c) (“Except as otherwise provided in this chapter, the provisions of chapter 16 shall apply.”); 35 U.S.C. 383 (“In addition to any requirements pursuant to chapter 16, the international design application shall contain. . . .”). 126 Stat. at 1528-30.

See also

discussion of Hague Agreement Rule 8,

supra.

Section 1.1022:

Section 1.1022 is added to specify form and signature requirements for international design applications. Section 1.1022(a) provides that the international design application shall be presented on the official form.

See

Hague Agreement Rule 7(1). The term “official form” is defined in Hague Agreement Rule 1(vi) to mean “a form established by the International Bureau or an electronic interface made available by the International Bureau on the Web site of the Organization, or any form or electronic interface having the same contents and format.” Section 1.1022(b) provides that the international design application shall be signed by the applicant.

See

Rule 7(1).

Section 1.1023:

The filing date of an international design application in the United States is set forth in 35 U.S.C. 384, added by section 101 of the PLTIA, which provides “[s]ubject to subsection (b), the filing date of an international design application in the United States shall be the effective registration date.” 126 Stat. at 1529. The term “effective registration date” is defined in 35 U.S.C. 381(a)(5) as “the date of international registration determined by the International Bureau under the treaty.” 126 Stat. at 1528. Accordingly, § 1.1023(a) is added to set forth that the filing date of an international design application in the United States is the date of international registration determined by the International Bureau, subject to review under § 1.1023(b).

Section 1.1023(b) is added to set forth a procedure to review the filing date of an international design application. Pursuant to 35 U.S.C. 384(b), “[t]he Director may establish procedures, including the payment of a surcharge, to review the filing date under this section. Such review may result in a determination that the application has a filing date in the United States other than the effective registration date.” 126 Stat. at 1529. Accordingly, § 1.1023(b) provides that, where the applicant believes the international design application is entitled under the Hague Agreement to a filing date in the United States other than the date of international registration, the applicant may petition the Director to accord the international design application a filing date in the United States other than the date of international registration. Section 1.1023(b) requires that the petition be accompanied by the fee set forth in § 1.17(f) and include a showing to the satisfaction of the Director that the international design application is entitled to such filing date.

Section 1.1024:

Section 1.1024 is added to provide that an international design application designating the United States must include a specification as prescribed by 35 U.S.C. 112 and preferably include a brief description of the reproduction pursuant to Rule 7(5)(a) describing the view or views of the reproductions. Pursuant to Article 5(2), a Contracting Party may require “a brief description of the reproduction or of the characteristic features of the industrial design that is the subject of that application” where such is a filing date requirement under its national law.

See

Article 5(2)(b)(ii). While the “brief description of the reproduction or of the characteristic features of the industrial design” referred to in Article 5(2)(b)(ii) is not a filing date requirement in the United States, applicants should consider whether including additional written description of the invention is needed to comply with the requirements of 35 U.S.C. 112. Rule 7(5)(a) allows the applicant to include in the international design application the description referred to in Article 5(2)(b)(ii) even if

not required by a Contracting Party pursuant to Article 5(2).

In the United States, the requirements for a filing date for an application for design patent are set forth in 35 U.S.C. 171, as amended under section 202 of the PLTIA, which states in subsection (c): “[t]he filing date of an application for patent for design shall be the date on which the specification as prescribed by [35 U.S.C.] 112 and any required drawings are filed.” 126 Stat. 1535. Although a “brief description of the reproduction or of the characteristic features of the industrial design” is not a

per se

filing date requirement, it may be necessary to comply with 35 U.S.C. 112(a), which requires,

inter alia,

that the “specification shall contain a written description of the invention.” This written description requirement may be satisfied by the reproductions.

See In re Daniels,

144 F.3d 1452, 1456, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998) (“It is the drawings of the design patent that provide the description of the invention.”);

In re Klein,

987 F.2d 1569, 1571, 26 USPQ2d 1133, 1134 (Fed. Cir. 1993) (“[U]sual[ly] in design applications, there is no description other than the drawings”);

Hupp

v.

