It is recommended that an international application be submitted to the International Bureau through the electronic filing (eHague) interface. It may also be submitted by uploading the relevant official form (DM/1) through Contact Hague. If an international application, governed exclusively by the 1999 Act, has been presented to the International Bureau through an Office, the Office should indicate the date on which it received the international application in the separate box “For use by the Office of indirect filing”. This date is important since it will become, in principle, the date of the international registration (refer to “Date of the international registration”).
All items of form DM/1 are mandatory, unless it is indicated in the relevant field as “optional”. Where an item is mandatory in certain circumstances, for example only for certain designations, it is indicated in the relevant item as “if applicable”. The eHague interface automatically checks the said mandatory and additional mandatory contents of the application. In principle, applications using form DM/1 may be submitted either directly to the International Bureau or via the Office of a Contracting Party (refer to “Channels of communication”).
Annex I to form DM/1 allows the applicant to submit a “Declaration of Inventorship” or, if not possible, a “Substitute Statement in Lieu of a Declaration of Inventorship”, in respect of a designation of the United States of America. This is mandatory if the United States of America is designated. Annex II allows the applicant to submit documentation in support of a declaration concerning exception to lack of novelty in respect of designation of China, Japan or the Republic of Korea. Annex III serves to submit a statement that identifies information known by the applicant to be material to the eligibility for protection of the design concerned. It is only relevant for the designation of the United States of America. Annex IV allows the applicant to support a claim of micro entity status with a micro entity certification in order to benefit from a reduction of the individual designation fee in respect of a designation of the United States of America. Annex V allows the applicant to submit a document in support of a priority claim (priority document) when designating China, Japan or the Republic of Korea.
Sections corresponding to Annexes I, II, III, IV and V are also included in the eHague interface.
The eHague interface has the following advantages:
When a notification concerning an international application filed through the eHague interface is available, the user who filed that international application will receive an email alert at the email address provided when creating their user account. The alert will provide a secure download link to the notification or in some cases a PDF attachment. The International Bureau will also send notifications by regular mail.
Rule 9(1); A.I. Section 401(c)
The following explanations are in line with the structure of the official form for an international application (form DM/1) and refer to the successive items contained in the form. It is understood that these explanations equally apply to the eHague interface.
In the separate box of form DM/1, the applicant may indicate: own reference, number of continuation sheets (if any) and the Annex(es) accompanying the international application (if any).
Where the applicant is a natural person, the name to be indicated is the family (or principal, or last) name and the given (or secondary or first) name(s) of the natural person, as customarily used by that person and in the order in which they are customarily used. Where the applicant is a legal entity, its full official designation must be given. Where the name of the applicant is in characters other than Latin characters, the name must be indicated as a transliteration into Latin characters, following the phonetics of the language of the international application. Where the applicant is a legal entity, the transliteration may be replaced by a translation into the language of the international application.
Rule 7(3)(i); A.I. Section 301
Where there is more than one applicant, the appropriate box should be ticked and the relevant information regarding each of the other applicants should be furnished on a continuation sheet. The eHague interface also allows the indication of several applicants.
Email address
The international application must include the applicant’s email address. The International Bureau will send all electronic communications to this email address unless a representative is appointed or an email address for correspondence for multiple applicants is provided under item 4. Email addresses are recorded in the International Register but are not made available to third parties.
The postal address of the applicant must be given in such a way as to satisfy the standard requirements for prompt postal delivery and should consist, at least, of all the relevant details up to, and including, the house number, if any. In addition, a telephone number may be given.
It is recommended to indicate a telephone number so as to facilitate communication by the International Bureau with the applicant concerning the international application.
Rule 7(3)(ii); A.I. Section 205(1); A.I. Section 301(d)
Although only one entitlement with one Contracting Party is required in order to file an international application, more than one Contracting Party may be indicated for each criterion in item 2. The applicant is required to indicate in item 2 the Contracting Party(ies) in which the applicant has a real andeffective industrial or commercial establishment (if any), as well as the Contracting Party(ies) in which the applicant has a domicile (if any), and also the Contracting Party(ies) of which he is a national (if applicable).
In addition, the applicant is required to indicate the Contracting Party(ies) in which the applicant has habitual residence (if any), provided that such Contracting Party is bound by the 1999 Act. In fact, the possibility of claiming an entitlement through habitual residence is contemplated only by the 1999 Act, and not by the 1960 Act.
If official form DM/1 is used, the full name of the Contracting Party should be indicated. For an electronic application, the official two-letter code for the Contracting Party should be selected from the corresponding dropdown list.
The indications concerning each of the above criteria must all be completed, even if the Contracting Party concerned is the same in each case. If any criterion is not applicable, the applicant should simply write “None”.
Intergovernmental organizations may become party to the 1999 Act. There are currently two such Contracting Parties: the European Union (EU) and the African Intellectual Property Organization (OAPI).
Applicants having a real and effective industrial or commercial establishment, a domicile or a habitual residence, in a Contracting Party that is a member State of an intergovernmental organization that is a Contracting Party, or being a national of a Contracting Party that is a member State of an intergovernmental organization that is a Contracting Party, should indicate both that Contracting Party and that intergovernmental organization. However, where entitlement is derived from a connection with a member State of an intergovernmental organization but which is not itself a Contracting Party, only the name of the intergovernmental organization should be indicated.
It is important for the applicant to indicate possible multiple entitlements in different Contracting Parties, since that applicant would then be in a position to cumulate those multiple entitlements with a view to obtaining protection on a broader geographical scale.
For example, an applicant having the nationality of Contracting Party A, bound exclusively by the 1960 Act and whose domicile is located in Contracting Party B, bound exclusively by the 1999 Act, could, as a result, designate all Contracting Parties bound by the 1960 and/or 1999 Acts.
Where an applicant enjoying a plurality of independent entitlements under the 1960 and 1999 Acts designates a Contracting Party bound by the same Acts, the designation of that Contracting Party will be governed by the 1999 Act, which is the most recent Act (refer to “Determination of which Act is applicable in respect of the designation of a given Contracting Party”).
