Notification of Refusal

Hague Article 12

Refusal

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(2) [

Notification of Refusal

]

(a) The refusal of the effects of an

international registration shall be communicated by the Office to the

International Bureau in a notification of refusal within the

prescribed period.

(b) Any notification of refusal shall state

all the grounds on which the refusal is based.

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Hague Rule 18

Notification of Refusal

(1) [Period for Notification of Refusal]

(a) The prescribed period for the

notification of refusal of the effects of an international

registration in accordance with Article 12(2) of the 1999 Act or

Article 8(1) of the 1960 Act shall be six months from the publication

of the international registration as provided for by Rule 26(3).

(b) Notwithstanding subparagraph (a), any

Contracting Party whose Office is an Examining Office, or whose law

provides for the possibility of opposition to the grant of protection,

may, in a declaration, notify the Director General that, where it is

designated under the 1999 Act, the period of six months referred to in

that subparagraph shall be replaced by a period of 12 months.

(c) The declaration referred to in

subparagraph (b) may also state that the international registration

shall produce the effect referred to in Article 14(2)(a) of the 1999

Act at the latest

(i) at a time specified in the

declaration which may be later than the date referred to in that

Article but which shall not be more than six months after the

said date or

(ii) at a time at which protection is

granted according to the law of the Contracting Party where a

decision regarding the grant of protection was unintentionally

not communicated within the period applicable under subparagraph

(a) or (b); in such a case, the Office of the Contracting Party

concerned shall notify the International Bureau accordingly and

endeavor to communicate such decision to the holder of the

international registration concerned promptly thereafter.

(2) [

Notification of

Refusal

]

sion regarding the grant of protection was unintentionally

not communicated within the period applicable under subparagraph

(a) or (b); in such a case, the Office of the Contracting Party

concerned shall notify the International Bureau accordingly and

endeavor to communicate such decision to the holder of the

international registration concerned promptly thereafter.

(2) [

Notification of

Refusal

]

(a) The notification of any refusal shall

relate to one international registration, shall be dated and shall be

signed by the Office making the notification.

(b) The notification shall contain or

indicate

(i) the Office making the

notification,

(ii) the number of the international

registration,

(iii) all the grounds on which the

refusal is based together with a reference to the corresponding

essential provisions of the law,

(iv) where the grounds on which the

refusal is based refer to similarity with an industrial design

which has been the subject of an earlier national, regional or

international application or registration, the filing date and

number, the priority date (if any), the registration date and

number (if available), a copy of a reproduction of the earlier

industrial design (if that reproduction is accessible to the

public) and the name and address of the owner of the said

industrial design, as provided for in the Administrative

Instructions,

(v) where the refusal does not relate

to all the industrial designs that are the subject of the

international registration, those to which it relates or does

not relate,

a copy of a reproduction of the earlier

industrial design (if that reproduction is accessible to the

public) and the name and address of the owner of the said

industrial design, as provided for in the Administrative

Instructions,

(v) where the refusal does not relate

to all the industrial designs that are the subject of the

international registration, those to which it relates or does

not relate,

(vi) whether the refusal may be

subject to review or appeal and, if so, the time limit,

reasonable under the circumstances, for any request for review

of, or appeal against, the refusal and the authority to which

such request for review or appeal shall lie, with the

indication, where applicable, that the request for review or the

appeal has to be filed through the intermediary of a

representative whose address is within the territory of the

Contracting Party whose Office has pronounced the refusal, and

(vii) the date on which the refusal was pronounced.

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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.

usal refer to similarity with an

industrial design that is the subject of an earlier application or

registration;

(4) Where the refusal does not relate to

all the industrial designs that are the subject of the international

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

(5) A time period for reply under §§

1.134

and

1.136

, where a

reply to the notification of refusal is required.

(b) Any reply to the notification of refusal must

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

The requirements of §

1.111

shall apply to a

reply to a notification of refusal.

Under Article 12 of the Hague Agreement, “[t]he Office

of any designated Contracting Party may, where the conditions for the grant of

protection under the law of that Contracting Party are not met in respect of any or

all of the industrial designs that are the subject of an international registration,

refuse the effects, in part or in whole, of the international registration in the

territory of the said Contracting Party, provided that no Office may refuse the

effects, in part or in whole, of any international registration on the ground that

requirements relating to the form or contents of the international design application

that are provided for in this Act or the Regulations or are additional to, or

different from, those requirements have not been satisfied under the law of the

Contracting Party concerned.” This refusal of the effects of an international

registration is called a “notification of refusal.” See Article 12(2). The

notification of refusal is transmitted to the International Bureau who, without

delay, transmits a copy of the notification to the holder of the international

registration. Hague Agreement Rule 18 prescribes a time period for sending of the

notification of refusal and the content of the notification

ects of an international

registration is called a “notification of refusal.” See Article 12(2). The

notification of refusal is transmitted to the International Bureau who, without

delay, transmits a copy of the notification to the holder of the international

registration. Hague Agreement Rule 18 prescribes a time period for sending of the

notification of refusal and the content of the notification.