Siroflex of America, Inc.,

122 F.3d 1456, 1464, 43 USPQ2d 1887, 1893 (Fed. Cir. 1997) (“A design patent contains no written description; the drawings are the claims to the patented subject matter.”);

Ex parte Tayama,

24 USPQ2d 1614, 1617 (Bd. Pat. App. & Int'f 1992) (“[D]esign applications must meet the requirements of 35 U.S.C. Section 112, first paragraph. While this

ordinarily

requires little if any detailed description, some design applications may require a disclosure as detailed as that in a complex utility application. There is no `per se' rule with respect to the extent of the disclosure necessary in a design application. The adequacy of the disclosure must be determined on a case-by-case basis.”). The Office therefore encourages the inclusion in international design applications of a brief description of the reproduction, pursuant to Rule 7(5)(a), that describes the view or views of the reproductions, as may be required for design applications filed under 35 U.S.C. chapter 16.

See, e.g.,

§ 1.153(b) (“No description, other than a reference to the drawing, is ordinarily required. . . .); § 1.154(b) (“The specification should include . . . 4) Description of the figure or figures of the drawing”); and MPEP 1503.01(II) (“Descriptions of the figures are not required to be written in any particular format, however, if they do not describe the views of the drawing clearly and accurately, the examiner should object to the unclear and/or inaccurate descriptions and suggest language which is more clearly descriptive of the views.”). Such figure descriptions are helpful for examination and may, in some cases, avoid rejections under 35 U.S.C. 112. Furthermore, a description of the view or views of the reproductions will be required by the Office in a nonprovisional international design application if not furnished under Rule 7(5)(a).

See

discussion of § 1.1067,

infra.

Thus, § 1.1024 is added to provide that an international design application designating the United States must include a specification as prescribed by 35 U.S.C. 112, and should preferably include a brief description of the reproduction pursuant to Rule 7(5)(a) describing the view or views of the reproductions.

The Office notes that Article 5(2)(b)(ii) and Rule 11(2) refer to a description of “characteristic features” of the industrial design that may be required by some Contracting Parties. A characteristic features statement is not required under U.S. national law. Applicants are cautioned that a characteristic features statement may serve to later limit the claim in the United States.

See McGrady

v.

Aspenglas Corp.,

487 F. Supp. 859 (S.D.N.Y. 1980); MPEP 1503.01.

Section 1.1025:

Section 1.1025 is added to set forth that the specific wording of the claim in an international design application designating the United States shall be in formal terms to the ornamental design for the article (specifying name of article) as shown, or as shown and described. Section 1.1025 also provides that more than one claim is neither required nor permitted for purposes of the United States. Under Rule 11(3), a declaration requiring a claim pursuant to Article 5(2) “shall specify the exact wording of the required claim.”

Section 1.1026:

Section 1.1026 is added to provide that reproductions shall comply with the requirements of Rule 9 and Part Four of the Administrative Instructions. Rule 9 sets forth the requirements for reproductions in international design applications, including the form and number of reproductions, and references the requirements of the Administration Instructions. Part Four of the Administrative Instructions sets forth requirements concerning the presentation of the reproductions (Section 401), representation of the industrial design (Section 402), disclaimer (Section 403), requirements for photographs and other graphic representations (Section 404), numbering of reproductions (Section 405), requirements for specimens (Section 406), and relation with a principal industrial design or a principal application or registration (Section 407).

Section 1.1027:

Section 1.1027 provides that, where a request for deferment of publication has been filed in respect of a two-dimensional industrial design, the international design application may include specimens of the design in accordance with Rule 10 and Part Four of the Administrative Instructions. Section 1.1027 further provides that specimens are not permitted in an international design application that designates the United States or any other Contracting Party that does not permit deferment of publication. Under the Hague Agreement, specimens are only permitted where a request for deferment of publication has been made.

See

Article 5(1)(iii); Rule 10(1). However, a request for deferment of publication is not permitted in an international design application that designates a Contracting Party that has made a declaration under Article 11(1)(b) that its applicable law does not provide for deferment of publication.

See

Article 11(3).

Section 1.1028:

Section 1.1028 is added to make clear that an international design application may contain a request for deferment of publication, provided the application does not designate the United States or any other Contracting Party that does not permit deferment of publication. Where an international design application contains an improper request for deferment, the International Bureau will require correction pursuant to Article 11(3).

Section 1.1031:

Section 1.1031 is added to provide for payment of the international design application fees.

Section 1.1031(a) provides that international design applications filed through the Office as an office of indirect filing are subject to payment of a transmittal fee in the amount of $120. Under the Hague Agreement, an office of indirect filing may require payment of a transmittal fee.

