Centralized publication of an international registration having effect in all the designated Contracting Parties is one of the fundamental features of the international registration system. International registrations are published by the International Bureau in the International Designs Bulletin and such publication is deemed, in all Contracting Parties, to be sufficient publication and to take the place of any national or regional publication, so that no other publication may be required of the holder.
Nevertheless, a Contracting Party is not precluded from republishing the international registration, in whole or in part, if it so wishes (for example, in order to translate into its national language the particulars contained in the international registration). However, in such a case, the republication may not create for the holder an obligation to furnish further reproductions of the design or an obligation to pay an additional fee to the Office of that Contracting Party.
Publication of the International Designs Bulletin takes place on the WIPO website. In addition to the relevant data concerning international registrations, the Bulletin also contains data relating to refusals, invalidations, changes in ownership and mergers, other changes, corrections, renewals, cancellations, and declarations that a change in ownership has no effect and withdrawals of such declarations. Furthermore, the International Bureau publishes any declaration made by a Contracting Party under the Acts or the Common Regulations on the WIPO website.
If so requested by the Office of a Contracting Party, the International Bureau communicates to the Office the date on which each issue of the Bulletin is made available on the WIPO website. Such communication is made electronically – by email – on the same day as the Bulletin is to appear on the WIPO website. The publication by the International Bureau of each issue of the Bulletin on the WIPO website is deemed to replace the “sending” of the Bulletin referred to in the 1999 and the 1960 Acts and will constitute, at the same time, the date of receipt of the Bulletin by the Offices of the designated Contracting Parties.
The publication of the international registration in the Bulletin contains the following:
The publication cycle of the Bulletin can be broken down into two components: the frequency of publication and the time lag needed for the preparation of the Bulletin. The frequency of publication is the number of times the Bulletin is issued in a given year. The time lag is linked to the preparation work for the Bulletin and refers to the number of days that elapse between the last recording day considered for the insertion of data in a given issue of the Bulletin and actual date of publication of that issue.
Since January 1, 2012, the Bulletin is published on a weekly basis. In addition, the time required to prepare each issue of the Bulletin has also been shortened to one week.
The general rule is that an international registration is published six months after the date of the international registration (refer to “Publication of the international registration”).
There are two exceptions to the general rule that an international registration is published six months after the date of international registration.
Firstly, an applicant may request that an international registration be published immediately.
The reference to “immediately after the registration” should, however, be taken with some reservation. In effect, where immediate publication is requested, “immediately” should be read as meaning that the publication will take place as soon as the necessary technical preparations have been carried out after the registration of the industrial design, thus, in any event, involving the elapsing of a certain amount of time. For instance, taking into account the shortening of the publication cycle of the Bulletin and of the time lag (refer to “Publication cycle”), international registrations programmed for immediate publication and recorded in the International Register during the first week of May will be published in the issue of the Bulletin released at the end of the second week of May; those recorded in the International Register during the last week of May will be published in the issue of the Bulletin released at the end of the first week of June.
The second exception to the general six-month period concerns those international registrations for which a deferment of publication has been requested. In such case, publication of the international registration takes place immediately after the date on which the period of deferment expired, or is considered to have expired.
In the case of deferment of publication, the payment of the publication fee is not required to be made at the time of filing. In addition, in the case of international applications governed exclusively by the 1999 Act, the submitting of reproductions may be provisionally replaced by specimens, provided that the industrial design is two-dimensional. The rationale for permitting the furnishing of specimens instead of reproductions is the relieving of applicants of the higher costs of producing quality reproductions where, having requested deferment of publication, they may eventually decide not to proceed with publication (and protection) of the design. The payment of the publication fee and the submission of reproductions are, however, preconditions to the publication of the international registration. The former must take place not later than three weeks before the period of deferment expires, and the latter must take place not later than three months before the expiry of the period for paying the publication fee.
The obligation to furnish the publication fee not later than three weeks prior to the expiry of the period of deferment applies also in the situation where the period of deferment is “considered to have expired”. This relates to the situation under Article 11(4)(a) of the 1999 Act and Article 6(4)(b) of the 1960 Act where an applicant requests earlier publication than that already indicated in the request for deferment.
Three months before the expiry of the period of deferment of publication, the International Bureau sends an unofficial reminder notice to the holder of the international registration as well as to the holder’s representative (if any), indicating the date by which the publication fee must be paid. If, however, the holder (or representative) does not receive such unofficial notice, this does not constitute an excuse for failure to comply with any time limit for payment of the publication fee due.
The reproductions submitted earlier than three months before the expiry of the period for paying the publication shall be recorded in the International Register, provided that those reproductions comply with the requirements under Rule 9(1) and (2).
Failure to pay the publication fee earlier than three weeks before the expiry of the period of deferment or failure to submit the reproductions earlier than three months before the expiry of the period for paying the publication fee results in the cancellation of the international registration. Cancellation will be total in case of missing fees but only partial in case of missing reproductions. The cancelled international registration is not published.
The conditions which regulate the applicable period of deferment in any given situation depend upon the laws of the various national or regional systems of the Contracting Parties designated in the international application, including the case of Contracting Parties which do not permit deferred publication at all.
For Contracting Parties designated under the 1960 Act, the maximum period of deferment is 12 months from the filing date or, where priority is claimed, from the priority date of the application concerned.
