Filing Through the USPTO as an Office of Indirect Filing

35 U.S.C. 382

Filing international design applications.

(a) IN GENERAL.—Any person who is a national

of the United States, or has a domicile, a habitual residence, or a real and

effective industrial or commercial establishment in the United States, may file

an international design application by submitting to the Patent and Trademark

Office an application in such form, together with such fees, as may be

prescribed by the Director.

(b) REQUIRED ACTION.—The Patent and Trademark

Office shall perform all acts connected with the discharge of its duties under

the treaty, including the collection of international fees and transmittal

thereof to the International Bureau. Subject 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.

(c) APPLICABILITY OF CHAPTER 16.—Except as

otherwise provided in this chapter, the provisions of chapter 16 shall

apply.

(d) APPLICATION FILED IN ANOTHER COUNTRY.—An

international design application on an industrial design made in this country

shall be considered to constitute the filing of an application in a foreign

country within the meaning of chapter 17 if the international design

application is filed—

(1) in a country other than the United

States;

(2) at the International Bureau; or

(3) with an intergovernmental

organization.

37 CFR 1.1002 The United States Patent and Trademark Office as an office of indirect

filing.

(a) The United States Patent and Trademark

Office, as an office of indirect filing, shall accept international design

applications where the applicant’s Contracting Party is the United States.

ntry other than the United

States;

(2) at the International Bureau; or

(3) with an intergovernmental

organization.

37 CFR 1.1002 The United States Patent and Trademark Office as an office of indirect

filing.

(a) The United States Patent and Trademark

Office, as an office of indirect filing, shall accept international design

applications where the applicant’s Contracting Party is the United States.

(b) The major functions of the United States

Patent and Trademark Office as an office of indirect filing include:

(1) Receiving and according a receipt

date to international design applications;

(2) Collecting and, when required,

transmitting fees due for processing international design

applications;

(3) Determining compliance with

applicable requirements of part 5 of this chapter; and

(4) Transmitting an international

design application to the International Bureau, unless prescriptions

concerning national security prevent the application from being

transmitted.

37 CFR 1.1011 Applicant for international design application.

(a) Only persons who are nationals of the

United States or who have a domicile, a habitual residence, or a real and

effective industrial or commercial establishment in the territory of the United

States may file international design applications through the United States

Patent and Trademark Office.

(b) Although the United States Patent and

Trademark Office will accept international design applications filed by any

person referred to in paragraph (a) of this section, an international design

application designating the United States may be refused by the Office as a

designated office if the applicant is not a person qualified under 35 U.S.C.

chapter 11 to be an applicant.

37 CFR 1.1012 Applicant’s Contracting Party.

In order to file an international design application

through the United States Patent and Trademark Office as an office of indirect

filing, the United States must be applicant’s Contracting Party (Articles 4 and

1(xiv))

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.

37 CFR 1.1012 Applicant’s Contracting Party.

In order to file an international design application

through the United States Patent and Trademark Office as an office of indirect

filing, the United States must be applicant’s Contracting Party (Articles 4 and

1(xiv)).

37 CFR 1.1045 Procedures for transmittal of international design application to the

International Bureau.

(a) Subject to paragraph (b) of this section and

payment of the transmittal fee set forth in §

1.1031(a)

, transmittal of the international design

application to the International Bureau shall be made by the Office as provided

by Rule 13(1). At the same time as it transmits the international design

application to the International Bureau, the Office shall notify the

International Bureau of the date on which it received the application. The

Office shall also notify the applicant of the date on which it received the

application and of the transmittal of the international design application to

the International Bureau.

(b) No copy of an international design application

may be transmitted to the International Bureau, a foreign designated office, or

other foreign authority by the Office or the applicant, unless the applicable

requirements of part 5 of this chapter have been satisfied.

(c) Once transmittal of the international design

application has been effected under paragraph (a) of this section, except for

matters properly before the United States Patent and Trademark Office as an

office of indirect filing or as a designated office, all further correspondence

concerning the application should be sent directly to the International Bureau.

The United States Patent and Trademark Office will generally not forward

communications to the International Bureau received after transmittal of the

application to the International Bureau

he United States Patent and Trademark Office as an

office of indirect filing or as a designated office, all further correspondence

concerning the application should be sent directly to the International Bureau.

The United States Patent and Trademark Office will generally not forward

communications to the International Bureau received after transmittal of the

application to the International Bureau. Any reply to an invitation sent to the

applicant by the International Bureau must be filed directly with the

International Bureau, and not with the Office, to avoid abandonment or other

loss of rights under Article 8.

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 United States may file international design applications

through the USPTO. See

35 U.S.C. 382(a)

and

37 CFR

1.1011(a)

. In addition, in order to file an international design

application through the USPTO, the United States must be applicant’s Contracting Party.

