U.S. Implementation of the Hague Agreement

U.S. Implementation of the Hague Agreement
Hague Agreement Public Forum Madison South Auditorium United States Patent and Trademark Office April 29, 2015

Hague System Overview David R. Gerk Patent Attorney
Office of Policy and International Affairs (OPIA) United States Patent and Trademark Office April 29, 2015

Hague System in 20 Words or Less…
Centralized acquisition and maintenance Industrial Design Rights Filing single international application Single international registration One or more designated contracting parties (member countries) April 29, 2015

Analogous WIPO Treaties
Comparison with PCT and Madrid: Like PCT and Madrid: a procedural treaty Like Madrid, unlike PCT: a registration treaty Acquisition and maintenance of rights Unlike Madrid – centralized through one shop No basic application required – file with WIPO Self -designation possible No “office of origin role” – WIPO is central shop April 29, 2015

History of the Hague Agreement
London Act (1934) “frozen” as of Jan 1, 2010 Hague Act (1960) Euro-centric membership New members are not joining this act Geneva Act (1999) U.S. signed on July 6, 1999 U.S. deposited instrument of ratification on February 13, 2015 Takes effect with respect to the United States on May 13, 2015 April 29, 2015

Filings: National vs Hague
National/Regional Route APPLICANT OFFICE 1 OFFICE 2 OFFICE 3 International Route OFFICE 1 OFFICE 2 OFFICE 3 APPLICANT International Bureau Direct Indirect April 29, 2015

Hague Union Hague Union
49 Geneva Act (1999) 15 Hague Act (1960) 64 Contracting Parties Hague Union April 29, 2015

What Hague does not cover
Hague Agreement is primarily a procedural treaty, accordingly certain issues are not addressed: Conditions for protection Refusal procedure to be applied in deciding whether protection should be granted Rights that result from protection These issues are left to the laws of each of the Contracting Parties (member country). April 29, 2015

Geneva Act Legal Framework
Articles Articles 1-34 Common Regulations Rules 1-37 Administrative Instructions Nine Parts Sections Laws & Regulations of Contracting Parties (member countries) Hague System Legal Framework April 29, 2015

Hague System is a Closed System
Applicant Must be Entitled to File an International Application “Entitlement” = Connection with a Contracting Party Nationality Domicile Habitual Residence Real and Effective Industrial or Commercial Establishment Entitlement also needed to file through a Contracting Party as an Office of Indirect Filing (e.g., through USPTO instead of with WIPO directly) Applicant can only designate Contracting Parties with a common treaty membership. (e.g., 19991999 and not 19991960) An applicant who’s contracting party is the U.S. cannot designate a country that is only a member of the 1960 Act. (Some are members of both 1960 & 1999) April 29, 2015

Hague System Procedure
OFFICE OF “APPLICANT’S CONTRACTING PARTY” (ACP) Indirect Filing International Application self-designation Direct Filing INTERNATIONAL BUREAU (IB) OFFICE OF DESIGNATED CONTRACTING PARTY (DCP) OFFICE OF DESIGNATED CONTRACTING PARTY (DCP) April 29, 2015

Roles in the Hague Process
Three Main Actors: Office of Applicant’s Contracting Party International Bureau (WIPO) Office of a Designated Contracting Party April 29, 2015

Roles in the Process Office of Applicant’s Contracting Party (Indirect Filing) Sends international design application to IB IB (WIPO) to receive within one month of filing to retain filing date USPTO: Performs Security Clearance IB to receive within six months to retain filing date when filed through the USPTO Transmittal Fee must be paid before USPTO will forward on April 29, 2015

Roles in the Process International Bureau (WIPO) Examines formalities
Records in the International Register Issues a Registration Certificate to holder Publishes in WIPO Bulletein Three different options as to how quickly for no cost (1) Standard, (2) Immediate, or (3) Deferred Notifies designated Contracting Parties; Provides application for consideration USPTO will then perform examination April 29, 2015

Roles in the Process Office of a Designated Contracting Party
Review the published international registration according to requirements of national law 2 Options for CP: Refusal applicant in contact with the CP directly No Refusal (withdrawal of refusal or statement of grant) international registration will have effect in that CP USPTO will be issuing a design patent that gives effect to the design rights (republishing) Some jurisdictions will not “republish” and rights take effect based off the international registration April 29, 2015

Quick Statistics Hague System in 2014 *
2924 International Applications (-2.2%) 14,441 designs (+9.6%) 2703 International Registrations (-1.1%) 13,504 designs (+5.5%) 27,838 International Registrations in force (+2.3%) 116,571 designs (+4.5%) * See WIPO 2015 Hague Yearly Review April 29, 2015

Distribution of designs per international registration in 2014.
Quick Statistics Distribution of designs per international registration in 2014. * See WIPO 2015 Hague Yearly Review April 29, 2015

Distribution of designations per international registration in 2014.
Quick Statistics Distribution of designations per international registration in 2014. * See WIPO 2015 Hague Yearly Review April 29, 2015

Highlights of the USPTO Final Rules & the Hague System
Boris Milef Senior Legal Examiner Office of International Patent Legal Administration United States Patent and Trademark Office April 29, 2015

Final Rule Final Rule published April 2, 2015:
Changes To Implement the Hague Agreement Concerning International Registration of Industrial Designs, 80 FR (Apr. 2, 2015) April 29, 2015

Final Rule New subpart I specific to international design applications (IDA) USPTO as an office of indirect filing Form and content provisions Relief provisions National processing provisions Changes to other rules to accommodate IDAs April 29, 2015

Applicability Dates Effective date: May 13, 2015 Applicability dates:
Applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012: Changes to: 37 CFR 1.32, 1.46, 1.63, 1.76, and 1.175 Applications filed under 35 U.S.C. 111 on or after December 18, 2013: 37 CFR 1.53(b) and (c), and 1.57(a)(4) All other changes do not depend on the application filing date. April 29, 2015

Who can file an International Design Application?
That depends on where the international design application is filed…. File directly with the International Bureau File indirectly through an office of indirect filing April 29, 2015

Filing Directly With the International Bureau
The applicant must have at least one of the following connections with a Contracting Party to the Hague Agreement: Nationality Domicile Habitual residence Real and effective industrial or commercial establishment If there is more than one applicant, each applicant must have a connection to a Contracting Party April 29, 2015

Filing Through the USPTO as an Office of Indirect Filing
The applicant must have at least one of the following connections to the United States: U.S. Nationality Domicile in the U.S. Habitual residence in the U.S. Real and effective industrial or commercial establishment in the U.S. If more than one applicant, each applicant must have a connection to the United States April 29, 2015

Filing Through the USPTO: What do we review?
USPTO will review IDAs for: Entitlement to file through the USPTO Does applicant have a connection to the U.S.? Is the United States applicant’s Contracting Party? Payment of the transmittal fee National security If the above 3 conditions are met, the USPTO will transmit the application to the IB Applicant will receive notice of the transmittal and of the IDA receipt date April 29, 2015

Filing Through the USPTO: What do we review? (con’t)
If the above 3 conditions are not met, the USPTO will not transmit the application to the IB The USPTO will notify the applicant the reason why the application was not transmitted April 29, 2015

Filing Through the USPTO: Applicant’s CP
To file through the USPTO, the U.S. must be “applicant’s Contracting Party” (ACP) The ACP is the CP through which applicant derives entitlement to file an IDA, or if there are two or more such CPs, the one indicated as such in the IDA Applies to each applicant The official form (DM/1) includes a box to indicate the ACP (Article 1 (xiv), Article 4, §1.1012) April 29, 2015

Filing Through the USPTO: How to File
IDAs may be submitted to the USPTO electronically via EFS-Web or in paper form via mail or hand delivery Facsimile transmission of IDAs to the USPTO is prohibited (§ 1.6 and § 1.8) Warning: IDAs filed in paper will be subject to an additional per page WIPO publication fee Currently, 150 Swiss francs for each page containing a reproduction after the first page April 29, 2015

Filing Through the USPTO: How to File (con’t)
IDAs filed through EFS-Web may also be subject to the additional per page publication fee if the reproductions are not attached in the prescribed manner EFS-Web has been designed to avoid incurring the additional per page publication fee by guiding users to attach reproductions via a special “Attach Reproductions” section Permits attachment of single page PDF and JPEG files only A design/view number is associated to each image file uploaded Figure numbers should not be included in the images; reproduction numbering is accomplished by associating the image file with a design/view number April 29, 2015

April 29, 2015

An EFS-Web Quick Start Guide for filing international design applications through the USPTO will be available on the EFS-Web Guidance and Resources web page at: April 29, 2015