See

Article 4(2). Section 101(a) of the PLTIA adds 35 U.S.C. 382(b), which provides that the international design application and international fees shall be forwarded by the Office to the International Bureau “upon payment of a transmittal fee.” 126 Stat. at 1528. Accordingly, § 1.1031(a) provides for the payment of a transmittal fee. The transmittal fee is not being set pursuant to section 10(a) of the AIA. Rather, the Office is setting this fee pursuant to its authority under

35 U.S.C. 41(d)(2) in this rulemaking, which provides that fees for all processing, services, or materials relating to patents not specified in 35 U.S.C. 41 are to be set at amounts to recover the estimated average cost to the Office of such processing, services, or materials.

See

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

The transmittal fee for an international design application filed under the Hague Agreement through the USPTO as an office of indirect filing involves the following activities, which the Office considered in estimating the fiscal year 2012 costs: (1) Processing incoming paper ($2); (2) processing application fees ($7); (3) application indexing/scanning ($65); (4) routing classification/security screening ($4); (5) second-level security screening and licensing and review processing ($1); (6) initial bibliographic data entry ($17); (7) copying and mailing ($9); (8) performing processing section functions ($11); and (9) performing Hague file maintenance ($2).

Applying the ABI methodology discussed above, the Office has thus estimated the fiscal year 2012 unit cost to transmit an international design application and international fees to the International Bureau as the sum total of the aforementioned activities, resulting in a total unit cost of $118. Using the actual CPI-U increase for fiscal year 2013 and the estimated CPI-U for 2014 and 2015, the Office estimates the fiscal year 2015 unit cost to transmit the international design application and the international fees to the International Bureau is $124 ($118 multiplied by 1.051), which, when rounded to the nearest ten dollars, is a fee for transmittal of $120. Additional information concerning the Office's analysis of the estimated fiscal year 2012 costs for receiving and transmitting international design applications and international fees to the International Bureau is available upon request.

Section 1.1031(b) provides that the Schedule of Fees, a list of individual designation fee amounts, and a fee calculator to assist applicants in calculating the total amount of fees for filing an international design application may be viewed on the Web site of the WIPO, currently available at

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

Under the Hague Agreement, the International Bureau is responsible for collecting the required fees set forth in the Schedule of Fees annexed to the Regulations (Rule 27(1)) and the individual designation fees referred to in Rule 12(1)(a)(iii). Where the required fees have not been paid, the International Bureau will invite the applicant to pay the required fees to avoid abandonment of the application.

See

Article 8; Rule 14.

Section 1.1031(c) provides that the following fees required by the International Bureau may be paid either directly to the International Bureau or through the Office as an office of indirect filing in the amounts specified on the WIPO Web site described in § 1.1031(b): (1) The international application fees (Rule 12(1)); and (2) the fee for descriptions exceeding 100 words (Rule 11(2)). The fees referred to in Hague Agreement Rule 12(1) include a basic fee, standard designation fees, individual designation fees, and a publication fee. Rule 12(3)(b) states that the Rule 12(1) reference to individual designation fees is construed as a reference to only the first part of the individual designation fee for any Contracting Party with a designation fee comprised of two parts.

Section 1.1031(d) provides that the fees referred to in § 1.1031(c) may be paid directly to the International Bureau in Swiss currency.

See

Rule 27(2)(a). Administrative Instructions to the Hague Agreement set forth the various modes of payment accepted by the International Bureau.

See

Administrative Instruction 801. These include: (1) Payment by debit through an account established with the International Bureau; (2) payment into the Swiss postal check account or any of the specified bank accounts of the International Bureau; or (3) payment by credit card.

Section 1.1031(d) also provides for payment of the fees referred to in § 1.1031(c) through the Office as an office of indirect filing, provided such fees are paid no later than the date of payment of the transmittal fee required under § 1.1031(a). Any payment through the Office must be in U.S. dollars. Section 1.1031(d) also provides that applicants paying fees through the Office may be subject to a requirement by the International Bureau to pay additional amounts where the International Bureau has deemed the amount received as being deficient. This may occur, for example, where the conversion from U.S. dollars to Swiss currency results in the International Bureau receiving less than the prescribed amounts. Under Rule 28(1), “[a]ll payments made under these Regulations to the International Bureau shall be in Swiss currency irrespective of the fact that, where the fees are paid through an Office, such Office may have collected those fees in another currency.” Consequently, the fees collected by the Office for forwarding to the International Bureau must be converted to Swiss currency. If the converted amount at the time the Office transfers the fees to the International Bureau in Swiss currency is less than the amount required by the International Bureau, the International Bureau may invite the applicant to pay the deficiency. Any payment in response to the invitation must be made directly to the International Bureau within the period set in the invitation.

