No, you do not need a national/regional application or registration before filing an international application.
You can include up to 100 industrial designs per application. If more than one design is included in the international application, all the designs must belong to the same class of the Locarno Classification.
In principle, the date of the international registration is the filing date of the international application. For instance, if the international application is filed directly with the International Bureau (as it is always the case for E-Filing, but also in most cases for paper filings (form DM/1)), the date on which the International Bureau receives it will be the filing date, unless it contains any irregularities entailing a postponement of the filing date.
Upon receipt of an international application, the International Bureau checks that the application complies with the prescribed formal requirements.
If the application complies with those requirements, the International Bureau records it in the International Register and sends a certificate of the international registration to the holder. The International Bureau publishes the corresponding international registration in the International Designs Bulletin on WIPO’s website. The publication contains all relevant data concerning the international registration, including a reproduction of the industrial design(s).
If the international application does not comply with the applicable requirements, the International Bureau sends an “irregularity letter” to the applicant, inviting that person to make the required corrections within three months from the date of the letter sent by the International Bureau.
In principle, the scope of protection is defined by the reproductions (representations/views) of the design provided in the international application.
The conditions for the grant of protection are provided for in the national/regional legislations. The scope of protection may be different among the jurisdictions of designated Contracting Parties. Moreover, if the international registration is amended (for example, additional views are submitted) in a procedure before the Office of a designated Contracting Party, the information concerning such an amendment in that Contracting Party will be notified by the Office to the International Bureau and be made available through the International Designs Bulletin.
In accordance with Article 6 of the 1999 Act, priority of an earlier filing may be claimed on the basis of a first national or regional filing made in one of the States party to the Paris Convention or in a member of the World Trade Organization (or of a first international application, as the case may be when new Contracting Parties join the Hague System and the applicant wishes to use the Hague System to extend the protection of an industrial design that is the subject of a prior international application to those new Contracting Parties) in an international application, provided that the international application is filed within six months from the date of the earlier filing. Priority may be claimed at the time of the international application only.
The Office of a designated Contracting Party may request a copy of a priority document or the original document (directly from the holder). National or regional jurisdictions may have certain time limits for submissions of a priority document, and the priority claim is accepted only if the document is received within such a time limit, for example 3 months from the publication date of the international registration.
In principle, the publication of the international registration takes place six months after the date of the international registration. The applicant may request, in an international application, that the publication be deferred for a period which may not exceed 12 months (under the 1960 Act) or 30 months (under the 1999 Act) from the filing date or, where priority is claimed, from the priority date. However, under the 1999 Act, in accordance with the applicable law, a Contracting Party may make a declaration to the effect that no deferment is allowed or of a shorter period of deferment.. The application form DM/1 (E-Filing interface) indicates Contracting Parties concerned and the applicable deferment period, if any.
You may pay the fees:
The term of protection is five years counted from the date of the international registration. An international registration may be renewed for one or more additional terms of five years, in respect of each designated Contracting Party, up to the expiry of the total term of protection allowed by those Contracting Parties’ respective laws (consult maximum duration of protection for each Contracting Party).
Six months before the expiry date, the International Bureau sends an unofficial notice to remind the holder and his representative, if any, of the exact date of expiry. If, however, the holder or his representative does not receive said notice, this does not constitute an excuse for failure to comply with any time limit for payment of the fees due.
In principle, there are two options to renew an international registration:
Under The Hague System legal framework, there are no requirements/restrictions as to how many and which views of an industrial design must be submitted. However, according to Rule 9(4) of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement, a Contracting Party may refuse the effects of the international registration if the reproductions contained therein are considered not sufficient to fully disclose the industrial design.
In the above context, some Examining Offices, such as the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO) and the United States Patent and Trademark Office (USPTO), may issue a refusal on the ground that the industrial design has not been sufficiently disclosed by the reproductions. Furthermore, if by replying to such refusal you submit additional views disclosing a new element of the design, it is very likely that those Examining Offices will refuse your submission and maintain the refusal.