Filing Through the USPTO: Correspondence Address
Applicant may specify a correspondence address to be used by the USPTO different from the correspondence address specified in the DM/1 form The address for correspondence in the DM/1 is for use by the IB, which does not recognize Customer Numbers (CN) A CN correspondence address should be specified in a separate signed document, such as a transmittal letter, that accompanies the DM/1 form (§ ) April 29, 2015

Filing Through the USPTO: Representation
Applicants may be represented before the USPTO as an office of indirect filing by a practitioner registered (§ 11.6) or granted limited recognition (§§ 11.9(a) or (b)) May act pursuant to § 1.34 or be appointed in writing signed by the applicant specifying the practitioner’s name and registration number (§ ) April 29, 2015

Filing Through the USPTO: Representation (con’t)
Applicants may appoint a representative before the IB in accordance with Rule 3 No restriction as to who may be appointed, but only one representative may be appointed May appoint a law firm as the representative Appointment may be made in the DM/1 or in a separate power of attorney (POA) signed by the applicant If the representative signs the DM/1 and a POA is not submitted, the IB will send an irregularity letter April 29, 2015

Components of an International Design Application
Main components: “Official form” & Annexes Reproductions Fees April 29, 2015

Official form The IDA must be presented on the “official form”
The IB established form DM/1 “Application for International Registration” as an official form Note: A revised DM/1 form reflecting U.S. and Japan membership will be available on WIPO’s website on May 13, 2015. (Rule 7(1), Rule 1(vi), § ) April 29, 2015

Annexes Used to submit required or optional content items for a specific designated CP Currently, only for Republic of Korea Annexes for the U.S. will be available 5/13/2015: inventor’s oath or declaration micro-entity certification information disclosure statement (IDS) April 29, 2015

Annexes (con’t) The U.S. Annex for the inventor’s oath or declaration includes WIPO inventor’s oath or declaration forms specifically tailored to IDAs Possible to use USPTO inventor’s oath or declaration forms, including non-English versions, in lieu of the WIPO forms April 29, 2015

Annexes (con’t) The U.S. Annex concerning an information disclosure statement (IDS) does not need to be included with the IDA submission § 1.97(b) has been amended to provide that the Office shall consider an IDS submitted within three months of the date of publication of the international registration without the need for a fee or statement under §1.97(e) April 29, 2015

Official Form and Annexes
The DM/1 Form and Annexes are available on WIPO’s website at: The “How to file an international application” document (DM/1.INF) is being replaced by a section on application forms in an updated Guide to the International Registration of Industrial Designs that will be available at: April 29, 2015

Official form and Annexes (con’t)
April 29, 2015

Contents of an IDA Three types of content: Mandatory contents
Additional mandatory contents Optional contents (Art. 5, Rule 7, § ) April 29, 2015

Mandatory Content Required content for all IDAs, includes, e.g.:
Prescribed data concerning the applicant Basis for applicant’s entitlement to file Indication of the product(s) that constitute the industrial design or in relation to which the design is to be used Designated CPs The number of the designs, which may not exceed 100 (See Rule 7(3) for a complete list) April 29, 2015

Additional Mandatory Content
Required content only where certain CPs are designated: CPs that require, pursuant to Article 5(2), any of the following element(s) for a filing date under their national law: Identity of the creator A brief description of the reproduction or of the characteristic features of the industrial design A claim CPs that require, pursuant to Rule 8, a special requirement concerning the applicant or creator (Rule 7(4)) April 29, 2015

Optional Contents Optional contents for IDAs include, e.g.:
A request for deferred or immediate publication The name/address of applicant’s representative A claim of priority under the Paris Convention Any declaration, statement or other relevant indication specified in the Admin. Instructions (See Rule 7(5) for a complete list) April 29, 2015

Optional Content (con’t)
Regarding timing of WIPO publication: Default publication: 6 months after the date of international registration (or as soon as possible thereafter) Immediate publication: immediately after registration Deferred publication: Up to 30 months from the priority date (or filing date, if no priority), provided: The IDA does not designate a CP that does not permit deferred publication (e.g., U.S.) Some designated CPs may limit the period to < 30 months (Rule 17) April 29, 2015

Optional Content (con’t)
Regarding the claim for priority: There is no provision for making a claim for priority after filing the application Article 6(1) permits a Regulation to be established to provide for making the claim after filing, but no Regulation has been established April 29, 2015