Under the 1999 Act, the applicant’s Contracting Party is the Contracting Party through which the applicant derives the right to file an international application. If only one Contracting Party bound by the 1999 Act is indicated under item 2, that Contracting Party must also be indicated under item 3. On the other hand, if several Contracting Parties bound by the 1999 Act are indicated under item 2, one of them must be selected as the applicant’s Contracting Party. That Contracting Party must be specified by the applicant in any international application governed exclusively or partly by the 1999 Act (as regards the determination of the applicant’s Contracting Party, refer to “Determination of the applicant's Contracting Party under the 1999 Act”).
99 Article 1(xiv); Rule 7(4)(a)
The indication of the State of origin under the 1960 Act is not required in international applications since such indication does not have any effect on the examination carried out by the International Bureau. It may however be deduced through the indications of the entitlements claimed in the international application form (as regards the determination of the State of origin, refer to “Determination of the State of origin under the 1960 Act”).
Where the name, postal address and email address of a representative have been given in item 5 of the international application form, all communications which are required to be sent by the International Bureau to the applicant are sent to the email address of that representative. Otherwise, all communications are sent to the email address of the applicant, as indicated in item 1 of the application form.
However, if there are multiple applicants and no representative is indicated in item 5 of the application form, one email address must be indicated for correspondence with all applicants. In default of such indication in the application form, the email address of the first person named as applicant in item 1 is treated as the relevant email address for correspondence.
If the applicant wishes to be represented before the International Bureau, the name, postal address and email address of the representative should be given in this part of the form. The information should be sufficient to enable correspondence to reach the representative, and should preferably include a telephone number. For eHague, the International Bureau will confirm receipt of the international application to the email address as provided.
Rules 3 and 7(5)(b); A.I. Section 301
Where the name of the representative is in characters other than Latin characters, the name must be indicated as a transliteration into Latin characters, following the phonetics of the language of the international application. Where the representative is a legal entity, the transliteration may be replaced by a translation into the language of the international application.
A representative may be appointed in an international application by indicating the name, postal address and email address of such representative in this item or in the corresponding section of the eHague interface. Where a representative is appointed, the international application form may be signed either by the applicant or representative in item 19. A power of attorney is not required, but may be submitted with the international application. A power of attorney in PDF format may be uploaded in the eHague interface.
The Hague System does not contain any restriction or requirement as to who may be appointed as representative before the International Bureau (concerning, for example, professional qualification, nationality or residence). It follows that an applicant may appoint a representative residing or carrying on business in a Contracting Party which is not the State of origin or the applicant’s Contracting Party, and it is not even necessary that the representative be residing or carrying on business in a Contracting Party.
The appointment of a representative in the international application empowers the representative to act only before the International Bureau. It may subsequently become necessary to appoint one or more further representatives to act before the Offices of designated Contracting Parties, for example, in the event of a refusal of protection notified by such an Office. In such case, the appointment of a representative is governed by the requirements of the Contracting Party concerned.
The International Bureau records in the International Register the appointment of a representative and any other relevant detail concerning that representative. Email addresses are recorded in the International Register but are not made available to third parties.
The following must be indicated in item 6 of the international application form:
For eHague, the total number of designs and reproductions will be filled in automatically based on the information and reproductions provided. Information in respect of paragraph (c) is not relevant when filing electronically. Furthermore, eHague is unavailable if the application includes specimens of the design(s) instead of reproductions.
If a Contracting Party that has notified a requirement of unity of the design under Article 13(1) is designated under the 1999 Act and this requirement is not satisfied, the designs may nonetheless be filed in the same international application, but the Office concerned may refuse protection pending compliance through a procedure of division of the international registration before that Office (refer to "Procedure following notification of refusal")1.
If more than one design is included in the international application, it is recommended to consult the Guidance on Including Multiple Designs in an International Application in Order to Forestall Possible Refusals, which was established in consultation with the Offices of Contracting Parties that notified a requirement of unity of the design under Article 13(1) of the 1999 Act.
In particular, the National Institute of Industrial Property of Brazil (INPI), the China National Intellectual Property Administration (CNIPA), the Mexican Institute of Industrial Property (IMPI), the Federal Service for Intellectual Property (ROSPATENT), the United States Patent and Trademark Office (USPTO) and the Intellectual Property Office of Viet Nam (IP Viet Nam) are likely to refuse the effects of an international registration pending compliance with the requirement of unity of design under their respective laws.
As specified in the declaration made by Brazil, an international application may contain only one industrial design, which may consist of up to 20 variants, provided they are intended for the same purpose and maintain the same preponderant distinctive characteristics.
As specified in the declaration made by China, an international application may contain only one design, except that two or more similar designs for the same product or two or more designs which are incorporated in products sold or used in sets may be included in one application. In particular, where an international application contains two or more similar designs for the same product, the total number of designs must not exceed 10 and the applicant must indicate one of them as the “main design” (refer to “Item 16: Main or principal design”). Where an international application contains two or more designs which are incorporated in products sold or used in sets, all designs must have the same concept of design.
As specified in the declaration made Mexico, an international application may only contain one design or a group of designs which are interrelated in such a way as to form a single concept.
As specified in the declaration made by the Russian Federation, the designs that are the subject of the same international registration shall meet the requirement of the unity of a single creative concept. This requirement is met where there is:
Furthermore, as specified in the declaration made by the United States of America, only one independent and distinct design may be claimed in a single application. This requirement is met where there is only one design in the international registration, or where the designs in the international registration are patentably indistinct.
Finally, as specified in the declaration made by Viet Nam, only one independent and distinct design may be claimed in a single international application, except that:
The applicant must, by ticking the appropriate box, designate each Contracting Party where protection is sought. If filing electronically, only those Contracting Parties which may be designated appear in the eHague interface. It is mandatory to indicate all Contracting Parties for which protection is sought. No Contracting Parties may be added afterwards.
60 Article 5(2); 99 Article 5(1)(v); Rule 7(3)(vi)
Each designated Contracting Party must be bound by an Act – the 1999 Act and/or the 1960 Act – to which one of the Contracting Parties indicated in item 2 (Entitlement to file) is also bound. A table of Contracting Parties, with an indication of the Act or Acts to which each particular State is party, is annexed to official form DM/1. In the eHague interface, the selection of Contracting Parties that may be designated is determined automatically on the basis of the entitlement to file data provided under item 2.
For example, if an applicant has indicated that he/she has an establishment only in Country A, which is bound exclusively by the 1999 Act, and has not indicated any other entitlements, the applicant may only designate Contracting Parties which are bound by the 1999 Act, whether or not such Contracting Parties are also bound by the 1960 Act. The applicant may not, however, designate Contracting Parties bound exclusively by the 1960 Act.
If, instead, the applicant has indicated that he/she has an establishment in Country A, which is bound by the 1960 Act, and that the applicant also has a domicile in Country B, which is bound by the 1999 Act, the application may cumulatively designate Contracting Parties which are party to either the 1960 Act exclusively, the 1999 Act exclusively, or to both the 1960 Act and the 1999 Act.
A special case of plurality of entitlements arises in respect of States members of an intergovernmental organization that is a Contracting Party, where those States are themselves bound by the 1960 Act. For example, an applicant having the nationality of Contracting Party A, bound exclusively by the 1960 Act, that is a member State of the European Union, could, as a result, designate all Contracting Parties bound by the 1960 or 1999 Acts, as the European Union is a Contracting Party to the 1999 Act.
Where an applicant enjoying a plurality of independent entitlements under the 1960 and 1999 Acts designates a Contracting Party bound by the same Acts, the designation of that Contracting Party will be governed by the 1999 Act (refer to “Determination of which Act is applicable in respect of the designation of a given Contracting Party”).
It is essential that an applicant designates, at the time of filing of the international application, all those Contracting Parties where it is intended to seek protection for a design. If it subsequently becomes necessary to extend protection to additional Contracting Parties, this can only be done by means of filing a new international application.
As a matter of principle, it is possible for an applicant under the Hague System to request protection in the State of origin and in the applicant’s Contracting Party (refer to “Entitlement to file an international application”).
The 1960 Act provides as a principle that an international registration has effect in the State of origin, unless otherwise specified in its national legislation. Given that information concerning such exclusion is not required to be communicated to the Director General of WIPO, the International Bureau does not carry out an examination in that respect.
The 1999 Act expressly provides that any Contracting Party whose Office is an Examining Office may, in a declaration, notify the Director General of WIPO that, where it is the applicant’s Contracting Party, its designation in an international registration has no effect. Where a Contracting Party which has made that declaration is indicated in an international application both as the applicant’s Contracting Party and as a designated Contracting Party, the International Bureau disregards the designation of the Contracting Party in question.
Item 8 provides for a table in which the applicant must indicate what the designs consist of. Such indication must be considered differently, depending upon whether one is concerned with a two-dimensional or a three-dimensional design:
These indications must be given for each design, in numerical order.
60 Article 5(2); 99 Article 5(1)(iv)
Some domestic laws, for example those of Japan and the Republic of Korea, prescribe that the scope of protection of a design be determined by the indication of a product, in addition to the representation of a design. Pursuant to the laws of those Contracting Parties, the indication of a product using a comprehensive term, for example: “material for construction” is not allowed, since, in such a case, the scope of protection would be too broad. Therefore, where an applicant designates those Contracting Parties in the international application, it is recommended that the product be indicated by terms by which the purpose of the product can be clearly understood (for example, “window profile”) in order to avoid receiving refusal upon that ground3.
The applicant may also indicate the (single) class of the Locarno Classification to which those designs belong. In the case of several designs included in the same international application, all those designs must belong to the same class of the Locarno Classification (refer to “Contents of the application”)4.
In addition, in the right-hand side of the table, the sub-class to which the product(s) concerned belong may also be indicated.
The indications relating to the class and sub-class(es) are not compulsory and therefore failure to provide them does not result in an irregularity being raised by the International Bureau. However, if the International Bureau finds that several designs included in the same international application belong to different classes of the Locarno classification, this constitutes an irregularity which will have to be remedied (refer to “Time limit for correcting irregularities”).
As a matter of principle, the description is an optional indication which may be included in any international application. If a description is provided, it should relate to the characteristic visual features of the designs that appear in the reproductions, or describe the type of the reproduction(s) (refer to “Item 10: Legends”). For example, a legend(s) may define a specific view of the product (e.g. “front view”, “top view”, etc.)5 (refer to “Representation of the design” and “Numbering of reproductions and legends”). The description may disclose the operation or possible use of the design as long as this description is not technical. If the description exceeds 100 words, an additional fee of 2 Swiss francs per each word exceeding 100 is payable. If the Russian Federation is designated, ROSPATENT recommends that a brief description of the characteristic features of the design be provided.
Rule 7(5)(a); A.I. Section 405(c)
However, under the 1999 Act, any Contracting Party whose Office is an Examining Office and whose law requires that an application for the grant of protection to a design should contain a description in order for that application to be accorded a filing date may, in a declaration, notify the Director General of WIPO accordingly. China, Romania, the Syrian Arab Republic and Viet Nam have made that declaration. Where such Contracting Party is designated under the 1999 Act, the international application should contain a brief description of the characteristic features of the design (or alternatively - only for the Syrian Arab Republic - a brief description of the reproduction).
Failure to provide the necessary description results in the international application being considered as irregular and may entail the postponement of the date of the international registration (refer to “Irregularities concerning special requirement notified by a Contracting Party or regarding the identity of the creator, description and claim” ). Both the application form (DM/1) and the eHague interface clearly indicate in respect of which Contracting Parties the description is required.
99 Article 5(2)(b)(ii); Rule 7(4)(b)
The description may also serve as a way of disclaiming protection in respect of some characteristics of the designs. Furthermore, matter which is shown in a reproduction but for which protection is not sought may be indicated in the description (and/or by means of dotted or broken lines or coloring in the reproduction (refer to “Disclaimers and matter that does not form part of the claimed design”)). Even if the disclaimed part of the design or the matter other than the design is indicated by those means in the reproductions, it is recommended to explain in the description how they are indicated in the reproductions to avoid any confusion by the Office of the Contracting Party.
In item 10, the corresponding code of a legend (for example, No. 1 for perspective view, No. 2 for front view, etc.) may be indicated. If code No. 00 is indicated, other legends may be indicated (limited to 50 characters). It is recommended that a legend be provided, in particular when designating China, Japan and/or the United States of America.
As a matter of principle, the identity of the creator of the designs is an optional indication which may be included in any international application. However, such indication may be mandatory in some circumstances under the 1960 and/or the 1999 Act.