When preparing the reproductions of your industrial design in an international application, you must ensure that you have complied with the mandatory requirements set out in Rules 7 and 9 of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement and Part Four of the Administrative Instructions for the Application of the Hague Agreement. Furthermore, you may also consult the “Guidance on preparing and providing reproductions in order to forestall possible refusals on the ground of insufficient disclosure of an industrial design by Examining Offices”.
Each designated Contracting Party has the right to refuse, in its territory, the protection for an international registration. The Office of a designated Contracting Party must notify the International Bureau of the refusal of the effects of an international registration within the refusal period of six months from the date of publication of the international registration in the International Designs Bulletin. However, under the 1999 (Geneva) Act, any Contracting Party whose Office is an Examining Office, or whose law provides for the possibility of opposition, may declare that the refusal period of six months be replaced by a period of 12 months.
The International Bureau records in the International Register any refusal communicated by the Office of a designated Contracting Party, publishes it in the International Designs Bulletin and sends a copy of the notification of refusal to the holder of the international registration.
The holder of the international registration may request a review of, or appeal against the refusal in the designated Contracting Party concerned. The holder of the international registration has the same rights and remedies as he would have had if he had filed the industrial design in question directly with the Office that issued the notification of refusal. The ensuing procedure takes place solely at the national or regional level and is subject to the requirements provided for by the law of the Contracting Party concerned (such as the time limit, language, the appointment of a representative, etc.).
The International Bureau records any withdrawal of refusal or statement of grant of protection in the International Register and sends a copy to the holder of the international registration concerned. Such a withdrawal or statement is published in the International Designs Bulletin.
Even if the effects of an international registration have been invalidated in a designated Contracting Party, such invalidation will not have any consequences on the validity of the effects of that international registration in any other designated Contracting Party.
Invalidation proceedings concerning an international registration in a designated Contracting Party take place directly between the holder of the international registration, the competent authority and the third party. The proceedings are governed entirely by the law and practice of the Contracting Party concerned.
Where the effects of an international registration are invalidated in a designated Contracting Party and the invalidation is no longer subject to any review or appeal, the Office of the Contracting Party shall notify the International Bureau accordingly.
A change in ownership may result, among others, from a contract (such as an assignment), or a court decision, or operation of law (such as an inheritance or a bankruptcy), or from the merger of two companies. A partial change in ownership in respect of only some designated Contracting Parties or only some designs is also possible. The recording of a change in ownership can be requested by the holder as registered in the International Register (transferor) by using form DM/2. If it is requested by the new owner (transferee), the form must be signed by the holder, or the request must be accompanied by an attestation from the competent authority of the holder’s Contracting Party that the new owner appears to be the successor in title of the holder.
Copies (certified or non-certified) and/or extracts can be obtained by sending a request to the Extracts Unit of the International Designs Registry either, by fax: +41-22-740-1417 or by e-mail, indicating which type of information is sought from the categories within Item VI of the Schedule of Fees. Information concerning published international registrations, and including the international registration number concerned and the person to whom this document is to be sent (including full postal details) shall be indicated.
The payment options for this service are either through a current account with WIPO which, if applicable, should be indicated in the request or, after issuance of the invoice, by means of a bank/wire transfer in Swiss francs (CHF) to the WIPO bank account (IBAN No. CH51 0483 5048 7080 8100 0 Credit Suisse, CH-1211 Geneva 70, Swift/BIC: CRESCHZZ80A).
Yes, there are some special requirements that have to be taken into account when designating the United States of America in an international application.
As a general rule an international application, filed via the Hague System, may contain multiple designs (up to 100 designs) irrespective of which Contracting Parties are designated.
When designating the United States of America in an international application, the applicant should have in mind that in accordance with the law of the United States of America, only one independent and distinct design may be claimed in a single application.
Thus, if more than one design is included in an international application that designates the United States of America, it is the United States Patent and Trademark Office (USPTO) that will examine if those designs are different embodiments of a single design, which are not patentably distinct from each other. If several patentably distinct designs are included in the international registration, the USPTO will issue a notification of refusal in accordance with Article 13(2) of the 1999 Act, pending compliance with the requirement of unity of design under the laws of the United States of America.