In accordance with

37 CFR

1.1062(b)

, a notification of refusal is to be sent to the

International Bureau within 12 months from the publication of the international

registration where it appears that the applicant is not entitled to a patent under

the law of the United States with respect to any industrial design that is the

subject of the international registration. The notification of refusal may be sent

after this 12-month period where the failure to send the notification within the

12-month period was unintentional.

The notification of refusal contains or indicates: (1)

the number of the international registration; (2) the grounds on which the refusal is

based; (3) a copy of a reproduction of the earlier industrial design and information

concerning the earlier industrial design, where the grounds of refusal refer to

similarity with an industrial design that is the subject of an earlier application or

registration; (4) where the refusal does not relate to all the industrial designs

that are the subject of the international registration, those to which it relates or

does not relate; and (5) a time period for reply under

37 CFR 1.134

and

1.136

where a reply to the notification of refusal is

required. See

37 CFR 1.1063(a)

.

The grounds of refusal may be in the form of a

rejection based on a condition for patentability under title 35, United States Code

(e.g.,

35 U.S.C.

171

,

102

,

103

,

or

112

), a requirement for restriction (where more than one

independent and distinct design is presented in the application), and/or an objection

(where not prohibited by Article 12(1) of the Hague Agreement)

. See

37 CFR 1.1063(a)

.

The grounds of refusal may be in the form of a

rejection based on a condition for patentability under title 35, United States Code

(e.g.,

35 U.S.C.

171

,

102

,

103

,

or

112

), a requirement for restriction (where more than one

independent and distinct design is presented in the application), and/or an objection

(where not prohibited by Article 12(1) of the Hague Agreement). The grounds of

refusal may also be based on applicant’s action taken prior to examination, including

cancellation of industrial designs in the international design application by

amendment, or by an express abandonment of the application pursuant to

37 CFR

1.138

or the renunciation of the designation of the United

States (see

MPEP § 2930

).

Objections based on requirements relating to the form

or content of the application provided for in the Hague Agreement and Regulations

thereunder are not prohibited by Article 12(1) where the International Bureau is not

responsible for verifying compliance with such requirements. Such may arise, for

example, where the applicant submits amended drawings directly to the Office in the

course of examination that fail to comply with the formal requirements applicable to

reproductions under Hague Agreement Rule 9 and Part Four of the Administrative

Instructions. Nor does Article 12(1) prohibit objections based on inconsistencies

among the views of the reproductions or incorrect or inaccurate statements contained

in the description.

As in the case of Office actions in design

applications filed under 35 U.S.C. chapter 16, copies of references cited by the

examiner should be included with the notification of refusal. In addition, because

Hague Agreement Rule 18(2)(b)(iv) does not distinguish references used in a ground of

refusal based on where the reference originated from, the examiner should also

include any U.S. patent or U.S. patent application publication used in a grounds of

refusal (e.g., a rejection under

35 U.S.C. 102

or

103

). See

37 CFR 1.1063(a)(3)

ld be included with the notification of refusal. In addition, because

Hague Agreement Rule 18(2)(b)(iv) does not distinguish references used in a ground of

refusal based on where the reference originated from, the examiner should also

include any U.S. patent or U.S. patent application publication used in a grounds of

refusal (e.g., a rejection under

35 U.S.C. 102

or

103

). See

37 CFR 1.1063(a)(3)

. Copies of

references cited by the applicant in an information disclosure statement do not need

to be included with the notification of refusal.

The notification of refusal should include a time

period for reply under

37 CFR 1.134

and

1.136

to avoid abandonment where a reply to the notification

of refusal is required. This time period will normally be made in the Office Action

Summary, Form PTOL-326, accompanying a Notification of Refusal cover sheet, Form

PTO-2319. Not all notifications of refusal will require a reply. For example, where

the international registration contains multiple industrial designs and all but one

design is cancelled by preliminary amendment prior to examination, and the remaining

design is determined by the examiner to be allowable, then a notice of allowance will

be sent concurrently with a notification of refusal, refusing the effects of the

international registration in the United States with respect to the industrial design

or designs that have been cancelled. Such a notification of refusal, otherwise known

as a “Notification of Partial Refusal,” (Form PTO-2321) will be communicated to the

International Bureau but will not set a time period for reply to the notification of

refusal, as no reply to the refusal is required.

The Hague system does not require any submission from

the applicant to the USPTO to initiate examination of a nonprovisional international

design application. In many cases the applicant will not have retained the services

of an attorney or agent registered to practice before the USPTO (“patent

practitioner”) prior to receipt of the notification of refusal

, as no reply to the refusal is required.

The Hague system does not require any submission from

the applicant to the USPTO to initiate examination of a nonprovisional international

design application. In many cases the applicant will not have retained the services

of an attorney or agent registered to practice before the USPTO (“patent

practitioner”) prior to receipt of the notification of refusal. Where there is no

patent practitioner of record, the examiner should include the following form

paragraph in the refusal to remind applicants of the signature requirements

applicable to a reply to a notification of refusal: