Examination

35 U.S.C. 389

Examination of international design application.

(a) IN GENERAL.—The Director shall cause an

examination to be made pursuant to this title of an international design

application designating the United States.

(b) APPLICABILITY OF CHAPTER 16.—All questions of

substance and, unless otherwise required by the treaty and Regulations,

procedures regarding an international design application designating the United

States shall be determined as in the case of applications filed under chapter

16.

(c) FEES.—The Director may prescribe fees for filing

international design applications, for designating the United States, and for

any other processing, services, or materials relating to international design

applications, and may provide for later payment of such fees, including

surcharges for later submission of fees.

(d) ISSUANCE OF PATENT.—The Director may issue a

patent based on an international design application designating the United

States, in accordance with the provisions of this title. Such patent shall have

the force and effect of a patent issued on an application filed under chapter

16.

37 CFR 1.1062 Examination.

(a)

Examination.

The Office shall make an examination pursuant

to title 35, United States Code, of an international design application

designating the United States.

(b)

Timing.

For each international design application to be

examined under paragraph (a) of this section, the Office shall, subject to Rule

18(1)(c)(ii), send to the International Bureau within 12 months from the

publication of the international registration under Rule 26(3) a notification

of refusal (§

1.1063

) where it appears

that the applicant is not entitled to a patent under the law with respect to

any industrial design that is the subject of the international

registration.

37 CFR 1.1063 Notification of Refusal.

subject to Rule

18(1)(c)(ii), send to the International Bureau within 12 months from the

publication of the international registration under Rule 26(3) a notification

of refusal (§

1.1063

) where it appears

that the applicant is not entitled to a patent under the law with respect to

any industrial design that is the subject of the international

registration.

37 CFR 1.1063 Notification of Refusal.

(a) A notification of refusal shall contain or

indicate:

(1) The number of the international

registration;

(2) The grounds on which the refusal is

based;

(3) A copy of a reproduction of the earlier

industrial design and information concerning the earlier industrial

design, where the grounds of refusal refer to similarity with an

industrial design that is the subject of an earlier application or

registration;

(4) Where the refusal does not relate to all

the industrial designs that are the subject of the international

registration, those to which it relates or does not relate; and

(5) A time period for reply under §§

1.134

and

1.136

, where a reply

to the notification of refusal is required.

(b) Any reply to the notification of refusal must be

filed directly with the Office and not through the International Bureau. The

requirements of §

1.111

shall apply to a

reply to a notification of refusal.

International design applications designating the United

States are examined pursuant to title 35, United States Code. All questions of substance

and, unless otherwise required by the Hague Agreement or Regulations thereunder,

procedures regarding an international design application designating the United States

shall be determined as in the case of design applications filed under 35 U.S.C. chapter

16. See

35

U.S.C. 389

. Accordingly, the practices set forth in

MPEP §§

1504.01

(Statutory Subject Matter for Designs),

1504.02

(Novelty),

1504.03

(Nonobviousness),

1504.04

(Considerations Under 35 U.S.C

gulations thereunder,

procedures regarding an international design application designating the United States

shall be determined as in the case of design applications filed under 35 U.S.C. chapter

16. See

35

U.S.C. 389

. Accordingly, the practices set forth in

MPEP §§

1504.01

(Statutory Subject Matter for Designs),

1504.02

(Novelty),

1504.03

(Nonobviousness),

1504.04

(Considerations Under 35 U.S.C. 112),

1504.05

(Restriction), and

1504.06

(Double

Patenting) are generally applicable to international design applications designating the

United States.

While there is substantial overlap in examining practices

with respect to international design applications designating the United States and

design applications filed under 35 U.S.C. chapter 16, there are also differences. These

differences include:

(1) the Office sends a Notification of Refusal to the

International Bureau for forwarding to the holder of the international

registration where it is determined that the conditions for the grant of a patent

are not met in respect of any or all designs that are the subject of international

registration;

(2) upon issuance of a patent, the Office sends a

statement of grant of protection to the International Bureau indicating that

protection is granted in the United States to those designs that are the subject

of the international registration and covered by the patent.

Regulations concerning international design applications

are set forth in 37 CFR Part 1, subpart I.