Under the 1960 Act, the law of a Contracting Party may require such information where it is designated under that Act (without the need to make a corresponding notification to the Director General of WIPO). Therefore, whenever such a Contracting Party is designated under the 1960 Act, the international application should contain the identity of the creator. Failure to provide this indication may lead to a refusal of protection being issued by the Office of the Contracting Party in question. However, given that the requirement to furnish the identity of the creator does not have to be notified to the Director General of WIPO under the 1960 Act, the International Bureau does not carry out an examination in that respect.
Under the 1999 Act, any Contracting Party whose Office is an Examining Office and whose law requires that an application for the grant of protection to a design should contain the identity of the creator in order for that application to be accorded a filing date may, in a declaration, notify the Director General of WIPO accordingly. Romania is the only Contracting Party that has made this declaration. Therefore, if Romania is designated under the 1999 Act, the international application shall contain indications concerning the identity of the creator.
In addition, any Contracting Party to the 1999 Act whose legislation requires an application for the registration of a design to be filed in the name of the creator of the design or requires the furnishing of an oath or declaration of the creator may notify that fact to the Director General of WIPO. Brazil, Finland, Ghana, Hungary, Iceland, Mauritius and Mexico have made such a declaration to the effect that the application be filed in the name of the creator. Therefore, applicants who designate Brazil, Finland, Ghana, Hungary, Iceland, Mauritius and/or Mexico in their international applications shall indicate the identity of the creator, and if the person identified as the creator is different from the applicant, state under this item that the present international application has been assigned by the creator to the applicant (refer to “Special requirements concerning the applicant and the creator” and “Application filed in the name of the creator”). However, both the official form DM/1 and the eHague interface contain an embedded standard statement to that effect so that in practice no specific statement is required when any of these Contracting Parties is designated.
In the case that a Contracting Party having made a declaration requiring the furnishing of an oath or a declaration of the creator is designated in an international application, the international application shall be accompanied by an oath or declaration of the creator and contain indications of the identity of the creator. At present, only the United States of America has made such a declaration. Annex I to form DM/1 (refer to “Annex I: Oath or Declaration of the Creator”) and the eHague interface allows the applicant to submit a declaration of inventorship (or, if not possible, a substitute statement in lieu of a declaration of inventorship) for the designation of the United States of America. It is mandatory content for an international application designating the United States of America.
99 Article 10(2)(b); Rules 7(4)(b), 8(1), (2) and (3)
Finally, the law of a Contracting Party may require that the identity of the creator be indicated. Bulgaria, China, Japan, Republic of Korea, Russian Federation, Serbia, Tajikistan and Türkiye have informed the International Bureau that their respective national laws require that element. Applicants who designate Bulgaria, China, Japan, Republic of Korea, Russian Federation, Serbia, Tajikistan or Türkiye are thus advised to declare the identity of the creator as a matter of course. However, given that this is an optional indication under the international procedure as such the International Bureau will not examine whether this requirement has been complied with or not.
Where the international application contains the designation of the United States of America or Viet Nam, a claim with the wording as specified in the declaration under Article 5(2)(a) of the 1999 Act made by the United States of America or Viet Nam must be contained in the international application (United States of America: "the ornamental design for [indicate an article] as shown and described"; Viet Nam: "Application for overall protection for design(s) as shown and described"). That wording is reproduced in the application form and the eHague interface.
If neither the United States of America nor Viet Nam is designated, a claim may not be included in the international application.
With respect to the designation of the United States of America, it is important to note the relationship between the claimed invention, as defined by the claim (Item 12), and naming each creator (Item 11). Under U.S. national law, the creators, referred to as inventors, of the claimed invention must be named. The claimed invention is also relevant to the oath or declaration of each creator required under Rule 8(1)(a)(ii), because the oath or declaration must include a statement that the person signing the oath or declaration believes that each named inventor is an inventor of a claimed invention in the application. For international applications that contain multiple designs, care should be taken to name and submit an oath or declaration for each creator (inventor) of the claimed design. For example, if the international application contains a design for a ring invented by creator A and a different design for a necklace invented by creator B, but the claimed invention is to “[a]n ornamental design for a ring as shown and described”, then it would not be proper for creator B to execute the Declaration of Inventorship (Annex I), since creator B is not the inventor of a claimed invention. Accordingly, the article indicated in the claim should be chosen to ensure consistency with the naming of the creators and proper execution of the oath or declaration of the creator required under Rule 8(1)(a)(ii), and to cover all embodiments applicant intends to claim protection for in the United States of America.
Priority of an earlier filing may be claimed under Article 4 of the Paris Convention. Priority may be claimed on the basis of a first filing made in one of the States party to the Paris Convention or any member of the World Trade Organization.
60 Article 5(2); 99 Article 6(1)(a)
Moreover, since an international application for registration of designs may be a first application under the Hague System, it may itself also serve as a basis for claiming priority with regard to a subsequent national, regional or international application.
A priority claim should be indicated in item 13. The priority claim may be to a single earlier filing or to multiple earlier filings.
Where priority is claimed, the name of the Office with which the earlier filing was made or the country in which it was filed, the number of the earlier filing (if available), and the date of the earlier filing (in the order of day, month and year) must be indicated. A priority claim to an earlier filed international application for registration of designs should indicate the International Bureau as the Office of earlier filing and identify the number of the earlier filing by the application number (nine-digit number where the application was filed using form DM/1 or in the case of indirect filings, or “WIPO” + number where the application was filed using eHague) assigned by the International Bureau6. Where priority is claimed from more than one earlier filing and all the relevant details cannot be accommodated in the space provided, those with the earliest date should be provided under item 13 and all other details should be set out on a continuation sheet (unless a self-generated form is used).
Furthermore, if the Office of the earlier filing participates in the WIPO Digital Access Service (DAS) as a “depositing Office” with respect to priority documents for design applications, an access code (DAS code) may be obtained from that Office and indicated under item 13, as explained below.
Where the earlier filing does not relate to all the designs included in the international application, the applicant should specify those designs for which priority is claimed by referencing the numbers of the designs in question. If nothing else is specified in this part of item 13, it will be assumed by the International Bureau that the priority claim relates to all the designs.
The International Bureau disregards any claimed priority which bears a date which is more than six months earlier than the filing date of the international application, and so informs the applicant.
A priority document is a certified copy of an earlier application, which is obtained from the Office with which the earlier application was filed.