See

37 CFR

1.1012

and Hague Agreement Article 4. Thus, an international

design application may be filed through the USPTO only if: (1) the applicant, or each

applicant if there is more than one applicant, 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; and (2) the United States is the applicant’s

Contracting Party, or each applicant’s Contracting Party if there is more than one

applicant.

The official form for presenting the international design

application, “Application for International Registration” (form DM/1), includes boxes to

indicate both applicant’s entitlement to file the international design application and

applicant’s Contracting Party. See

MPEP § 2909.01

es is the applicant’s

Contracting Party, or each applicant’s Contracting Party if there is more than one

applicant.

The official form for presenting the international design

application, “Application for International Registration” (form DM/1), includes boxes to

indicate both applicant’s entitlement to file the international design application and

applicant’s Contracting Party. See

MPEP § 2909.01

.

International design applications may be filed through

the USPTO as an office of indirect filing via the USPTO patent electronic filing system,

mail, or hand-delivery to the Customer Service Window at the USPTO’s Alexandria

headquarters. See

MPEP §

501

, subsection III for information regarding hand-delivery of

papers. The mailing address for delivery by the U.S. Postal Service is: Commissioner for

Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450. It should be noted that the

Priority Mail Express

®

provisions of

37 CFR 1.10

apply

to the filing of all applications and papers filed in the U.S. Patent and Trademark

Office, including international design applications and related papers and fees. It

should be further noted, however, that the filing of an international design application

is excluded from the Certificate of Mailing or Transmission procedures under

37 CFR

1.8

. Facsimile transmission may not be used for the filing of an

international design application or the filing of color drawings under

37 CFR

1.1026

. See

37 CFR 1.6(d)(3) and (4)

,

37 CFR

1.8(a)(2)(i)(K)

. See

MPEP § 502

for more information on depositing

correspondence with the USPTO.

Payment of the transmittal fee specified in

37 CFR

1.1031(a)

is required for international design applications filed

through the USPTO as an office of indirect filing. In addition, international design

applications filed with the USPTO are subject to national security review. See

35 U.S.C.

382(b)

FR

1.8(a)(2)(i)(K)

. See

MPEP § 502

for more information on depositing

correspondence with the USPTO.

Payment of the transmittal fee specified in

37 CFR

1.1031(a)

is required for international design applications filed

through the USPTO as an office of indirect filing. In addition, international design

applications filed with the USPTO are subject to national security review. See

35 U.S.C.

382(b)

. The international design application will not be

transmitted to the International Bureau if the transmittal fee has not been paid or the

necessary national security clearance has not been obtained. See

37 CFR

1.1045

.

Upon receipt of an international design application, the

USPTO will review the application for the required indications establishing each

applicant’s entitlement to file the international design application through the USPTO,

payment of the transmittal fee, and national security. If the indications are not

sufficient to establish each applicant’s entitlement to file the international design

application through the USPTO, the transmittal fee has not been paid, or the necessary

national security clearance has not been obtained, the Office will notify the applicant

accordingly via Form PTO-2320, “Notification Regarding Receipt And Transmittal Of The

International Design Application To The International Bureau.” Form PTO-2320 does not

set a time period to cure the deficiency but instead warns the applicant that an

international design application that is not received by the International Bureau within

six months from receipt of the application by the USPTO will receive a filing date as of

the date on which the International Bureau receives the application, rather than the

USPTO receipt date, subject to Hague Agreement Rule 14(2).

If the conditions for transmitting the international

design application to the International Bureau have been satisfied, the application will

be transmitted to the International Bureau

eceipt of the application by the USPTO will receive a filing date as of

the date on which the International Bureau receives the application, rather than the

USPTO receipt date, subject to Hague Agreement Rule 14(2).

If the conditions for transmitting the international

design application to the International Bureau have been satisfied, the application will

be transmitted to the International Bureau. The applicant will be notified via Form

PTO-2320 of the transmittal of the application to the International Bureau and of the

receipt date of the international design application by the USPTO.

Because the international design application must be

received by the International Bureau within six months of receipt of the application by

the USPTO in order to obtain the receipt date at the USPTO as the filing date, the

applicant should contact the USPTO for a status update well in advance of the expiration

of this six month period if the applicant has not received Form PTO-2320 indicating

transmittal of the application to the International Bureau.

Applicants are reminded, when electronically filing an

international design application through the USPTO as an office of indirect filing, to

attach reproductions via the “Reproductions” section of the “Upload documents” screen of

the USPTO patent electronic filing system rather than via the “Upload documents” section

of the “Upload documents” screen. Failure to attach the reproductions via the

“Reproductions” section may result in additional per page publication fees being

required by the International Bureau.

The Office will generally not forward any submission

filed in an international design application to the International Bureau that is

received after the application has been transmitted to the International Bureau.

Applicants are cautioned 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 Hague Agreement Article

8

l design application to the International Bureau that is

received after the application has been transmitted to the International Bureau.

Applicants are cautioned 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 Hague Agreement Article

8. See

37 CFR

1.1045(c)

.

[top]