No Additional Matter If the IDA contains any matter other than required or permitted, the IB “shall delete it ex officio” IB may dispose of any document other than those required or permitted (Rule 7(6)) April 29, 2015

Same Locarno Class All the industrial designs in the IDA must belong to the same class of the Locarno Classification (Rule 7(7)) April 29, 2015

Contents – U.S. Designated
IDAs designating the U.S. must include: A claim Indications concerning the identity of the creator(s) The inventor's oath or declaration Information required under §§ 1.63(b) and 1.64(b) that may be presented in an ADS will be satisfied by presenting such information in the IDA (§ (d)) April 29, 2015

Contents – U.S. Designated (con’t)
Claim: the specific wording shall be in formal terms to the ornamental design for the article (specifying name of article) as shown, or as shown and described More than one claim is not permitted (§1.1025) April 29, 2015

Contents – U.S. Designated Description
IDAs designating the U.S. must include a specification as prescribed by 35 U.S.C. 112 Applicants are encouraged to include a brief description of the views of the reproductions when filing an IDA May be required during the U.S. examination phase if missing (§§ and ) April 29, 2015

Applicant Consideration Where the U.S. is Designated
An IDA designating the U.S. may be refused in the U.S. examination phase if the applicant is not: Sole or joint inventors Legal representative of deceased or legally incapacitated inventor Assignee/obligated assignee/person having sufficient proprietary interest (§ (b)) April 29, 2015

Reproductions Reproductions shall comply with Rule 9 and Part Four of the Administrative Instructions (A.I.) WIPO also sets forth technical requirements for reproductions submitted as image files at (§ ) April 29, 2015

Reproductions (con’t)
Notable provisions: Rule 9 Reproductions “shall be of a quality permitting all the details of the industrial design to be clearly distinguished” (Rule 9(2)) A CP may declare that it requires certain specific views (Rule 9(3)) Republic of Korea has made a declaration under Rule 9(3) A CP may refuse on grounds that the reproductions “are not sufficient to disclose fully the industrial design” (Rule 9(4)) April 29, 2015

Reproductions (con’t)
Some notable provisions of the A.I.: The IDA “may comprise both photographs and other graphic representations, in black and white or in color” (A.I. 401) Shading/hatching permitted (A.I. 404) Must be of “professional standard” (A.I. 404) Matter shown but for which protection is not sought may be indicated in the description and/or by dotted or broken lines or coloring (A.I. 403) Numbering of reproductions, e.g., “1.1, 1.2” (A.I. 405) April 29, 2015

International Bureau (IB) - Formal Examination
Upon receipt of an IDA, the IB examines the application to ensure that it meets the prescribed formal requirements under the treaty and, if appropriate, accords the application a filing date and international registration date If the applicable requirements are not satisfied, the IB will invite applicant to make the required correction(s) within a set time limit (Article 8, Rule 14) April 29, 2015

International Bureau - Formal Examination (con’t)
Failure to timely comply with the IB invitation will result in abandonment of the application or removal of a designated CP (for a defect relating to an additional mandatory content item) Warning: Any response to an invitation from the IB must be filed directly with the IB and not through the USPTO to avoid any loss of rights under Article 8. Follow-on submissions received by the USPTO after the application has been transmitted to the IB are not forwarded to the IB. (§ ) April 29, 2015

Filing & Registration Dates
International filing date International registration date U.S. filing date April 29, 2015

International Filing Date
The filing date of an IDA is governed by Article 9 and Rules 13 &14 April 29, 2015

International Filing Date (con’t)
For IDAs filed directly with the IB, the filing date is: the date the IDA is received by the IB subject to Rule 14(2) April 29, 2015

For IDAs filed indirectly, the filing date is: the date the IDA is received by office of indirect filing, subject to Rule 14(2) and provided the IDA is: Governed exclusively by the Geneva Act, and Received by the IB within one month of such receipt date (or six months if a security clearance is required; the U.S. requires a security clearance) Otherwise, the filing date is the date the IB receives the IDA, subject to Rule 14(2) April 29, 2015

Rule 14(2) filing date defects: The IDA is not in a prescribed language English, French or Spanish (Rule 6(1)) The IDA is missing any of the following elements: An indication that international registration is sought Indications allowing the identity of the applicant to be established Indications sufficient to enable the applicant or representative to be contacted A reproduction (or specimen as provided by Article 5(1)(iii)) of the industrial design The designation of at least one CP April 29, 2015

