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

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Federal Register › Vol. 78 › 78 FR 71870

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DEPARTMENT OF COMMERCE United States Patent and Trademark Office 37 CFR Parts 1, 3, 5 and 11 [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:

Notice of proposed rulemaking.

SUMMARY:

Title I of the Patent Law Treaties Implementation Act of 2012 (“PLTIA”) amends the patent laws to implement the provisions of the 1999 Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs (“Hague Agreement”) and is to take effect on the entry into force of the Hague Agreement with respect to the United States. The Hague Agreement provides that an applicant is entitled to apply for design protection in Hague Agreement member countries and with intergovernmental organizations by filing a single, standardized international design application in a single language. The United States Patent and Trademark Office (USPTO or Office) proposes changes to the rules of practice to implement title I of the PLTIA.

DATES:

Comment Deadline Date: Written comments must be received on or before January 28, 2014.

ADDRESSES:

Comments should be sent by electronic mail message over the Internet addressed to: AC87.comments@uspto.gov. Comments may also be submitted by postal mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, marked to the attention of Boris Milef, Senior PCT Legal Examiner, Office of PCT Legal Administration.

Comments may also be sent by electronic mail message over the Internet via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web site ( http://www.regulations.gov ) for additional instructions on providing comments via the Federal eRulemaking Portal

Alexandria, VA, 22313-1450, marked to the attention of Boris Milef, Senior PCT Legal Examiner, Office of PCT Legal Administration.

Although comments may be submitted by postal mail, the Office prefers to receive comments by electronic mail message over the Internet because the Office may easily share such comments with the public. Electronic comments are preferred to be submitted in plain text, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format. Comments not submitted electronically should be submitted on paper in a format that facilitates convenient digital scanning into ADOBE® portable document format.

The comments will be available for public inspection at the Office of the Commissioner for Patents, currently located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also will be available for viewing via the Office's Internet Web site ( http://www.uspto.gov ) and at http://www.regulations.gov. Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT:

Boris Milef, Senior PCT Legal Examiner, Office of PCT Legal Administration, at (571) 272-3288.

SUPPLEMENTARY INFORMATION:

Boris Milef, Senior PCT Legal Examiner, Office of PCT Legal Administration, at (571) 272-3288.

SUPPLEMENTARY INFORMATION:

Executive Summary: Purpose: The Hague Agreement provides that an applicant is entitled to apply for design protection in all member countries and with intergovernmental organizations by filing a single, standardized international design application in a single language. Title I of the PLTIA amends Title 35 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 notice proposes changes to 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 USPTO 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

ternational 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.

The Office is specifically proposing to revise the rules of practice (37 CFR parts 1, 3, 5, and 11) to provide for the filing of international design applications by U.S. applicants in the USPTO as an office of indirect filing. The Office would 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 would review the application for compliance with the applicable formal requirements under the Hague Agreement.

The Office also proposes to revise 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 would have to identify the inventor and include a claim and the inventor's oath or declaration. The proposed 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.

nated office if the applicant is not a person qualified under 35 U.S.C. chapter 11 to be an applicant.

The Office also proposes to revise 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 formal requirements under the Hague Agreement. Where these requirements have been met, the International Bureau would 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 would only occur after the International Bureau finds that the application conforms to the applicable formal requirements, examination before the Office would 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

The Office is also proposing to revise 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).

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

Background: The 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“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 would 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, §§ 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. These proposed rules implement title I of the PLTIA

omestically. 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, §§ 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. These proposed 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

licants 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 United States Patent and Trademark Office an application in such form, together with such fees, as may be prescribed by the Director.” Id

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 United States 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 would be 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

r, 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

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 th

r, 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 1529-30.

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

ity 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

s 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

e 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 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 § 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

]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 is filed in an international design application designating a Contracting Party that has made a declaration under Article 11(1)(b) stating that deferment is not possible under its law.

s 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)

n 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) 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.”

on, 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.”

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 chapter 16 [of Title 35 of the 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

g 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 chapter 16 [of Title 35 of the 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) 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 said Contracting Party from the date on which the refusal was withdrawn.” Rule bis (2), the office of a Contracting Party may send the International Bureau a statement of grant of protection in lieu of a notification of withdrawal of refusal.

ice of a Contracting Party may send the International Bureau a statement of grant of protection in lieu 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

1532.

Hague Agreement Rule 8, as recently amended by the Hague Union Assembly and to enter into force as of January 1, 2014 ( see WIPO Assembly Draft Report, H/A/32/3 Prov. (October 2, 2013), available at http://www.wipo.int/meetings/en/details.jsp?meeting_id=29895 ) provides for special 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 in Rule 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 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, at http://www.wipo.int/hague/en/legal_texts/.

Discussion of Specific Rules

The following is a discussion of proposed amendments to Title 37 of the Code of Federal Regulations, Parts 1, 3, 5 and 11

al Letter, are available on the 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, at http://www.wipo.int/hague/en/legal_texts/.

Discussion of Specific Rules

The following is a discussion of proposed amendments to Title 37 of the Code of Federal Regulations, Parts 1, 3, 5 and 11.

Rules referencing priority or benefit under 35 U.S.C. 119, 120, 121, or 365: The Office proposes to reference 35 U.S.C. 386(a) and (b) where the current rules contain a reference to priority under 35 U.S.C. 119(a)-(d) or 365(a) or (b); and to reference 35 U.S.C. 386(c) where the current rules contain a reference to benefit under 35 U.S.C. 120, 121, or 365(c). 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. 126 Stat. at 1529-30. The proposed references are required to account for the right of priority established under 35 U.S.C. 386.

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

Section 1.5: Section 1.5(a) is proposed to be 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 proposed to be 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”)

1.6: Section 1.6(d)(3) is proposed to be 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 proposed to be 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 proposed to be 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 proposed to be 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 1.9(a)(3) are proposed to be 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 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

e PLTIA, an international design application that designates the United States has the effect from its filing date 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.

Sections 1.9(l) and 1.9(m) are proposed to be added to define “Hague Agreement,” “Hague Agreement Article,” “Hague Agreement Regulations,” and “Hague Agreement

Section 1.9(n) is proposed to be 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) is proposed to be amended to add a reference to added paragraph (j) concerning international design applications.

Section 1.14(a)(1)(ii) is proposed to be 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

ation 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 does not intend to publish international design applications (see § 1.211), as international design applications are published by the International Bureau under the Hague Agreement in English. 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).

on 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 proposed to be amended to include a publication of an international registration under Hague Agreement Article 10(3) among the publications for which access to an unpublished application may be obtained. Section 1.14(a)(1)(iv) is proposed to be 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), 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 proposed to be 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 proposed to be 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)

t 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).

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

Section 1.14(j) is proposed to be 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 (DC 1988) (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

ok v. Hall, 1889 Dec. Comm'r Pat. 582, 48 O.G. 1263 (DC 1988) (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, 196-197 (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 later issued patent); see also Metropolitan West Side Elevated Railroad Company et al. v. Siemans, 1898 Dec. Comm'r Pat. 220, 222 85 O.G. 290 (Comm'r Pat. 1898); In re Reed Mfg. 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.

l 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 may be made available to the public, or a copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written

Section 1.16: Sections 1.16(b), (l) and (p) are proposed to be amended to clarify that the design application fees specified therein are applicable to design applications filed under 35 U.S.C. 111. The other provisions of section 1.16 are not proposed to change.

Section 1.17: Section 1.17(f) is proposed to be 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 proposed § 1.1023, discussed infra, which requires, inter alia, the fee set forth in § 1.17(f). Under 35 U.S.C

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 proposed § 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 regulations thereunder, 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) and 1.57(a)).

Section 1.17(u) is proposed to be added 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 proposed § 1.1051, discussed infra. These requirements include, inter alia, the requirement to pay the fee set forth in § 1.17(u)

quirement 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 proposed § 1.1051, discussed infra. These requirements include, inter alia, the requirement to pay the fee set forth in § 1.17(u). The fee set forth in § 1.17(u) 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 Pub. L. 112-29, 125 Stat. 284, 316-17 (2011). The Office will consider including a micro entity amount in § 1.17(u) in the event that patent fees are again set or adjusted under section 10(a) of the AIA.