Section 1.1031(e) provides that payment of the fees referred to in Article 17 and Rule 24 for renewing an international registration (“renewal fees”) is not required to maintain a U.S. patent issuing on an international design application in force and that any renewal fees, if required, must be submitted directly to the International Bureau. Section 1.1031(e) further provides that any renewal fee submitted to the Office will not be transmitted to the International Bureau.

The final rules do not provide for a fee for renewing an international registration with respect to the United States. Article 7 provides for a designation fee for each designated Contracting Party. Article 7(1) provides for a “prescribed” designation fee (also referred to as “standard” designation fee,

see

Rule 11). However, Article 7(2) allows a Contracting Party to make a declaration replacing the prescribed designation fee with an individual designation fee “in connection with any international application in which it is designated, and in connection with the renewal of any international registration resulting from such an international application.” Pursuant to Article 7(2), the amount of the individual designation fee may be fixed by the Contracting Party “for the initial term of protection and for each term of renewal or for the maximum period of protection allowed by the Contracting Party concerned.” Article 7(2) further provides that the individual designation fee may not be higher than the equivalent of the amount that the office of a Contracting Party would be entitled to receive for a grant of protection for an equivalent period to the same number of designs.

Thus, while Article 7(2) permits a Contracting Party to fix an individual designation fee for renewing an international registration in respect of that Contracting Party, it does not require such fee. Rather, the individual designation fee fixed by the Contracting Party may be for the maximum period of protection allowed by the Contracting Party. Furthermore, the PLTIA does not require payment of a fee for renewing an international registration with respect to the United States. In addition, the PLTIA does not require renewal of the

international registration to obtain the maximum period of protection in the United States.

See, e.g.,

35 U.S.C. 173 as amended by the PLTIA, 126 Stat. at 1532 (“Patents for designs shall be granted for the term of 15 years from the date of grant.”). Accordingly, the final rules do not provide a fee for renewing an international design application with respect to the United States.

The Office notes that Article 17(3) provides that any extension of the initial five-year term of protection accorded by an international registration is subject to renewal. However, the Hague Agreement allows a Contracting Party to provide greater protection under its national law than provided under the Hague Agreement.

See

Article 2(1) (“The provisions of this Act shall not affect the application of any greater protection which may be accorded by the law of a Contracting Party. . . .”). Furthermore, the records of the diplomatic conference adopting the Hague Agreement make clear that renewal of the international registration for a designated Contracting Party that requires payment of a single designation fee for the entire 15-year (or more) period of protection is not required to obtain the full period of protection in that Contracting Party.

See

WIPO,

Records of the Diplomatic Conference for the Adoption of a New Act of the Hague Agreement Concerning the International Deposit of Industrial Design (Geneva Act) June 16 to July 6, 1999,

254, ¶ 15.08 (2002) (discussing Article 15 of the Basic Proposal presented to the diplomatic conference which, after minor amendment, became Article 17) (“It would be compatible with paragraphs (1) to (3) for a Contracting Party to stipulate a single 15-year (or more) period and to require payment of an initial individual designation fee for the whole period. In such case, protection would be maintained in its territory for that whole period, whether the international registration were renewed or not.”).

Section 1.1035:

The Office has decided not to adopt § 1.1035 concerning priority in an international design application in this final rule. Section 1.1021(c)(5) in this final rule provides for the inclusion of, as an optional content item, a claim of priority of one or more earlier filed applications in accordance with Article 6 and Rule 7(5)(c) of the Hague Agreement. In addition, §§ 1.55 and 1.78 in this final rule provide for foreign priority and domestic benefit claims with respect to international design applications designating the United States. Accordingly, § 1.1035 is unnecessary.

Section 1.1041:

Section 1.1041 is added to provide for representation in an international design application. Section 1.1041(a) provides that the applicant may appoint a representative before the International Bureau in accordance with Rule 3. With respect to who may be appointed to represent the applicant before the International Bureau, the Hague Agreement does not provide for any requirement as to professional qualification, nationality, or domicile. The appointment may be made in the international design application or in a separate communication.