The International Bureau does not require a priority document, where the applicant claims the priority of an earlier application. Therefore, a priority document should not be submitted with the international application. Similarly, subsequent submission of a priority document to the International Bureau is not accepted. A priority document submitted to the International Bureau will be disposed of, with the exception of the submission of priority documents using Annex V (or corresponding section in the eHague interface) for the designation of China, Japan or the Republic of Korea, as explained below.
This does not, however, preclude the Office of a designated Contracting Party from requesting that the holder furnish a priority document to it directly. Such a request could, for example, be made in the context of a refusal, where the Office takes the view that the priority document is necessary in order to establish novelty, because of disclosure of a competing design during the period covered by the priority claim.
Notwithstanding the general principles above, if the applicant claims priority of an earlier filing, several Contracting Parties have indicated that, under their national laws, a priority document must, without exception, be furnished to their Offices in order to support the priority claims.
If China, Japan or the Republic of Korea is designated, and a priority claim is indicated in item 13, the applicant may tick the appropriate box in item 13 and submit a copy of a priority document with the international application, either through the eHague interface, or by using Annex V to form DM/1. The submission of a copy of a priority document in this manner is only possible at the time of filing the international application and only to support the priority claim for a designation of China, Japan and/or the Republic of Korea. The copy of a priority document so received by the International Bureau will be electronically distributed to the China National Intellectual Property Administration (CNIPA), the Japan Patent Office (JPO) and/or the Korean Intellectual Property Office (KIPO). Instead, if the Office of the earlier filing participates in the WIPO Digital Access Service (DAS) as a “depositing Office” with respect to priority documents for design applications, an access code (DAS code) may be obtained from that Office and indicated under item 13, as the CNIPA, JPO and KIPO participate in DAS as an “accessing Office” with respect to priority documents for design applications. If the copy of a priority document was submitted using Annex V or a DAS code was indicated in item 13, the priority document does not need to be furnished to the CNIPA, JPO or KIPO.
If China, Japan or the Republic of Korea is designated but neither a copy of a priority document is submitted using Annex V nor a DAS code is indicated in item 13, the priority document must be submitted directly to the Office concerned within three months from the date of publication of the international registration in the I.D.B., failing which the right of priority will be lost and, as a result, their Offices may refuse the international registration. If Japan or the Republic of Korea is designated, and the holder resides outside the country concerned, the priority document must be submitted through a local representative.
Similarly, Mexico requires the submission of a priority document if priority is claimed in an international application in which Mexico is designated. Therefore, if Mexico is designated, the priority document must be submitted directly to the Mexican Institute of Industrial Property (IMPI) within three months from the date of publication of the international registration in the I.D.B. Furthermore, the proof of payment of the fee for a recognition of the priority claim as well as a Spanish translation, when the priority document is in a different language, must be submitted to IMPI within the said period. The holder of the international registration or his/her representative residing outside the country may file the priority document directly with IMPI and, in that case, must provide a postal address in Mexico for receiving notifications. When the priority document is submitted through a representative, that representative must establish his/her identity in accordance with the law of Mexico. IMPI participates in WIPO DAS as an “accessing Office” with respect to priority documents for design applications. However, the submission of the proof of payment of a priority claim fee to IMPI is required, as well as a Spanish translation when the priority document is in a different language, even if a DAS code is indicated in item 13.
With respect to China, Japan, Mexico and the Republic of Korea, it is important to note that, pursuant to their national legislations, the international registration may be refused on the ground of lack of novelty if the first filing on which the priority is based was published prior to the date of the international registration (which in most cases is the same as the filing date of the international application), and no priority document was submitted in the aforementioned applicable means.
Brazil and the United States of America also require the submission of a priority document if priority is claimed in an international application in which they are designated. Both the National Institute of Industrial Property of Brazil (INPI) and the United States Patent and Trademark Office (USPTO) participate in WIPO DAS as an “accessing Office” with respect to priority documents for design applications. Thus, if the Office of the earlier filing participates in WIPO DAS as a “depositing Office”, a DAS code may be indicated under item 13, in which case the priority document does not need to be furnished to those Offices.
However, in the case of the designation of Brazil, if no DAS code is indicated in item 13, the priority document must be submitted directly to INPI within 90 days from the date of publication of the international registration in the I.D.B, which requires the payment of a priority claim fee. Furthermore, the priority document must be accompanied by a Portuguese translation, if it is in a different language, and a declaration that the content of the international application is faithfully contained in the priority document. If the holder resides outside the country, the priority document must be submitted to INPI through a local representative.
In the case of the designation of the United States of America, if no DAS code is indicated in item 13, the priority document must be submitted during the pendency of the application for a design patent before the USPTO (i.e., prior to the issuance of the patent or abandonment, as the case may be) and, furthermore, should be submitted on or before the date of the payment of the issue fee (second part of the individual designation fee for the United States of America). If the priority document is submitted after the date of payment of the second part of the individual designation fee, the patent will not include the priority claim unless corrected in accordance with United States law (refer to 37 CFR 1.55). The submission of the priority document should be accompanied by a cover letter identifying the international registration to which the priority document is directed. Such a letter must be signed either by a patent practitioner registered to practice before the USPTO or by the applicant, provided that the applicant is not a juridical entity.
Furthermore, if the Russian Federation or Türkiye are designated, the priority document must be submitted directly to the Federal Service for Intellectual Property (ROSPATENT)and/or the Turkish Patent and Trademark Office (TURKPATENT), in support of a priority claim, within three months from the date of publication of the international registration in the I.D.B. If the priority document is not submitted within the above‑mentioned three-month period, the priority claim will be disregarded. In respect of Russia, the submission of the priority document should be accompanied by a cover letter identifying the international registration to which it is directed; the priority document does not need to be submitted to ROSPATENT by a local patent attorney. In respect of Türkiye, the priority document must be accompanied by a Turkish translation if the priority document is in a different language, and, if the holder resides outside the country, the priority document must be submitted to TURKPATENT through a local representative.
The WIPO Digital Access Service (DAS) is an electronic system allowing priority documents to be securely exchanged between participating IP Offices. If the Office of the earlier filing participates in DAS as a “depositing Office” with respect to priority documents for design applications, an access code may be obtained from that Office. If the Office of a designated Contracting Party participates in DAS as an “accessing Office” with respect to priority documents for design applications, the applicant may provide the access code under this item so that the latter Office is able to access the priority documents via DAS. For more information about DAS and its participating Offices, refer to the WIPO website.