Section 1.17(v) is proposed to be added 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.

tents 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. 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

emaking 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 projected 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 during each fiscal year is multiplied together to obtain a cumulative CPI-U from fiscal year 2013 through fiscal year 2015. The CPI-U increase for fiscal year 2013 is forecasted to be 2.1 percent. The CPI-U increase for fiscal year 2014 is forecasted to be 2.2 percent. The CPI-U increase for fiscal year 2015 is forecasted to be 2.2 percent. See http://www.whitehouse.gov/sites/default/files/omb/budget/fy2014/assets/spec.pdf. Thus, the estimated fiscal year 2015 cost amounts are calculated by multiplying the actual expense amount for fiscal year 2012 by 1.066 (1.021

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 for 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)

olves review and preparation of a decision for the petition. An estimate for 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 the fiscal year unit cost to review the petition and draft a decision, using the estimated CPI-U increase for fiscal years 2013, 2014, and 2015, is $183 ($172 multiplied by 1.066), which, when rounded to the nearest ten dollars, is a proposed 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 proposed to be 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 the WIPO, available at: http://www.wipo.int/hague. 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 proposed to be amended to provide that international design application fees (§ 1.1031) may be charged to a deposit account

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 proposed to be amended to provide that international design application fees (§ 1.1031) may be charged to a deposit account.

Section 1.27: Section 1.27(c)(3) is proposed to be amended to provide that the payment, by any party, of the exact amount of the small entity first part of the individual designation fee for the United States (Hague Agreement Rule 12(1)(a)(iii)) to the International Bureau in an international design application will be treated as a written assertion of entitlement to small entity status. The proposed change to § 1.27(c)(3) will permit applicants paying fees to the International Bureau in an international design application designating the United States to establish small entity status for the purposes of the United States.

Section 1.29: Section 1.29(e) is proposed to be 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(a) before the International Bureau where the micro entity certification is filed with the International Bureau.

Section 1.41: Section 1.41(f) is proposed to be 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). Any correction of inventorship must be pursuant to § 1.48.

Section 1.46: Section 1.46(b) is proposed to be amended to provide that if an application entering the national stage under 35 U.S.C

ventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). Any correction of inventorship must be pursuant to § 1.48.

Section 1.46: Section 1.46(b) is proposed to be amended to provide that if an application entering the national stage under 35 U.S.C. 371, or an international design application before the United States as a designated office, 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 holder in the publication of the international registration under Hague Agreement Article 10(3). The proposed 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 proposed 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

y 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 proposed 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 proposed to be amended to provide that any request to correct or update the name of the applicant under this section must include an application data sheet under § 1.76 specifying the correct or updated name of the applicant in the applicant information section (§ 1.76(b)(7)), except that correction of the name of the applicant may be made pursuant to Hague Agreement Article 16 for an international design application. Section 1.46(c) is also proposed to be amended to provide that any request to replace the original applicant with an applicant under § 1.46 must include an application data sheet under § 1.76 specifying the applicant in the applicant information section (§ 1.76(b)(7)) and comply with §§ 3.71 and 3.73.

Article 16(1)(ii) provides for recording in the International Register by the International Bureau of a change in the name and address 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. Accordingly, § 1.46(c) is proposed to be amended to recognize a change in the name of the holder ( i.e., applicant) in an international design application designating the United States, where the name change was recorded by the International Bureau pursuant to Article 16. Article 16 also provides for the recording of a change in ownership of the international registration, the effect of which may be made subject to the Office of the Contracting Party receiving the statement or documents it specifies in a declaration

international design application designating the United States, where the name change was recorded by the International Bureau pursuant to Article 16. Article 16 also provides for the recording of a change in ownership of the international registration, the effect of which may be made subject to the Office of the Contracting Party receiving the statement or documents it specifies in a declaration. In such case, the new owner may become an applicant in the international design application before the Office for national processing in accordance with the procedure set forth in § 1.46(c).

Section 1.53: Section 1.53(d)(1)(ii) is proposed to be 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). Under current § 1.53(d), a CPA may be filed where the prior nonprovisional application is a design application that is complete as defined by § 1.51(b). The filing of a CPA of a prior nonprovisional international design application would not be appropriate, as a CPA is a design application under 35 U.S.C. chapter 16

Section 1.55: Section 1.55(b) is proposed to be amended to provide that the six-month period specified in that paragraph is 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 . .

oncerned 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 extension under Rule 4(4).

Section 1.55(m) is proposed to be added to set 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 for purposes of the United States, the priority claim may also be presented in an application data sheet (§ 1.76(b)(6)), filed directly with the Office after publication of the international design application under Article 10(3) of the Hague Agreement, 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. The priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g).

rnished in accordance with the time period and other conditions set forth in paragraph (g).

Section 1.57: Section 1.57(a) is proposed to be amended by revising paragraph (a) to include a new paragraph (a)(3) and to renumber paragraph (3) as paragraph (4). Section 101(a) of the PLTIA adds 35 U.S.C. 386 to provide for a right of priority to an international design application. 126 Stat. at 1529-30. Accordingly, § 1.57(a) is proposed to be amended to provide for incorporation by reference to an inadvertently omitted portion of the specification or drawings based on a benefit claim under 1.78 to an international design application present upon filing, and to provide that any amendment to an international design application that designates the United States pursuant to § 1.57(a) shall be effective only as to the United States, and shall have no effect on the filing date of the application.