See

Rule 3(2).

Requirements as to the appointment of a representative before the office of a Contracting Party are outside the scope of the Hague Agreement and are exclusively a matter for the Contracting Party. Accordingly, § 1.1041(b) is added to provide that applicants of international design applications may be represented before the Office as an office of indirect filing by a practitioner registered (§ 11.6) or granted limited recognition (§ 11.9(a) or (b)) to practice before the Office (§ 11.6). Section 1.1041(b) further provides that such practitioner may act pursuant to § 1.34 or pursuant to appointment by the applicant. The appointment must be in writing signed by the applicant, must give the practitioner power to act on behalf of the applicant, and must specify the name and registration number or limited recognition number of each practitioner. Section 1.1041(b) also provides that an appointment of a representative made in the international design application pursuant to Rule 3(2) that complies with the requirements of this paragraph will be effective as an appointment before the Office as an office of indirect filing. For purposes of representation before the Office during prosecution of an international design application that became a national application (

see

§ 1.9(a)(1)), the regulations governing national applications shall apply.

See

§ 1.1061(a).

Section 1.1042:

Section 1.1042 is added to provide that the applicant may specify a correspondence address for correspondence sent by the Office as an office of indirect filing. Where no such address has been specified, the Office will use as the correspondence address the address of applicant's appointed representative (§ 1.1041) or, where no representative is appointed, the address as specified in Administrative Instruction 302.

Section 1.1045:

Section 1.1045 is added to set forth the procedures for transmittal of international design applications to the International Bureau. Section 101(a) of the PLTIA adds 35 U.S.C. 382, which states, in subsection (b): “[s]ubject to chapter 17, international design applications shall be forwarded by the Patent and Trademark Office to the International Bureau, upon payment of a transmittal fee.” 126 Stat. at 1528. Rule 13(1) requires an office of indirect filing to notify the applicant and the International Bureau of the receipt date of an international design application and to notify the applicant that the international design application has been transmitted to the International Bureau. Accordingly, § 1.1045(a) is added to provide that, subject to § 1.1045(b) and payment of the transmittal fee set forth in § 1.1031(a), transmittal of the international design application to the International Bureau shall be made by the Office as provided by Rule 13(1). Section 1.1045(a) further provides that at the same time as it transmits the international design application to the International Bureau, the Office shall notify the International Bureau of the date on which it received the application and that the Office shall also notify the applicant of the date on which it received the international design application and the date on which it transmitted the application to the International Bureau.

Because transmittal of the international design application is subject to 35 U.S.C. chapter 17, § 1.1045(b) is added to provide that no copy of an international design application may be transmitted to the International Bureau, a foreign designated office, or other foreign authority by the Office or the applicant, unless the applicable requirements of part 5 of this chapter have been satisfied.

Under the Hague Agreement, formalities review of the international design application is performed by the International Bureau, not the office of indirect filing. The functions of the office of indirect filing are de minimis,

i.e.,

receiving and transmitting the international design application and international fees. There is no provision in the Hague Agreement for filing follow-on submissions with the office of indirect filing. Accordingly, § 1.1045(c) is added to provide that once transmittal of the international design application has been effected, except for matters properly before the USPTO as an office of indirect filing or as a designated office, all further correspondence concerning the application should be sent directly to the International Bureau, and that the Office will generally not forward communications to the International Bureau received after

transmittal of the application to the International Bureau. Section 1.1045(c) further provides that any reply to an invitation sent to the applicant by the International Bureau must be filed directly with the International Bureau, and not with the Office, to avoid abandonment or other loss of rights under Article 8.

Section 1.1051:

Section 1.1051 is added to set forth conditions under which an applicant's failure to act within prescribed time limits in connection with requirements pertaining to an international design application may be excused as to the United States upon a showing of unintentional delay. Section 101(a) of the PLTIA adds 35 U.S.C. 387, which gives the Director authority to prescribe such conditions, including the payment of the fee specified in 35 U.S.C. 41(a)(7), to excuse an applicant's failure to act within prescribed time limits in an international design application as to the United States where the delay was unintentional. 126 Stat. at 1530;

see

discussion of § 1.17(m),

supra.

Under § 1.1051(a), a petition to excuse applicant's failure to act within the prescribed time limits must be accompanied by: (1) A copy of any invitation sent from the International Bureau setting a prescribed time limit for which applicant failed to timely act; (2) the reply required under § 1.1051(c), unless previously filed; (3) the fee as set forth in § 1.17(m); (4) a certified copy of the originally filed international design application, unless a copy of the international design application was previously communicated to the Office from the International Bureau or the international design application was filed with the Office as an office of indirect filing; (5) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional; and (6) a terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section. The Director may require additional information where there is a question whether the delay was unintentional.

The requirements for a copy of the invitation sent from the International Bureau setting a prescribed time limit for which applicant failed to timely act and for a certified copy of the originally filed international design application (unless a copy of the international design application was previously communicated to the Office from the International Bureau or the international design application was filed with the Office as an office of indirect filing) are needed because the Office may not have a record of the international design application. For example, the Office may not have a record where the international design application was filed directly with the International Bureau and was not published.

Section 1.1051(b) provides that, to be considered timely, any request for reconsideration or review of a decision refusing to excuse the applicant's failure to act within prescribed time limits in connection with an international design application upon petition filed under § 1.1051(a) must be filed within two months of the decision refusing to excuse or within such time as set in the decision. Section 1.1051(b) further provides that, unless a decision indicates otherwise, the two-month time period may be extended under the provisions of § 1.136.

Section 1.1051(c) provides that the reply required may be: (1) The filing of a continuing application and, if the international design application has not been subject to international registration, a grantable petition under § 1.1023(b) to accord the international design application a filing date; or (2) a grantable petition under § 1.1052, where the international design application was filed with the Office as an office of indirect filing.

Under the Hague Agreement, the International Bureau reviews international design applications for compliance with the requirements of the treaty and Regulations. If these requirements have not been met, the International Bureau will invite the applicant to make the required corrections.

See

Hague Agreement Article 8(1). Depending on the correction required, failure to timely comply with the invitation will result in the application being considered abandoned or deemed not to contain the designation of the Contracting Party for which the deficiency relates.

See

Hague Agreement Article 8(2). The Hague Agreement does not provide for continued processing of an international design application that has been abandoned under Article 8 (or for processing the application for a particular Contracting Party after the designation of that Contracting Party has been deemed not to be contained in the application), based on the Office excusing the applicant's failure to timely comply with the invitation pursuant to 35 U.S.C. 387. For example, the Hague Agreement does not provide for forwarding by the International Bureau to the applicant a notification of refusal in an abandoned international application. Accordingly, the Office is providing relief under 35 U.S.C. 387 by permitting the applicant to file a continuing application claiming benefit to an international design application under the conditions of 35 U.S.C. 386(c) and 120. Upon grant of the petition under this section, applicant's delay will be excused for the purpose of establishing copendency or reinstatement of the U.S. designation in accordance with 35 U.S.C. 120, 386(c), and 388. The ability to file a continuing application is similarly provided in the rule governing the procedure for revival of an abandoned national application.

See

37 CFR 1.137(c). Alternatively, § 1.1051(c) provides that the reply may be a grantable petition under § 1.1052 to convert the international design application to an application under 35 U.S.C. chapter 16.

Section 1.1051(d) provides that any petition under § 1.1051 must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period beginning on the due date for the reply for which applicant failed to timely act and ending on the date of filing of the reply required under paragraph (c) of the section and must also apply to any patent granted on a continuing design application that contains a specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to the application for which relief under this section is sought. The requirement under § 1.1051(d) for a terminal disclaimer prevents an inappropriate length of patent term caused by applicant's delay and is consistent with the requirement under § 1.137(d) for a terminal disclaimer in a petition to revive an unintentionally abandoned design application.

Section 1.1052:

Section 1.1052 is added to set forth a procedure for converting an international design application designating the United States to a design application under 35 U.S.C. chapter 16. Section 101(a) of the PLTIA adds 35 U.S.C. 384(a), the second sentence of which provides: “[n]otwithstanding the provisions of this part, any international design application designating the United States that otherwise meets the requirements of chapter 16 may be treated as a design application under chapter 16.” 126 Stat. at 1529. The requirements for a filing date for a design application under 35 U.S.C. chapter 16 are set forth in § 1.53(b). Accordingly, § 1.1052(a) provides that an international design application designating the United States filed with the Office as an office of indirect filing and meeting the requirements under § 1.53(b) for a filing date for an application for a design patent may, on

petition under this section, be converted to an application for a design patent under § 1.53(b) and accorded a filing date as provided therein.

