# MPEP § 2920.05(a): Notification of Refusal

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S2920.05(a)

## Section

- **Citation:** MPEP § 2920.05(a)
- **Heading:** Notification of Refusal
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO MPEP / Chapter 2900 - International Design Applications / MPEP § 2920.05(a)

## Text

Hague Article 12
Refusal
*****
(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.
*****
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.
*****
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:

## Nearby sections

- [MPEP § 2901 Basic Hague Agreement Principles](https://www.frixlaw.com/law-library/statutes/MPEP_S2901.md)
- [MPEP § 2902 Definitions](https://www.frixlaw.com/law-library/statutes/MPEP_S2902.md)
- [MPEP § 2903 Declarations under the Hague Agreement Made by the United States of America](https://www.frixlaw.com/law-library/statutes/MPEP_S2903.md)
- [MPEP § 2904 Who May File An International Design Application](https://www.frixlaw.com/law-library/statutes/MPEP_S2904.md)
- [MPEP § 2905 Where to File An International Design Application](https://www.frixlaw.com/law-library/statutes/MPEP_S2905.md)
- [MPEP § 2905.01 Filing Through the USPTO as an Office of Indirect Filing](https://www.frixlaw.com/law-library/statutes/MPEP_S2905.01.md)
- [MPEP § 2906 Filing Date Requirements](https://www.frixlaw.com/law-library/statutes/MPEP_S2906.md)
- [MPEP § 2907 International Registration and Date of the International Registration](https://www.frixlaw.com/law-library/statutes/MPEP_S2907.md)
- [MPEP § 2908 Filing Date in the United States](https://www.frixlaw.com/law-library/statutes/MPEP_S2908.md)
- [MPEP § 2909 Contents of the International Design Application](https://www.frixlaw.com/law-library/statutes/MPEP_S2909.md)
- [MPEP § 2909.01 Official Form for the Application for International Registration](https://www.frixlaw.com/law-library/statutes/MPEP_S2909.01.md)
- [MPEP § 2909.02 Reproductions (Drawings)](https://www.frixlaw.com/law-library/statutes/MPEP_S2909.02.md)
- [MPEP § 2909.02(a) Reproductions Submitted Through the USPTO Patent Electronic Filing System](https://www.frixlaw.com/law-library/statutes/MPEP_S2909.02(a).md)
- [MPEP § 2909.03 Annexes](https://www.frixlaw.com/law-library/statutes/MPEP_S2909.03.md)

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S2920.05(a). Check the current official text before relying on it. Not legal advice.