Under the national law of China, where the name of the applicant in the priority document is not identical to the name of the holder of the international registration, the latter must submit the related certifying documents to the China National Intellectual Property Administration (CNIPA) within three months from the date of publication of the international registration in the I.D.B.
Under the national law of Israel, where an applicant claims the priority of an earlier application, the applicant cannot benefit from a reduced individual designation fee.
Temporary protection of designs exhibited at certain exhibitions may be claimed under Article 11 of the Paris Convention. If it is intended to claim exhibition priority in the international application, the applicant should provide all relevant information in item 14 of the international application form.
The application form must indicate where the exhibition took place, the date on which the product was first exhibited and the number of each design shown at the exhibition.
Where the claim does not relate to all the designs included in the international application, then the applicant should indicate those designs for which exhibition priority is claimed. If no design is indicated, it is assumed by the International Bureau that all the designs were shown at the exhibition in question.
Item 15 allows the applicant to make a declaration concerning an exception to lack of novelty in respect of a designation of China, Japan or the Republic of Korea. The applicant is required to indicate the design(s) for which exceptional treatment provided for in the design law of the Contracting Party(ies) concerned, is claimed.
The supporting documentation must be submitted, either along with the international application using Annex II, or directly to the China National Intellectual Property Administration (CNIPA), the Japan Patent Office (JPO) and/or the Korean Intellectual Property Office (KIPO). Any documentation received by the International Bureau as part of the application will be electronically distributed to the CNIPA, JPO and/or KIPO.
The holder submitting the supporting documentation directly to the CNIPA, JPO or KIPO should do so within the respective time period, through a local representative if the holder resides outside of the country. With respect to the designation of China, the CNIPA requires that the supporting documentation be submitted to it directly within 2 months from the date of publication of the international registration in the I.D.B. With respect to the designation of Japan, the JPO requires that the supporting documentation be submitted to it directly within 30 days from the date of publication of the international registration in the I.D.B. With respect to the designation of the Republic of Korea, the supporting documentation should be submitted directly to KIPO either within 30 days from the date of publication of the international registration in the I.D.B., or during the pendency of the application for registration before KIPO (i.e. before a statement of grant of protection is issued or a refusal becomes final).
It should be noted that a declaration concerning exception to lack of novelty might affect the applicant’s rights in other jurisdictions. It is the responsibility of the applicant to ensure that his/her rights are preserved.
Item 16 is applicable for the designation of China, Japan and the Republic of Korea only (refer to “Optional contents”).
China: Main design
The national law of China contains a requirement of unity of design (refer to “Item 6: Number of Designs, Reproductions and/or Specimens”). As specified in the declaration made by China, an international application may contain only one design, except that two or more similar designs for the same product or two or more designs which are incorporated in products sold or used in sets may be included in one application.
Furthermore, if the application contains two or more similar designs for the same product, the total number of the designs cannot exceed 10, and the applicant must indicate one of them as the “main design” which is similar to all the others.
Examination as to whether designs are similar to the main design or not will be conducted by the China National Intellectual Property Administration (CNIPA). In the event of a notification of refusal of the effects of the international registration issued by CNIPA on the ground of lack of unity of design, the holder of the international registration may, in his/her reply to CNIPA, overcome the refusal ground by amending the international registration for the sake of the designation of China.
In addition, it is recommended to consult the Guidance on Including Multiple Designs in an International Application in Order to Forestall Possible Refusals, which was established in consultation with the Offices of Contracting Parties which have made a declaration concerning unity of design.
Japan and/or the Republic of Korea: Principal and related designs
The national laws of Japan and the Republic of Korea provide for related design systems. Under the related design systems of those countries, a design may be registered as a related design which is similar to another design identified as a principal design, under the condition that both designs belong to the same applicant/holder. Failure to do so may lead to a refusal by the Office concerned on the ground of conflict with a prior similar design.
Accordingly, in order to forestall a possible refusal, the applicant may indicate that some or all of the designs contained in the international application are to be considered in relation to a principal design that
Furthermore, where the principal design is not the subject of the same international application, the international application containing the design(s) which is(are) requested to be registered as related design(s) has to be filed within the prescribed periods: under the national law of Japan, before the lapse of 10 years from the date of the national or international registration containing the fundamental design or, where priority is claimed from the priority date of the application concerned (the first selected principal design is the fundamental design of all subsequent related designs), and under the national law of the Republic of Korea, within one year from the filing date of the national or international application containing the principal design.
Examination as to whether or not a design may be registered as a related design will be conducted by the Japan Patent Office (JPO) and Korean Intellectual Property Office (KIPO), respectively. In the event of a notification of refusal of the effects of the international registration issued by the Office on the ground of missing/erroneous indication of the principal design, the holder of the international registration may, in his/her reply to the Office, request the addition or deletion of the indication of the principal design so as to overcome such a refusal ground.
Detailed information on the related design system is available on the JPO website (in English) and on the KIPO website (in English).
In addition, it is recommended to consult the Guidance on Including Multiple Designs in an International Application in Order to Forestall Possible Refusals, which was established in consultation with the Offices of Contracting Parties, which have a “related design system”.
Standard publication
Default publication takes place 12 months after the date of the international registration (“standard publication period”), unless the applicant requests otherwise (refer to “Timing of publication”).
There are two exceptions, namely, where the applicant requests immediate publication or publication at a chosen time.
The applicant may request immediate publication by ticking the appropriate box in item 17. Immediate publication can be an advantage if, for instance, under national or regional laws the rights emanating from registration are only enforceable once published. Note that the notion of “immediate” publication must allow for the time required by the International Bureau to carry out relevant technical preparations.
The applicant may request publication at a chosen time by ticking the appropriate box in item 17 and indicating the chosen time for publication (specified in months from the filing date).
The applicant may always request publication at a time earlier than the standard publication period of 12 months.
The applicant may request to defer publication beyond the standard publication period, whereby the possible maximum deferment period depends on the Contracting Parties designated in the international application.
For more information on the duration of deferment beyond the standard publication period, refer to “Periods of deferment”. Both the application form (DM/1) and the eHague interface clearly indicate the periods of deferment which may be requested in respect of certain Contracting Parties.
Israel, Mexico and the United States of America have made the declaration referred to in Article 7(2) of the 1999 Act that, in connection with an international application in which they are designated, the prescribed designation fee shall be replaced by an individual designation fee.