Under the 1999 Act, the general principle is that each Contracting Party is assumed to permit the prescribed period of deferment of 30 months from the filing date or, where priority is claimed, from the priority date of the application concerned, unless it has notified, in a declaration to the Director General of WIPO, that it authorizes only a shorter period – or that it does not authorize deferment at all (refer to “Deferred publication for a period which is less than the prescribed period” and “No deferment of publication”).
It follows that where an international application governed exclusively by the 1999 Act (i.e., in respect of which all the designated Contracting Parties have been designated under the 1999 Act) contains a request for deferment of publication, such deferment may in principle be requested for a period up to 30 months from the filing date, or where priority is claimed, from the priority date. However:
Where an international application is governed exclusively or partly by the 1960 Act (i.e., in respect of which at least one Contracting Party has been designated under the 1960 Act), deferment of publication cannot exceed 12 months from the filing date, or where priority is claimed, from the priority date of the application concerned. In other words, the designation of a Contracting Party under the 1960 Act can be considered as equivalent to the designation of a Contracting Party which has made a declaration for a deferment period of a maximum of 12 months.
The deferment period is computed from the filing date of the international application, or from the claimed priority date, if any. During the period of deferment of publication, the following actions may be initiated by the holder with regard to the international registration:
The holder may request earlier publication – i.e., publication prior to the expiry of the deferment period already requested – in respect of any or all of the designs contained in the international registration. The deferment period is then considered to have expired on the date on which the request for earlier publication has been received by the International Bureau.
It is a general principle that international applications and international registrations are kept secret by the International Bureau until publication. This principle of confidentiality also applies to any document accompanying the international application. However, there may be situations where the holder may wish no longer to preserve such confidentiality, for example, in order to assert his rights before a jurisdiction or third parties. Therefore, the holder may request the International Bureau to provide an extract of the international registration to a third party he has designated, or to authorize access to the international registration by a third party.
The holder may renounce the international registration in respect of all the designated Contracting Parties. In such case, the industrial design or designs that are the subject of the international registration will not be published. The holder may also limit the international registration, for all the designated Contracting Parties, in respect of some only of the industrial designs that are the subject of the international registration. In such case, only the industrial designs that are not affected by the limitation will be published.
Where the publication of an international registration is deferred, a request for the recording of a limitation or renunciation concerning that registration, complying with the applicable requirements (refer to “Renunciation” and “Limitation”), must be received by the International Bureau not later than three weeks prior to the expiry of the period of deferment. In default of this, the international registration is published at the expiration of the period of deferment without account being taken of the request for the recording of a limitation or renunciation. Provided that the request for limitation or renunciation complies with the applicable requirements, the limitation or renunciation is nevertheless recorded in the International Register.
As a general principle, the International Bureau keeps in confidence each international application and each international registration until publication in the Bulletin (refer to “Publication of the international registration”).
However, when publication has been deferred, Examining Offices are faced with the situation in which they need to examine applications without knowing whether an international registration whose publication has been deferred is included in the prior art. In order to resolve this problem, immediately after registration has been completed, the International Bureau must send, by electronic means agreed upon between the International Bureau and the Office concerned, a copy of the international registration, along with any documentation accompanying the international application, to each Office that has notified the International Bureau that it wishes to receive such a copy and has been designated in an international application.
In such a case, the Office is required to maintain the confidentiality of the international registration until publication, and may use the documentation sent to it only for the purpose of the examination of other applications. It may not divulge the contents of the international registration to any persons outside the Office, except for the purposes of administrative or legal proceedings involving a conflict over entitlement to file the international application on which the international registration is based.
If an Examining Office concludes that an application concerns a design that is similar to a design that is the subject of an unpublished international registration resulting from an earlier application, of which it has received a confidential copy, it must suspend the prosecution of the later application until publication of the international registration, since it will not be able to divulge the content of the international registration to the holder of the later application.
The Office may notify the holder of the later application of the fact that prosecution of that application is suspended on account of possible conflict with an as yet unpublished registration resulting from an earlier application. If the later filing is also an international registration, the Examining Office will refuse the effect of that later international registration until the earlier unpublished international registration has been published and it has taken a decision regarding the conflict between the two registrations.
Updated data concerning an international registration shall be communicated to each Office that has received a confidential copy of the international registration in the same manner as established for confidential copies. The purpose of Section 902(a) is to inform the Offices of all the designated Contracting Parties that have received a confidential copy of the international registration of its cancellation under Rule 16(5), in the case where the publication fee is not paid or proper reproductions of the industrial design are not submitted. Furthermore, the purpose of Section 902(b) is to inform the Office of a designated Contracting Party that has received a confidential copy of the international registration of any change relevant to that Contracting Party upon its recording in the International Register. Finally, the purpose of Section 902(c) is to inform the Offices of designated Contracting Parties that have received a confidential copy of the international registration of any correction effected before the publication of the international registration, unless the correction only concerns the designations of other Contracting Parties.
If the international application is accompanied by a specimen, instead of a reproduction, the designated Examining Office receives a specimen at the same time as a copy of the international registration. In effect, therefore, the number of copies of specimens accompanying an international application in cases where specimens can take the place of reproductions (refer to “Filing of specimens under the 1999 Act” and “Filing of specimens under the 1960 Act” ) corresponds to the number of Contracting Parties designated in the international application under the 1999 Act, having an Examining Offices, and having made a notification under Article 10(5) of the 1999 Act – plus one copy for the International Bureau.