Section 1.76: Section 1.76(b)(6) is proposed to be 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 101(a) of the PLTIA adds 35 U.S.C. 386(c) to provide for 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. Accordingly, § 1.78(c) is proposed to be amended to provide for benefit claims under 35 U.S.C. 386(c). Section 1.78(c)(1)(iii) is added to provide that the prior-filed application to which benefit is claimed may be an international design application designating the United States that is entitled to a filing date as set forth in § 1.1023.

Section 1.78(c)(2) is proposed to be amended to provide that the reference required under § 1.78(c)(2) may identify an international design application by international registration number and international registration date

application to which benefit is claimed may be an international design application designating the United States that is entitled to a filing date as set forth in § 1.1023.

Section 1.78(c)(7) is proposed to be 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(c)(7)

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(c)(7). Rather, the Office foresees the authority under § 1.78(c)(7) to be used 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(d) is proposed to be amended to provide for acceptance of a delayed benefit claim to an international application designating the United States pursuant to the petition procedure set forth therein.

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

Section 1.85: Section 1.85(a) is proposed to be amended to provide that if a drawing in an international design application designating the United States meets the requirements of § 1.1026, the drawing may be admitted for examination. Section 1.85(c) is proposed to be amended to provide that if a drawing in an 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

n 1.85(c) is proposed to be amended to provide that if a drawing in an 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)(3) is proposed to be added 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: Section 1.105(a)(1) is proposed to be amended to make a requirement for information under

Section 1.114: Section 1.114(e) is proposed to be amended to provide that a request for continued examination may not be filed in an international design application. This is consistent with the treatment of applications for design patents under 35 U.S.C. chapter 16.

Section 1.155: Section 1.155 is proposed to be 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 be published pursuant to Hague Agreement Article 10(3).

ernational design application must be published pursuant to Hague Agreement Article 10(3).

Section 1.211: Section 1.211(b) is proposed to be 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 Rule 15(2) of the Regulations.

Section 1.312: Section 1.312 is proposed to be amended to provide that where the issue fee is paid in an international design application through the International Bureau, the date of payment of the issue fee for purposes of determining the timeliness of an amendment under § 1.312 will be the date the issue fee is recorded by the Office. This date will be indicated as the accounting date in the Office's Revenue Accounting and Management System. Under the Hague Agreement, the issue fee may be paid through the International Bureau. An amendment under § 1.312 filed after payment of the issue fee to the International Bureau but before the fee is recorded by the Office would be untimely under the current rule. Because of the inherent time lag between payment of the issue fee to the International Bureau and crediting of the issue fee to the account of the Office, the Office may not have sufficient information at the time of receipt of the amendment under § 1.312 to determine whether such amendment may be entered under the current rule. The proposed amendment to § 1.312 is more favorable to applicants and would facilitate processing of such amendments by the Office. In addition, since the application will not be scheduled for printing as a patent until the issue fee is recorded by the Office, the proposed amendment would not delay issuance of the patent

12 to determine whether such amendment may be entered under the current rule. The proposed amendment to § 1.312 is more favorable to applicants and would facilitate processing of such amendments by the Office. In addition, since the application will not be scheduled for printing as a patent until the issue fee is recorded by the Office, the proposed amendment would not delay issuance of the patent.

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

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

Section 1.1002: Section 1.1002 is proposed to be 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 proposed to be added to indicate the major functions of the USPTO as a designated office. These include: (1) Accepting for national examination international design applications which satisfy the requirements of the Hague Agreement, Regulations and the regulations; (2) performing an examination of the international design application in accordance with 35 U.S.C. chapter 16; and (3) communicating the results of examination to the International Bureau.

Section 1.1004: Section 1.1004 is proposed to be added to indicate the major functions of the International Bureau

ations which satisfy the requirements of the Hague Agreement, Regulations and the regulations; (2) performing an examination of the international design application in accordance with 35 U.S.C. chapter 16; and (3) communicating the results of examination to the International Bureau.

Section 1.1004: Section 1.1004 is proposed to be 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 formal requirements; (4) translating international design applications into the required languages for recordation and publication; (5) recording international design applications in the International Register; and (6) publishing international design applications in the International Designs Bulletin.