Yes. A claim is required if the United States of America is designated in an international application. If the claim is missing from the international application, the International Bureau will invite the applicant to correct the application within three months from the date of the application. Failure to provide the claim affects the date of the international registration. In such a case, the date of the international registration shall be the date on which the correction of such an irregularity was received by the International Bureau, or the filing date of the international application, whichever is later.
The wording of the claim shall be as follows: “I/We claim: The ornamental design for a/an [insert title of the article in which the design is embodied or applied, for example, “a fruit slicer”] as shown, or as shown and described”. Only one article shall be indicated, irrespective of the number of designs contained in the international application.
As stated in Title 37 of the United States of America Code of Federal Regulations (37 CFR § 1.153), a design patent application may only have a single claim. The filing of an international application designating the United States of America, which contains multiple designs and a single claim, has the same effect in the United States of America as if such an application was filed directly with the USPTO.
If more than one design is included in an international registration designating the United States of America, the USPTO will examine whether those designs are different embodiments of a single design, which are not patentably distinct from each other. If several patentably distinct designs are included in the international registration, the USPTO will issue a notification of refusal in accordance with Article 13(2) of the 1999 Act, pending compliance with the requirement of unity of design under the laws of the United States of America. The holder of the international registration may file divisional applications with the USPTO for the other designs which are patentably distinct (refer to the USPTO Contact Center (UCC) at http://www.uspto.gov/learning-and-resources/support-centers/uspto-contact-center-ucc), or file new international applications, which contain a designation of the United States, claiming priority from the first international application (within the six-month priority period under the Paris Convention).
Yes. An oath or declaration, by the creator, is mandatory if the United States of America is designated and, if there are several creators, each of them shall sign the oath or declaration.
Annex I to Form DM/1 and the E-Filing interface contain a standard text for an Oath or Declaration. The Oath or Declaration for each creator may be attached as a .pdf file, or be filled in directly on the website during the E-filing process.
The standard USPTO form of an Oath/Declaration of Inventorship can also be found in different languages at the following addresses: http://www.uspto.gov/sites/default/files/forms/aia_oathdecl_guide.pdf and http://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012.
If it is not possible to provide the inventor’s signature in the Oath or Declaration of Inventorship for one or more of the following reasons: the inventor is deceased or legally incapacitated; he refuses to sign the declaration; or he cannot be found or reached after a diligent effort, a Substitute Statement signed by the applicant must accompany the international application in lieu of an Oath/Declaration of Inventorship.
The applicant has to indicate in the international application the “small entity” status or claim the “micro entity” status to obtain a reduction of the individual designation fee. For “small entity” and “micro entity” status guidelines, please refer to the USPTO website by clicking on the hyperlinks provided. Applicants claiming micro entity status must also submit the “micro entity” certification form using Annex IV to form DM/1, which is also made available in the E-filing interface along with the forms PTO/SB/15A or PTO/SB/15B.
The date on which the second part of the individual designation fee must be paid at the latest will be notified through an invitation, Notice of Allowance, issued by the USPTO to the holder and to the International Bureau in respect of each international registration concerned. The second part of the individual designation fee is payable within the time period specified in the Notice of Allowance to either the International Bureau or the USPTO. Upon receipt of the Notice of Allowance, the International Bureau will send a letter to the representative/holder of the international registration requesting the payment of the second part of the individual fee. The letter by the International Bureau indicates two options for the payment of the second part of the fee to be paid either through the International Bureau (no change in the economic status is allowed) or directly with the USPTO (in US dollars).
If the second part of the individual designation fee is not paid in whole within the time period specified in the Notice of Allowance to either the International Bureau or the USPTO, the international registration may be cancelled in respect of the United States of America designation.
If the second part of the individual designation fee is paid within the timeframe specified, the USPTO will send a statement of grant of protection. The protection starts from the date of grant. Provisional protection is provided from the date of publication of the international registration.
No renewal fees are payable in respect of the designation of the United States of America since in accordance with the United States of America legislation, a single 15-year registration term starts from the date of grant of protection and it is covered by the payment of the second part of the individual designation fee.
To benefit of the possibility of the subsequent management of the international registration, such as recording of a change in ownership, the holder must renew the designation of the United States of America although no renewal fees have to be paid.
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