MPEP Chapter 2900: International Design Applications Flashcards
(20 cards)
Hague Agreement
International agreement so an applicant can file a single international DESIGN application, which may have the effect of an application for protection for the design in “contracting parties”
Administered by International Bureau of WIPO
US as a “Contracting Party”
US is a contracting party to the Hague Agreement as of May 13, 2015
Filing an International Design Application
-Directly at IB
-Indirectly through “indirect filing sites” like the USPTO
Processing After Filing an International Design Application
IB/indirect office examines application to determine whether formal requirements are met
If so, a filing date will be awarded and the industrial design will be sent to Geneva to be registered in the International Register
If not, applicant will be requested to make corrections
Deferred Publication in International Design Applications
NOT ALLOWED in US
What happens after publication of International Registration?
US will examine the published international registration (that designates the US)
If they find it is not entitled to a patent, PTO will send “notification of refusal” to IB within 6-12 months of publication
After that, applicant can reply to PTO and further OAs are sent directly to applicant
How Hague Agreement is Implemented in US
-Must have a claim for ornamental design
-Oath/dec
-Not possible to defer publication
-One independent and distinct design per application
-US has 12 months to refuse patent
-Designation fee (first part due at filing, second part due at allowance in US)
-6 month period for security clearance
-15 year from grant patent term
Who can file an international design application in the USPTO?
US nationals/citizens and businesses/individuals with a presence in the US
How to File an International Design Application in the USPTO
-Web
-Mail
-By hand
-NO certificate of mailing
-NO fax or certificate of transmission
Filing Date - Filing at IB
Filing date = date IB received complete international application
Or date that correction is received
Filing Date - Filing at Indirect Office
Filing date = date international application received by Indirect Office
International Registration
Forwarded to Geneva
Filing date = the day the international application received by Office filed in
Filing Date - US Patent from an International Design Application
Filing Date = date of filing in Office filed in (if complete application) (if not complete, then date of completion in Geneva)
Contents of a International Design Application
-Request for international design registration
-Applicant
-What design is
-Classification
-Designation of contracting party
-Fee
US designation: claim, inventor, oath
Revival of Abandoned International Design Application
Can be revived if abandoned unintentionally
37 CFR 1.1051
Copy of correspondence + reply
Fee
Certified copy of application
Statement that delay was unintentional
Terminal disclaimer
Converting an International Design Application to a US Design Application
37 CFR 1.53(b)
Petition + fee before publication
An international design application designating the US will be treated…
Like a US design application after international publication (normal prosecution)
What is not allowed in international design apps in US?
NO CPAs (Rule 1.53(d)) applications!!
Most countries, other that US have…
Design registration, not design examination
Exception: US has design examination
Design Patent Term
15 years from issue for apps filed on/after 5/13/15