Section 1.1011: Section 1.1011(a) is proposed to be 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)

e 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). In accordance with 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 proposed to be 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

tional 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 1.1021: Section 1.1021 is proposed to be 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

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

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)); (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 under Article 4 of the Paris Convention, as prescribed (Rule 7(5)(c)); (6) a declaration, for purposes of Article 11 of the Paris Convention, that the product or products which constitute the industrial design, or in which the industrial design is incorporated, have been shown at an official or officially recognized international exhibition, together with the place where the exhibition was held and the date on which the product or products were first exhibited there and, 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

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) is proposed to be added to set forth the 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 (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.

f 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 the PLTIA, in implementing the Patent Law Treaty, eliminates the requirement for a claim as a filing date requirement in utility applications, it does 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 and 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)

ureau in the international register and thus will not be entitled to a filing date in the United States. See 35 U.S.C. 384 and 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 creator of the industrial design and the inventor's oath or declaration See, e.g., 35 U.S.C. 115 and 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.”); 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. See also discussion of Hague Agreement Rule 8, supra.

Section 1.1022: Section 1.1022 is proposed to be added to specify form and signature requirements for international design applications

pter, 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. See also discussion of Hague Agreement Rule 8, supra.

Section 1.1022: Section 1.1022 is proposed to be 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 or any form having the same contents and format. See Rules 7(1) and 1(vi). Section 1.1022(b) provides that the international design application shall be signed by the applicant. Id.

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 proposed to be 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 subsection (b).

Section 1.1023(b) is proposed to be 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

h 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 proposed to be added to set forth the requirements of a description, where contained in the international design application. WIPO form “Application for International Registration” (DM/1) includes a section (Box 9) entitled “Description.” Rule 11(2) provides: “[w]here the international application contains a description, the latter shall concern those features that appear in the reproductions of the industrial design and may not concern technical features of the operation of the industrial design or its possible utilization. If the description exceeds 100 words, an additional fee, as set out in the Schedule of Fees, shall be payable.” 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)

. If the description exceeds 100 words, an additional fee, as set out in the Schedule of Fees, shall be payable.” 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). 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).

At the time the United States becomes party to the Hague Agreement, the requirements for a filing date for an application for design patent will be governed by 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. A “brief description of the reproduction or of the characteristic features of the international design” is not a per se filing date requirement in the United States. Rather, 35 U.S.C. 112(a) requires, inter alia, that the “specification shall contain a written description of the invention.” This 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

d 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. 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.”). Nevertheless, applicants should consider whether including additional written description of the invention (in Box 9 of the DM/1 form or otherwise) is needed to comply with 35 U.S.C. 112. Furthermore, the Office encourages the inclusion of a brief description of the views of the reproduction, as 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 potential issues under 35 U.S.C. 112

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 potential issues under 35 U.S.C. 112.

Thus, § 1.1024(a) is proposed to be 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 view or views of the reproduction.

Section 1.1024(b) provides that the description requirements set forth in Rule 11(2) may apply to designations of Contracting Parties other than the United States that require a description. 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, 208 U.S.P.Q. 242 (S.D.N.Y. 1980); MPEP 1503.01.

Section 1.1025: Section 1.1025 is proposed to be 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.”

ired claim.”

Section 1.1026: Section 1.1026 is proposed to be 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 neither a request for deferment of publication nor specimens are 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) and 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 1.1031: Section 1.1031 is proposed to be added to provide for payment of the international design application fees

er, 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 1.1031: Section 1.1031 is proposed to be 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 $130. 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)

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 estimated CPI-U increase for fiscal years 2013, 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 $126 ($118 multiplied by 1.066), which, when rounded to the nearest ten dollars, is a proposed fee for transmittal of $130. 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

al fees to the International Bureau is $126 ($118 multiplied by 1.066), which, when rounded to the nearest ten dollars, is a proposed fee for transmittal of $130. 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 may be viewed on the Web site of the WIPO, 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 and Rule 14. The fees set forth in the Schedule of Fees and the list of individual designation fee amounts may be viewed on the Web site of the WIPO, available at: http://www.wipo.int/hague. This Web site also includes a fee calculator tool to assist applicants in calculating the total amount of fees for filing an international design application.

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

reau 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 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 conversion from U.S. dollars to Swiss currency results in the International Bureau receiving less than the prescribed amounts

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 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.

directly to the International Bureau within the period set in the invitation.

The proposed 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 which 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

imum 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 proposed 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

he 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: Section 1.1035(a) is proposed to be added to provide, in accordance with Article 6 of the Hague Agreement, that the international design application may claim, 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. Proposed § 1.1035(a) further provides, in accordance with Rule 7(5)(c), that the priority claim must contain an indication of the name of the office where such filing was made and of the date and, where available, the number of that filing, and where the priority claim relates to less than all the industrial designs contained in the international design application, the indication of those industrial designs to which the priority claim relates or does not relate

)(c), that the priority claim must contain an indication of the name of the office where such filing was made and of the date and, where available, the number of that filing, and where the priority claim relates to less than all the industrial designs contained in the international design application, the indication of those industrial designs to which the priority claim relates or does not relate.

While Article 6 of the Hague Agreement provides for priority under the Paris Convention, the Hague Agreement does not specifically provide for domestic benefit claims. Section 101(a) of the PLTIA adds 35 U.S.C. 386(c) to specifically provide for the benefit in accordance with the conditions and requirements of 35 U.S.C. 120 of the filing date of a prior national application, a prior international application as defined in 35 U.S.C. 351(c) designating the United States, or a prior international design application designating the United States. 126 Stat. at 1529-30. Accordingly, § 1.1035(b) is proposed to be added to provide that an international design application designating the United States may claim benefit under 35 U.S.C. 120, 121, 365(c) or 386(c) to an earlier filed application in accordance with § 1.78. It is noted that § 1.78 requires the domestic benefit claim to be included in an application data sheet (“ADS”), and that the Hague Agreement does not provide for submission of an ADS as an optional content item of the international design application. See Rules 7(5) and 7(6). Notwithstanding, if the ADS is included with the submission of the international design application to the Office as an indirect office, the ADS will be included in the national application file maintained by the Office as a designated office, and accordingly, will not have to See discussion of § 1.14(j).

Section 1.1041: Section 1.1041 is proposed to be added to cover representation in an international design application

S is included with the submission of the international design application to the Office as an indirect office, the ADS will be included in the national application file maintained by the Office as a designated office, and accordingly, will not have to See discussion of § 1.14(j).

Section 1.1041: Section 1.1041 is proposed to be added to cover representation in an international design application.

Section 1.1041(a) provides that the applicant or the holder 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 proposed to be 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 be appointed, in writing signed by the applicant, giving the practitioner power to act on behalf of the applicant and specifying 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

half of the applicant and specifying 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 in an international design application that becomes a national application ( see § 1.9(a)(1)), the regulations governing national applications shall apply. See § 1.1061(a).

Section 1.1045: Section 1.1045 is proposed to be 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 proposed to be 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)

to notify the applicant that the international design application has been transmitted to the International Bureau. Accordingly, § 1.1045(a) is proposed to be 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 proposed to be 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 minimus, 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

lities 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 minimus, 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 proposed to be 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 proposed to be 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(u), supra

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(u), supra. Under proposed § 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(u); (4) a certified copy of the originally filed international design application, unless a copy of the international design application was previously communicated to the Office from the International Bureau or the international design application was filed with the Office as an office of indirect filing; and (5) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

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

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 any request for reconsideration or review of a decision refusing to excuse the applicant's failure to act within prescribed time limits in connection

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)

en 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 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 of a notification of refusal in an abandoned international application. Accordingly, the Office is proposing to provide 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.

lternatively, § 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 1.1052: Section 1.1052 is proposed to be 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(v) 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

iled 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 treated as 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 treat the international design application as an application for a design patent under § 1.53(b) only for purposes of the United States

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 treat the international design application as an application for a design patent under § 1.53(b) only for purposes 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.

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.

Sections 1.1061-1.1070 relate to national processing of an international design application designating the United States.

Section 1.1061: Section 1.1061(a) is proposed to be 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. 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

I of Title 37 of the CFR or required by the Articles or Regulations. 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

Section 1.1062: Section 1.1062(a) is proposed to be added to provide that the Office shall make an examination pursuant to Title 35 of the 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).

Section 1.1062(a) further provides, in accordance with Article 12(1), that an international design application may not be refused 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.