Israel, Mexico and the United States of America are the only Contracting Parties that provide for a reduction of the individual designation fee for certain applicants.
The declaration made by Israel has specified a reduced amount for an applicant who qualifies as:
The fee reduction does not apply if the international application contains a priority claim. To benefit from a reduction of the individual designation fee in respect of Israel, the applicant must check the relevant box.
The declaration made by Mexico has specified a reduced amount for an applicant who is:
To benefit from a reduction of the individual designation fee in respect of Mexico, the application must check the relevant box.
The declaration made by Mexico also specified, in accordance with Rule 12(3) of the Common Regulations, that the individual designation fee comprises two parts.
The declaration made by the United States of America has specified reduced amounts for applicants who qualify:
To benefit from a reduction of the individual designation fee in respect of the United States of America, the applicant may assert small entity status by checking the appropriate box. If the applicant checks the box for micro entity, the applicant has to submit the micro entity certification form PTO/SB/15A or PTO/SB/15B (available using Annex IV: Reduction of United States individual designation fee).
The declaration made by the United States of America also specified, in accordance with Rule 12(3) of the Common Regulations, that the individual designation fee comprises two parts.
The international application form may be signed by the applicant or his representative (or by an Office when the international application has been presented to the International Bureau through that Office). In either case, the name of the signatory should be indicated separately. It is recommended to use text string signatures (e.g. /John Doe/). Signatures may be handwritten, printed, stamped, typed or in another electronic form (image, digital or computer generated).
For eHague, a signature is replaced by an electronic authentication through a user account which requires the account holder’s user name and password.
The following paragraphs should be read in conjunction with the general remarks contained in “Payment of fees to the International Bureau” concerning fees.
On the fee payment sheet which precedes the Fee Calculations Sheet and forms part of the international application form, it is possible to indicate the following:
When using the eHague interface, the fees may be paid to the International Bureau through an online payment system offering a range of payment methods according to the user account profile.
For more information on the payment system under the Hague System, refer to the WIPO website.
The fees payable in connection with an international application consist of:
These fees are payable at the time of filing the international application, except for
For more information, refer to “Payment of fees”.
For international applications filed by applicants whose sole entitlement is a connection with a Least Developed Country (LDC), in accordance with the list established by the United Nations, or with an intergovernmental organization the majority of whose member States are LDCs, the fees intended for the International Bureau are reduced to 10% of the prescribed amounts (rounded to the nearest full figure). The reduction also applies in respect of an international application filed by an applicant whose entitlement is not solely a connection with such an intergovernmental organization, provided that any other entitlement of the applicant is a connection with a Contracting Party which is an LDC or, if not an LDC, is a member State of that intergovernmental organization and the international application is governed exclusively by the 1999 Act. If there are several applicants, each must fulfill the said criteria.
The reduction to 10% of the regular amount of the fee also applies to the standard designation fees under the same conditions.
The Assembly of the Hague Union adopted, at its twenty-sixth (10th extraordinary) session, the following recommendation concerning individual fees:
“Contracting Parties that make, or that have made, a declaration under Article 7(2) of the 1999 Act or under Rule 36(1) of the Common Regulations are encouraged to indicate, in that declaration or in a new declaration, that for international applications filed by applicants whose sole entitlement is a connection with a Least Developed Country, in accordance with the list established by the United Nations, or with an intergovernmental organization the majority of whose member States are Least Developed Countries, the individual fee payable with respect to their designation is reduced to 10% of the fixed amount (rounded, where appropriate, to the nearest full figure). Those Contracting Parties are further encouraged to indicate that the reduction also applies in respect of an international application filed by an applicant whose entitlement is not solely a connection with such an intergovernmental organization, provided that any other entitlement of the applicant is a connection with a Contracting Party which is a Least Developed Country or, if not a Least Developed Country, is a member State of that intergovernmental organization and the international application is governed exclusively by the 1999 Act.”
The declarations under Article 7(2) of the 1999 Act made by Mexico and the United States of America concerning the application of an individual designation fee specified, in accordance with Rule 12(3) of the Common Regulations, that the individual designation fee comprises two parts. The declarations also specified reduced amounts of the first part and of the second part of the individual designation fee for certain applicants.
The first part of the individual designation fee is to be paid at the time of the international application.
The second part will become payable only if the Mexican Institute of Industrial Property (IMPI) or the United States Patent and Trademark Office (USPTO) is satisfied that the design that is the subject of the international registration qualifies for protection, i.e., if the design is allowed. Therefore, the payment of the second part will, if applicable, be required at a later date.
The date by which the second part of the individual designation fee must be paid will be notified through an invitation. IMPI will issue a Notice of Allowance and Invitation for Payment (Notice of Allowance) which will be sent to the holder through the International Bureau in respect of each concerned international registration. The USPTO will issue a Notice of Allowance and Fee(s) Due (Notice of Allowance), issued by the USPTO both directly to the holder, using the address for correspondence established before it, and through the International Bureau.
The Notice of Allowance from IMPI sets forth detailed information concerning the payment of the fee and the status of the holder. The Notice of Allowance from USPTO sets forth detailed information concerning the payment of the fee, the current economic status, and how to change the economic status.
Furthermore, the International Bureau will send a letter to the representative of the holder of the international registration or, if no representative was appointed before the International Bureau, to the holder of the international registration, giving instructions on the payment of the second part of the individual designation fee and indicating the date by which the second part of the individual designation fee must be paid.
Upon receipt of the Notice of Allowance, the holder may pay the fee either directly to the Office concerned, to IMPI in Mexican pesos, or to the USPTO, in United States dollars, or through the International Bureau, in Swiss francs. The International Bureau only accepts the payment in full corresponding to the holder's status indicated in the Notice of Allowance issued by the Office concerned (IMPI or USPTO). Accordingly, if the status of the holder has changed after the Notice of Allowance has been issued, the fee should be paid directly to the Office concerned (IMPI or USPTO).
Where the payment is made through the International Bureau, the International Bureau will record the payment in the International Register and notify the Office concerned (IMPI or USPTO) accordingly. No confirmation of payment will be sent to the representative/holder.