International Registration Date
International registration date is the later of: The filing date The date of a correction of an Article 5(2) irregularity (Article 10(2)) April 29, 2015

Filing Date in the United States
The filing date of an IDA in the United States is the international registration date Applicants may petition under § (b) for review of the U.S. filing date. The petition requires: A showing that the IDA is entitled to the requested filing date, and Petition fee (§ 1.17(f)) April 29, 2015

Direct vs. Indirect Filing Considerations
Why file directly with the IB? The applicant does not have a U.S. connection but does have a connection with another CP IB’s E-filing system has robust data checking features No transmittal fee is required Reduces processing delay and filing date risks associated with an indirect office Allows instant payment of WIPO applications fees WARNING: A foreign filing license may be needed to file directly with the IB (35 U.S.C. 184) April 29, 2015

Direct vs. Indirect Filing Considerations (con’t)
Why file indirectly through the USPTO? No need for a foreign filing license Difference in time zones may benefit last minute filers May file reproductions in PDF However-- Each applicant must have a U.S. connection April 29, 2015

International Design Application Fees
Transmittal fee WIPO application fees April 29, 2015

Transmittal Fee Payment of the transmittal fee set forth in § (a) is required if the IDA is filed through the USPTO Amount: $120 (no entity-based discount) Warning: An IDA will not be transmitted to the IB if the transmittal fee is not paid An IDA not received by the IB within 6 months from receipt by the USPTO will not be entitled to a filing date as of the USPTO receipt date April 29, 2015

WIPO Application Fees Application fees required by WIPO:
Basic fee Publication fee Designation(s) fee Additional word fee WIPO only accepts payment in Swiss currency (Rules 12(1), 11(2) and 28(1)) April 29, 2015

WIPO Application Fees (con’t)
Amounts are set forth in: Schedule of Fees Individual Fees under the Hague Agreement “Hague System Fee Calculator” is a WIPO tool for calculating application fees April 29, 2015

WIPO Application Fees (con’t)
April 29, 2015

Paying WIPO Application Fees
Paying WIPO directly: Credit card E-filing E-Payment (only for payment of fees notified in an irregularity letter) WIPO current account E-Filing E-Payment Provide account # on WIPO forms (e.g., DM/1 form) Bank and postal transfer For further information, see: April 29, 2015

Paying WIPO Application Fees (con’t)
Paying WIPO through the USPTO: Applicants filing indirectly may pay WIPO application fees through the USPTO on or before the date of payment of the transmittal fee (§ (d)) Such payment will only be accepted in U.S. dollars Note: fluctuations in currency exchange rates may result in the IB receiving less than the required Swiss currency amount, and the IB may invite the applicant to pay the deficiency April 29, 2015

Paying WIPO Application Fees (con’t)
Applicants are not required to pay WIPO application fees through the USPTO If application fees are missing, the IB will invite applicant to pay the deficiency Later payment of WIPO fees does not impact the filing date or international registration date April 29, 2015

U.S. Designation Fee U.S. individual designation fee consists of two parts: A first part due on filing on IDA A second part (the issue fee) to be paid within the time period set in a notice of allowance April 29, 2015

First Part U.S. Designation Fee
The amount of the first part of the U.S. designation fee will be set forth on WIPO’s web site in Swiss francs The Swiss amount will be approximately equivalent to the combined filing/search/exam fees for a regular U.S. design application Discounts for small and micro entities April 29, 2015

First Part U.S. Designation Fee (con’t)
Establishing small entity status Payment of the small entity first part U.S. designation fee to the IB will be treated as a written assertion of entitlement to small entity status (§ 1.27(c)(3)) The DM/1 form will also include a check box to indicate small entity status April 29, 2015

First Part U.S. Designation Fee (con’t)
To establish micro entity status, a certification of micro entity status must be submitted WIPO U.S. Annex provided for this purpose The micro entity certification may be signed by a person authorized to represent the applicant before the IB (§ 1.29(e)) April 29, 2015

Petition to Excuse Delay
35 U.S.C. 387: An applicant’s failure to act within prescribed time limits in connection with requirements pertaining to an international design application may be excused as to the United States upon a showing satisfactory to the Director of unintentional delay and under such conditions, including a requirement for payment of the fee specified in section 41 (a)(7), as may be prescribed by the Director. § prescribes conditions for excusing delay April 29, 2015

A petition under § requires: A copy of any IB invitation setting a prescribed time limit for which applicant failed to timely act The required reply The petition fee (§ 1.17(m)) ($850 small, $1,700 undiscounted) A certified copy/English translation of the IDA (if required) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition was unintentional. The Director may require additional information where there is a question whether the delay was unintentional Terminal disclaimer April 29, 2015

The “required reply” may be: The filing of a continuing application A filing date petition under § (b) is required if the IDA has not been accorded an international reg. date A grantable petition under § to convert to a regular design application April 29, 2015

Conversion to Ch.16 Design
35 U.S.C. 384(a): …Notwithstanding the provisions of this part, any international design application designating the United States that otherwise meets the requirements of chapter 16 may be treated as a design application under chapter 16. § sets forth the requirements for conversion April 29, 2015

§ requires: The IDA designated the U.S. The IDA satisfies the requirements for a filing date for a Ch. 16 design application IDA must have been filed with the USPTO as an office of indirect filing The petition is filed prior to WIPO publication The petition fee set forth in § 1.17(t) ($180) April 29, 2015

If conversion is granted prior to transmittal of the IDA to the IB: IDA will be converted in toto no refund of transmittal fee If conversion is granted after transmittal of the IDA to the IB: effective only for the U.S. no refund of transmittal fee or fees forwarded to the IB April 29, 2015

U.S. Examination Phase April 29, 2015

Applicable Rules U.S. rules relating to applications for patents apply to IDAs in the U.S. examination phase except as provided in 37 CFR Chapter I or required by the treaty (§1.1061(a)) §1.1061(b) makes clear that certain rules applicable to regular design applications do not apply to IDAs, e.g., § 1.84 (except (c)) and §§ April 29, 2015

Definitions (§ 1.9) Definitions of “national application”
“nonprovisional application” include IDAs for which the USPTO has received a copy of the international registration pursuant to Article 10 April 29, 2015

Inventorship The creator(s) set forth in the published international registration are considered to be the inventors (§ 1.41(f)) Inventorship may be corrected pursuant to § 1.48 An inventor’s oath or declaration will be required for an added inventor unless previously submitted (§1.48(b) and § ) April 29, 2015

Applicants The applicant indicated in the published IR will be considered to be the applicant in the U.S. examination phase, unless changed in accordance with U.S. practice A § 1.46 applicant must either be identified as the applicant in the published IR or changed pursuant to §1.46(c) April 29, 2015

Correspondence Address
Unless the correspondence address is changed pursuant to § 1.33(a), the Office will use as the correspondence address the address according to the following order: correspondence address used by the USPTO as an office of indirect filing address of the representative indicated in the published IR address of the applicant indicated in the published IR (§ ) April 29, 2015

Foreign Priority Final Rule consolidates various versions of § and provides for foreign priority with respect to IDAs § 1.55(m) sets forth requirements concerning a claim for foreign priority and certified copy in IDAs that designate the U.S. April 29, 2015

Foreign Priority (con’t)
Under § 1.55(m), the priority claim may be presented in: the IDA in accordance with the provisions of the Hague Agreement the Office will pick up the claim from the published IR, if U.S. statutory requirements are satisfied an ADS (§1.76(b)(6)) in a nonprovisional IDA April 29, 2015

Time period for filing the claim/certified copy in a nonprovisional IDA is set forth in § 1.55(g) April 29, 2015

The Final Rule also: removes the requirement in § 1.55(g) for a processing fee (§ 1.17(i)) where the claim or certified copy is filed after the date the issue fee is paid provides for the filing of a certified copy in an application that is no longer pending with a petition (§ 1.55(g)) For design applications, the petition must be accompanied by the fee set forth in § 1.17(g) and include a showing of good and sufficient cause for the delay in filing the certified copy April 29, 2015

Final Rule also (con’t): provides for the acceptance of a delayed claim for priority in a design application pursuant to the petition procedure set forth in § 1.55(e) April 29, 2015

Domestic Benefit Final Rule consolidates various versions of § 1.78
Provides for domestic benefit claims (35 U.S.C. 120, 121, 365(c) or 386(c)) with respect to IDAs that designate the U.S. April 29, 2015

Domestic Benefit 35 U.S.C. 386(c) provides for domestic benefit in IDAs designating the U.S. and to IDAs designating the U.S. Conditions and requirements of 35 U.S.C. 120 apply April 29, 2015

Domestic Benefit To claim benefit to an IDA designating the U.S., the IDA must be entitled to a filing date under § (§ 1.78(d)(1)) The specific reference to the IDA must identify the relationship of the applications and identify the IDA by the U.S. application number or, alternatively, by the international registration number and filing date under § (§ 1.78(d)(2)) April 29, 2015

Domestic Benefit A benefit claim in a nonprovisional IDA to a prior filed application: must be made in an application data sheet (§ 1.76(b)(5)) the DM/1 form does not provide for domestic benefit claims April 29, 2015

Published International Registration Data
International registration data is received by the USPTO as XML data Reproductions are received as JPEGs April 29, 2015

Specification A specification document will be rendered in IFW based on the product information and description (if any) provided by the applicant in the DM/1 form and present in the published IR April 29, 2015

Sample Specification April 29, 2015

Sample Specification (con’t)
April 29, 2015

Examination IDAs designating the U.S. are examined pursuant to Title 35 U.S.C. Formalities examination is skipped Timing: A notification of refusal will be sent to the IB within 12 months from publication of the IR 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 IR Exception where delay was unintentional (§ ) April 29, 2015

Notification of Refusal
The notification of refusal (NOR) indicates or contains: grounds for refusal 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; 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 A time period for reply under § and § 1.136, where a reply is required April 29, 2015

Notification of Refusal (con’t)
The NOR will typically be the examiner’s first action that is a non-final rejection, restriction requirement, or Ex parte Quayle action, and thus include a time period for reply to avoid abandonment. April 29, 2015

Any reply to a NOR must be filed directly with the USPTO and not through the IB U.S. rules governing replies to other types of Office actions apply to a reply to a NOR Any subsequent Office action, e.g., a notice of allowance, final rejection, or non-final rejection, will be sent directly to the applicant. (§ ) April 29, 2015

In certain limited circumstances, the NOR may not require a reply, e.g.: Where the NOR is the recognition of a request for express abandonment prior to the examiner’s first action, or Where the applicant cancelled all but one design by preliminary amendment and the remaining design is allowed in the first office action; the NOR would notify the IB that the effect of the IR is refused as to the cancelled designs April 29, 2015

The NOR is not communicated directly to applicant, but rather indirectly through the IB The Office intends to send a courtesy notice via e-Office action when a NOR setting a time period for reply is made available in Private PAIR for those who opt-in to e-Office action April 29, 2015

1 Independent & Distinct Design
Only one independent and distinct design may be claimed Otherwise, the examiner shall require applicant to elect one independent and distinct design for prosecution May be made in the notification of refusal or other Office action April 29, 2015

Issue Fee (Second Part U.S. Designation Fee)
If it is determined that the applicant is entitled to a patent, a Notice of Allowance (PTOL-85 (Hague)) will be sent to the applicant specifying the amount of the issue fee (the second part U.S. designation fee) Applicant can pay the fee either by submitting: Directly to USPTO - the amount stated in the Notice of Allowance, in U.S. dollars. To WIPO– in Swiss Francs in the amount specified on web site of WIPO (§ 1.18(b)) April 29, 2015

Issue Fee (Second Part U.S. Designation Fee)
Small and micro entities must verify entitlement to such entity status prior to paying the issue fee A notification of loss of entitlement complying with §1.27 or §1.29 must be filed in the application prior to or at the time of paying the issue fee Complete “Change of Entity Status” on Part B-Fee(s) transmittal and return to the USPTO Notification of loss of entitlement cannot be filed through WIPO April 29, 2015

Statement of Grant of Protection
A “Statement of Grant of Protection” will be sent to the IB upon issuance of a U.S. patent on an IDA Provides notice that protection is granted in the United States to those industrial design or designs that are the subject of the international registration and covered by the patent. (§ and Rule 18bis) April 29, 2015

Grant of Protection & Provisional Rights
A grant of protection for an industrial design that is the subject of an international registration shall only arise in the United States through the issuance of a patent (§ ) Provisional rights, if available, begin upon the date of WIPO publication of the IDA (35 U.S.C. 154(d)) April 29, 2015

Access U.S. application files for published IDAs designating the U.S. will be available to the public The U.S. application file may be viewed in public PAIR by its U.S. application number (35/series code) Can also search for the U.S. application number in PAIR based on the corresponding international registration number (“DM/xxxxxx”) after publication Once the U.S. application becomes available to the public, unpublished applications to which benefit is claimed under 35 U.S.C. 120, 121, 365(c) or 386(c) will also become available to the public (§ 1.14) April 29, 2015

Expedited Examination
Expedited examination under § (“rocket docket”) is available for IDAs To quality, the IDA must have been published by WIPO Applicants may also want to consider requesting immediately WIPO publication when filing an IDA Do not include a request under § with the filing of any new IDA through the USPTO as an office of indirect filing April 29, 2015

Other Matters Final Rule prohibits CPAs in IDAs (§ 1.53(d))
removes the requirement for a petition to accept color drawings in design applications Still need to include the required reference in the specification to the color drawings (§ 1.84) April 29, 2015

Patent Term 15 year patent term
Applies to patents issuing from IDAs and domestic U.S. design applications filed on or after May 13, 2015 Payment of a fee for renewing an international registration is not required to maintain a U.S. patent issuing on an IDA in force April 29, 2015

U.S. Implementation of the Hague Agreement
Hague Agreement Public Forum Madison South Auditorium United States Patent and Trademark Office April 29, 2015

Preparation for Receiving Applications filed under the Hague Agreement
Robert Olszewski Director Technology Center 2900 United States Patent and Trademark Office April 29, 2015

Illustrative Examples of Applications Under the Hague System
David R. Gerk Patent Attorney Office of Policy and International Affairs (OPIA) United States Patent and Trademark Office April 29, 2015

Areas of Particular Interest
Areas of Interest with respect to the Republic of Korea, Japan and the United States: Treatment of Multiple Designs View Requirements Exception to Lack of Novelty April 29, 2015

Treatment of Multiple Designs
Unity of Design Article 13 provides for a special requirement concerning “unity of design” Parties whose law requires “that designs that are subject of the same application conform to a unity of design, unity of protection or unity of use, or belong to the same set or composition of items or that only one independent and distinct design may be claimed in a single application…” Declaration can be made accordingly April 29, 2015

Japan Declaration under Article 13 (one independent & distinct design) Implemented this provision by revising its national design law An international application containing several designs when designating Japan… deemed to be a bundle of several domestic applications each filed for a single design. April 29, 2015

Handling of Multiple Designs by JPO April 29, 2015

Japan No refusal on the grounds that the application contains multiple designs (separated out) Notification of Refusal or Statement of Grant of Protection is prepared for each design and sent to the IB National application number Given to each design Needed for subsequent procedure(s) before the JPO Indicated on the Notification of Refusal or Statement of Grant Fees will be dependent on the number of designs included April 29, 2015

Korea No declaration under Article 13 Multiple design applications are acceptable An application containing up to 100 designs may filed in Korea without expectation of refusal on grounds relating to multiple designs. April 29, 2015

United States Declaration made under Article 13 Law requires that only “one independent and distinct design” be claimed in a single application Application will be reviewed and when multiple designs deemed to be “patentably distinct” are in one application, a restriction requirement will be issued in the form of a refusal. April 29, 2015

United States Applicant can overcome the refusal similar to how the restriction requirement is addressed in domestic practice Argument Cancel designs to leave only one independent and distinct design in the application April 29, 2015

United States If applicant wishes to pursue one or more of the cancelled designs, can file a divisional/continuation either as: a U.S. national design patent application (divisional/continuation) or another international design application designating the U.S. Need a proper claim for benefit of the filing date of the earlier case in order to receive the benefit of that date Area of Caution – surrender to the public of non-pursued embodiments. (Pacific Coast Marine Windshields v. Malibu Boats, LLC.) April 29, 2015

Required Views Rule 9(3) Parties which require certain specified views can make a declaration specifying the specific views that are required and the circumstances in which they are required. April 29, 2015

Required Views April 29, 2015

Required Views Japan Six Required Views Orthographic Projection
April 29, 2015

Required Views Korea Required Views for Typeface April 29, 2015

Required Views Korea Required View for a Set of Articles
April 29, 2015

Required Views Korea To avoid refusal, the appearance of each product should be fully disclosed. April 29, 2015

Required Views United States
Did not make a declaration under Rule 9(3). No specific view(s) required. April 29, 2015

Exception to Lack of Novelty
April 29, 2015

Exception to Lack of Novelty
United States  Not applicable April 29, 2015

U.S. Implementation of the Hague Agreement

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U.S. Implementation of the Hague Agreement

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