Section 1.1062(b) concerns the timing of certain actions in international design applications. Pursuant to Hague Agreement Article 12, where the conditions for the grant of protection under the law of the Contracting Party are not met, a notification of refusal of the effects of international registration must be communicated to the International Bureau within the prescribed period. Rule 18(1) sets forth the period for communicating the notification of refusal

rnational design applications. Pursuant to Hague Agreement Article 12, where the conditions for the grant of protection under the law of the Contracting Party are not met, a notification of refusal of the effects of international registration must be communicated to the International Bureau within the prescribed period. Rule 18(1) sets forth the period for communicating the notification of refusal. While Rule 18(1)(a) sets forth the prescribed period as six months from the date of publication, this period may be extended by a Contracting Party pursuant to a declaration made under Rule 18(1)(b) (extending the six-month period to twelve months). Furthermore, the declaration under Rule 18(1)(b) may also include, inter alia, a statement under Rule 18(1)(c)(ii) (providing for the later communication of a decision regarding the grant of protection where a decision regarding the grant of protection was unintentionally delayed by the office of the Contracting Party). Section 1.1062(b) is proposed to be added to provide that for each international design application to be examined, the Office shall, subject to Rule 18(1)(c)(ii), send to the International Bureau within 12 months from the publication of the international registration under Rule 26(3) a notification of refusal (§ 1.1063) where it appears that the applicant is not entitled to a patent under the law with respect to any industrial design that is the subject of the international registration. The Office intends to send all notifications of refusal prior to the expiration of the 12-month period set forth in § 1.1062(b). Any failure by the Office to do so would be unintentional pursuant to Rule 18(1)(c)(ii).

ould be unintentional pursuant to Rule 18(1)(c)(ii).

The Office does not regard the failure to send the notification of refusal within the period referenced in § 1.1062(b) to confer patent rights or other effect under Article 14(2). The Hague Agreement is not self-executing, and the PLTIA provides for patent rights only upon issuance of a patent. See 35 U.S.C. 389(d) added by the PLTIA, 126 Stat. at 1531; see also S. Exec. Rep. No. 110-7, at 5 (“The proposed Act makes no substantive changes in U.S. design patent law with the exception of the following: the provision of limited rights to patent applicants between the date that their international design application is published by the IB and the date on which they are granted a U.S. patent based on that application; the extension of a patent term for designs from fourteen to fifteen years from grant; and allowing the USPTO to use a published international design registration as a basis for rejecting a subsequently filed national patent application that is directed at the same or a similar subject matter.”). Furthermore, the PLTIA requires an international design application that designates the United States to be examined by the Office pursuant to Title 35 of the United States Code. See 35 U.S.C. 389(a). Granting of patent rights without examination is inconsistent with 35 U.S.C. 389(a). The absence of a notification of refusal is not a patent. See 35 U.S.C. 153 (“Patents shall be issued in the name of the United States of America, under the seal of the Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon and shall be recorded in the Patent and Trademark Office.”)

ent rights without examination is inconsistent with 35 U.S.C. 389(a). The absence of a notification of refusal is not a patent. See 35 U.S.C. 153 (“Patents shall be issued in the name of the United States of America, under the seal of the Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon and shall be recorded in the Patent and Trademark Office.”).

Section 1.1063: Section 1.1063(a) is proposed to be added to provide, in accordance with Rule 18(2), that a notification of refusal shall contain or indicate: (1) The number of the international registration; (2) the grounds on which the refusal is based; (3) where the grounds of refusal refer to similarity with an industrial design that is the subject of an earlier application or registration, a copy of a reproduction of the earlier industrial design and information concerning the earlier industrial design as required under Rule 18(2)(b)(iv); and (4) a time period for reply to the notification under § 1.134 and § 1.136 to avoid abandonment.

Pursuant to Article 12, the Office communicates the notification of refusal directly to the International Bureau, which then transmits without delay a copy of the notification of refusal to the holder. Rule 18(2)(vi) provides that the notification of refusal shall indicate whether the refusal is subject to review or appeal, and if so, the time limit for requesting review or appeal. Accordingly, the notification of refusal communicated by the Office will set a time period for reply under § 1.134 and § 1.136 to avoid abandonment.

Section 1.1063(b) is proposed to be added to provide that any reply to the notification of refusal must be filed directly with the Office and not through the International Bureau. Section 1.1063(b) further provides that the requirements of § 1.111 shall apply to a reply to a notification of refusal.

Under the Hague Agreement, any reply to the notification of refusal must be filed directly with the Office

.1063(b) is proposed to be added to provide that any reply to the notification of refusal must be filed directly with the Office and not through the International Bureau. Section 1.1063(b) further provides that the requirements of § 1.111 shall apply to a reply to a notification of refusal.