The International Bureau will not accept a late payment. Where the second part of the individual designation fee is paid through the International Bureau, the date of the payment will be the date on which the International Bureau receives the required amount, in accordance with Rule 27(5)(a) of the Common Regulations. Thus, for instance, in case of payment through a bank or postal transfer, the date of payment is the date on which the required amount is received in the WIPO bank or postal account. If the payment is late, all fees paid will be refunded.
If the second part of the individual designation fee is not paid in full within the time period specified in the Notice of Allowance to either the International Bureau or the Office concerned (IMPI or USPTO), the Office may request the cancellation of the international registration with respect to the designation of Mexico or the United States of America respectively, in accordance with Rule 12(3)(d) of the Common Regulations. The International Bureau shall then cancel the international registration in the International Register with respect to the designation of Mexico and the United States of America, respectively, and communicate the cancellation to the representative of the holder of the international registration or, if no representative was appointed before the International Bureau, to the holder of the international registration. The cancellation will be published in the I.D.B.
Finally, it shall be noted that Rule 5 does not apply to the payment of the second part of the individual designation fee through the International Bureau (refer to “Excuse of delay in meeting time limits”).
99 Article 7(2); Rule 5(1); Rules 12(3)(c) and (d); Rule 18bis(1)(a) and (2); Rule 26(1)(viii); Rule 27(5)(a)
The amounts of the basic fee, the standard designation fee and the publication fee are set out in the Schedule of Fees comprised in the Common Regulations. With regard to individual fees, users should refer to “Individual Fees under the Hague Agreement” where details of individual fees are published and updated.
In addition, a fee calculator is available which takes into account all the possible fee permutations, depending upon the particular Contracting Parties designated in any given international application, the number of designs, etc.
As far as eHague is concerned, the fee calculator automatically calculates and indicates the fees to be paid, based on the data entered by the applicant.
Annex I is mandatory content for an international application designating the United States of America and, if the application form is used, it must be submitted with form DM/1. It cannot be submitted alone. Annex I is also available in the eHague interface, which automatically verifies that the mandatory contents for the designation of the United States of America in an international application are complied with and alerts the applicant accordingly. Annex I is applicable for the designation of the United States of America only.
Annex I enables the submission of an oath or declaration of the creator pursuant to Rule 8(1)(a)(ii) or, in the impossibility to provide such a declaration, for example, where the inventor is deceased, a Substitute Statement in Lieu of a Declaration of Inventorship.
Pursuant to 37 CFR 1.63 and 37 CFR 1.64 (law of the United States of America), the oath or declaration and the substitute statement must be "signed". Signature requirements for documents are set forth in 37 CFR 1.4. Accordingly, the inventor or the person executing the substitute statement may apply a text string signature in between two forward slashes as follows: / Inventor Name /, or a handwritten signature. In the case of several creators, the declaration has to be signed by each of them. In particular, the “inventor” must be the same as the “creator” indicated under item 11 of form DM/1 or in the relevant sector of the eHague interface.
For detailed information on the inventor’s oath or declaration, please visit the USPTO website.
Annex II is optional content of the international application, which can be submitted with form DM/1. This Annex cannot be submitted alone to the International Bureau. Annex II is applicable for the designation of China, Japan or the Republic of Korea only (refer to “Optional contents”). Annex II is also available in the eHague interface.
The applicant may make a declaration as provided for in item 15 concerning exception to lack of novelty. If this declaration is made, the international application may be accompanied by supporting documentation. The supporting documentation must be attached to Annex II, its page numbers being properly referenced. Any documentation received by the International Bureau will be electronically distributed to the CNIPA, JPO and/or KIPO.
The applicant is not obliged to submit supporting documentation at the time of filing the international application. However, if the international application is not accompanied by its supporting documentation, the latter must be submitted directly to the Office of the Contracting Party concerned, subject to the national requirements. It cannot be submitted later to the International Bureau (refer to “Item 15: Exception to lack of novelty”).
Annex III is optional and serves to submit a statement that identifies information known by the applicant to be material to the eligibility for protection of the design concerned. This Annex must be submitted with form DM/1. It cannot be submitted alone. Annex III is also available in the eHagueinterface.
Rule 7(5)(g); A.I. Section 408(d)
Annex III is only relevant for the designation of the United States of America and serves to submit an Information Disclosure Statement and relevant accompanying documentation as prescribed under the national law of the United States of America. The purpose of a “duty of candor” under the law of the United States of America is to assist the examination process by the USPTO obliging applicants to disclose any information they know of, which could consequently prevent them from acquiring a valid right.
In this context, it is recalled that Rule 6 of the Common Regulations does not exclude the submission of documentation accompanying the international application in a working language other than that of the international application (refer to “Languages”). Thus, to the extent that Annex III can be submitted only in respect of a designation of the United States of America, it is recommended that applicants submit their documentation in English.
The Information Disclosure Statement forms (SB08a/SB08b/SB08a-EFS-web) are available on the USPTO website. These forms may be submitted to the USPTO also after the filing of the international application.
For detailed information on the Information Disclosure Statement, please visit the USPTO website.
Optional Annex IV allows the applicant to support a claim of micro entity status (item 18) with a micro entity certification in order to benefit from a reduction of the individual designation fee in respect of the United States of America. This Annex must be submitted with form DM/1. It cannot be submitted alone. Annex IV is also available in the eHague interface.
The requirements to qualify for a reduction for micro entity status are set forth in 37 CFR 1.29 (law of the United States of America) and detailed in Section 509.04 of the Manual of Patent Examining Procedure.
Annex IV is mandatory content if the applicant claims “micro entity status” in item 18 of form DM/1. The eHague interface automatically alerts the applicant to attach the micro entity certification, completed and signed, to the international application in which the United States of America is designated and micro entity status is claimed.
The certification form (PTO/SB/15A or PTO/SB/15B), along with the instructions for its completion and signature, is available on the USPTO website.
Annex V is optional and can be used to submit a document in support of a priority claim (priority document) when designating China, Japan or the Republic of Korea. Note: this Annex cannot be submitted independently to the International Bureau. Any priority document received by the International Bureau will be electronically distributed to the Office of the designated Contracting Party concerned. For more information, refer to “Optional contents”.
Alternatively, a priority document may be submitted directly to the CNIPA, JPO and/or KIPO, within three months of the date of publication of the international registration in the International Designs Bulletin. If the holder resides outside the country, must be submitted through a local representative. The right of priority will be lost if thepriority document is not submitted within this deadline.