Section 1.1052(a) further provides that the petition must be accompanied by the fee set forth in § 1.17(t) and be filed prior to publication of the international registration under Article 10(3). The requirement that a grantable petition be filed prior to publication under Article 10(3) is necessary in view of the timing requirements under the Hague Agreement to issue a notification of refusal and to avoid expending Office resources processing and examining the application under two different statutory schemes.

Section 1.1052(a) also provides that the conversion of an international design application to an application for a design patent under § 1.53(b) will not entitle applicant to a refund of the transmittal fee or any fee forwarded to the International Bureau, or the application of any such fee toward the filing fee, or any other fee, for the application for a design patent under § 1.53(b). In addition, § 1.1052(a) provides that the application for a design patent resulting from conversion of an international design application must also include the basic filing fee (§ 1.16(b)), the search fee (§ 1.16(l)), the examination fee (§ 1.16(p)), the inventor's oath or declaration (§§ 1.63 or 1.64), and a surcharge if required by § 1.16(f). These provisions are similar to those applicable to converting an application under 35 U.S.C. 111(b) to an application under 35 U.S.C. 111(a).

See

§ 1.53(c)(3).

Section 1.1052(b) provides that an international design application will be converted to an application for a design patent under § 1.53(b) if a decision on petition under this section is granted prior to transmittal of the international design application to the International Bureau pursuant to § 1.1045. Otherwise, a decision granting a petition under this section will be effective to convert the international design application to an application for a design patent under § 1.53(b) only for purposes of the designation of the United States. Thus, pursuant to § 1.1052(b), if the Office grants the petition prior to transmittal of the international design application to the International Bureau, the Office will treat the international design application submission as an application for a design patent under § 1.53(b). Once transmittal of the application under § 1.1045 has occurred, the grant of the petition will only be effective as to the United States, and the International Bureau will continue to process the international design application under the provisions of the Hague Agreement. In such case, because the international design application will have been converted to an application for a design patent under § 1.53(b) with respect to the designation of the United States, the Office will, upon grant of the petition, treat the designation of the United States in the international design application as not being made. To avoid confusion and unnecessary processing, applicants should renounce the designation of the United States pursuant to Article 16 upon grant of the petition for conversion.

Section 1.1052 (c) provides that a petition under § 1.1052 will not be granted in an abandoned international design application absent a grantable petition under § 1.1051.

Section 1.1052(d) provides that an international design application converted under this section is subject to the regulations applicable to a design application filed under 35 U.S.C. chapter 16.

Sections 1.1061-1.1071 relate to national processing of an international design application designating the United States.

Section 1.1061:

Section 1.1061(a) is added to provide that the rules relating to applications for patents for other inventions or discoveries are also applicable to international design applications designating the United States, except as otherwise provided in chapter I of title 37 of the CFR or required by the Articles or Regulations of the Hague Agreement. Section 1.1061(a) is similar to current § 1.151 with respect to design applications under 35 U.S.C. chapter 16 (“The rules relating to applications for patents for other inventions or discoveries are also applicable to applications for patents for designs except as otherwise provided.”). Section 101(a) of the PLTIA adds 35 U.S.C. 389(b) to provide that all questions of procedures regarding international design applications designating the United States shall be determined as in the case of applications filed under 35 U.S.C. chapter 16, except where otherwise required by the Hague Agreement and the Regulations (126 Stat. at 1530). Section 1.1061(b) is added to identify, consistent with the Hague Agreement and the Regulations, certain regulations that do not apply to international design applications.

Section 1.1062:

Section 1.1062(a) is added to provide that the Office shall make an examination pursuant to title 35, United States Code, of an international design application designating the United States. Examination of international design applications designating the United States is mandated by 35 U.S.C. 389(a), which was added by section 101(a) of the PLTIA (126 Stat. at 1530). In accordance with Article 12(1) and 35 U.S.C. 389(b), the Office will not refuse an international design application under examination on grounds that requirements relating to the form or contents of the international design application provided for in the Hague Agreement or the Regulations or additional to, or different from, those requirements have not been satisfied. Accordingly, the Office does not consider it necessary to import the language of Article 12(1) into § 1.1061(a) as originally proposed.

The Office does not consider Article 12(1) to prohibit refusals based on requiremen

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