Under the Hague Agreement, any reply to the notification of refusal must be filed directly with the Office. The applicant may not file a reply to a notification of refusal through the International Bureau. Any further correspondence from the Office will normally be sent directly to the applicant. The procedures applicable to design applications under chapter 16 are generally applicable to international design applications after communication of the notification of refusal. See Article 12(3)(b) and 35 U.S.C. 389(b); see also WIPO, Guide to the International Registration of Industrial Designs Under the Hague Agreement, B.II.39, ¶ 9.23 (Jan. 2012) (“Where the holder of an international registration receives, through the International Bureau, a notification of refusal, he has the same rights and remedies (such as review of, or appeal against, the refusal) as if the industrial design had been filed directly with the Office that issued the notification of refusal. The international registration is, therefore, with respect to the Contracting Party concerned, subject to the same procedures as would apply to an application for registration filed with the Office of that Contracting Party.”). Thus, for example, the provisions of 35 U.S.C. 133 and §§ 1.134 through 1.136 govern the time to reply to an Office action, including a notification of refusal, and the consequence for failure to timely reply ( i.e., abandonment).

e action, including a notification of refusal, and the consequence for failure to timely reply ( i.e., abandonment).

Because the procedures following the notification of refusal are governed by national practice, the failure of an applicant to renew an international registration pursuant to Article 17(2) does not affect the pendency status of an international design application before the Office. Otherwise, applicants in international design applications would not have the same rights and remedies as applicants in national design

Section 1.1064: Section 1.1064 is proposed to be added to provide for requirements relating to only one independent and distinct design in international design applications.

Article 13 permits a Contracting Party whose 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, to notify the Director General in a declaration. Section 1.1064(a) is proposed to provide that only one independent and distinct design may be claimed in an international design application designating the United States.

Section 1.1064(b) specifies that if the requirements under 1.1064(a) are not satisfied, the examiner shall in the notification of refusal or other Office action require the applicant in the reply to that action to elect one independent and distinct design for which prosecution on the merits shall be restricted. Section 1.1064(b) further specifies that such requirement will normally be made before any action on the merits but may be made at any time before the final action. Review of any such requirement is provided under §§ 1.143 and 1.144. The procedure set forth in 1.1064(b) is analogous to the procedures applicable to national applications. See § 1.142.

Section 1.1066: Section 1.1066 is proposed to be added to specify the correspondence address for an international design application

any action on the merits but may be made at any time before the final action. Review of any such requirement is provided under §§ 1.143 and 1.144. The procedure set forth in 1.1064(b) is analogous to the procedures applicable to national applications. See § 1.142.

Section 1.1066: Section 1.1066 is proposed to be added to specify the correspondence address for an international design application. Unlike other types of applications before the Office, an applicant does not need to file any further submissions with the Office to initiate examination under § 1.1062 of an international design application designating the United States. Rather, published international design registrations that designate the United States will be systematically received from the International Bureau and examined in due course. Accordingly, § 1.1066(a) is proposed to set forth how the Office will establish the correspondence address for an international design application in the absence of a communication from the applicant changing the correspondence address. Specifically, § 1.1066(a) provides that, unless changed in accordance with § 1.1066(b), the Office will use as the correspondence address the address of the representative identified in the publication of the international registration, or if there is no address for the representative, the address of the applicant identified therein.

Section 1.1066(b) provides that the correspondence address may be changed by the parties set forth in § 1.33(b)(1) or (b)(3) in accordance with § 1.33(a).

Section 1.1066(c) is proposed to be added to provide that a reference in the rules to the correspondence address set forth in § 1.33(a) shall be construed to include a reference to § 1.1066 for a nonprovisional application that is an international design application.

o the correspondence address set forth in § 1.33(a) shall be construed to include a reference to § 1.1066 for a nonprovisional application that is an international design application.

Section 1.1067: Section 1.1067(a) is proposed to be added to provide for a title in an international design application. The Hague Agreement does not require that an international design application contain a title. The Office believes a title that identifies the article in which a design is embodied is helpful to the public in understanding the nature and use of the article embodying the design after the patent has issued. In addition, a U.S. patent must contain a title of the invention. See 35 U.S.C. 154(a)(1) (“Every patent shall contain a short title of the invention . . .”). Accordingly, pursuant to § 1.1067(a), the applicant may provide a title of the design that designates the particular article in an international design application that is before the Office for examination. Section 1.1067(a) further provides that where an international design application does not contain a title of the design, the Office may establish a title. In determining the title, the Office may look to the particular article specified in the claim.

Section 1.1067(b) is proposed to be added to provide that if the applicant is notified in a notice of allowability that an oath or d

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