Presentation of the International Application to the International Bureau

Channels of communication

An international application is normally sent directly by the applicant or his/her representative to the International Bureau. However, a number of exceptions to that principle are provided for by the 1960 and the 1999 Acts.

Under the 1960 Act, an international application may be filed through the Office of a Contracting State if such State so permits. In addition, a Contracting State may require that, where it is considered to be the State of origin, the deposit be filed through its national Office. To the extent that such requirement is not required to be notified to the Director General of WIPO under the 1960 Act, the International Bureau does not check whether an international application governed exclusively or partly by the 1960 Act has been presented through the Office of the State of origin pursuant, where applicable, to the law of that Contracting State. Non-compliance with this requirement shall not prejudice the effects of the international deposit in the other Contracting States.

60 Article 4

Under the 1999 Act, it is possible for Contracting Parties to prohibit the indirect route, but they are not allowed to impose it. Where an international application is presented to the International Bureau through the intermediary of an Office, that Office may fix, and collect for its own benefit, a fee to cover the cost of the work involved in handling the international application. An Office that requires a transmittal fee must notify the International Bureau of the amount of such fee, which should not exceed the administrative costs of receiving and transmitting the international application, and its due date.

99 Article 4; Rule 13(2)

Where an international application governed exclusively or partly by the 1999 Act is addressed to the International Bureau through the Office of the applicant’s Contracting Party, it must be received by the International Bureau within a period of one month from the date of receipt by that Office. However, that period may not be sufficient for a Contracting Party whose law requires a security clearance. The possibility has therefore been provided for such a Contracting Party to notify the replacement of the period of one month by a period of six months. If the applicable time limit is not complied with, the filing date of the international application is the date of its receipt by the International Bureau.

The United States of America and the Russian Federation are the only Contracting Parties that have made the notification under Rule 13(4) to replace a period of one month by a period of six months. It is a requirement under the law of the United States of America that, for designs created in the United States of America, the applicant first obtains an export license before filing outside of the United States of America. If the applicant needs to obtain such a license, alternatively, an international application may be filed through the USPTO (in most cases the security clearance will be performed within a couple of days) or through the International Bureau once the said license has been received by the applicant (it is the responsibility of the applicant to comply with any national security provisions before filing the international application).

More information on foreign filing is available on the USPTO website.

It is a requirement under the law of the Russian Federation that designs created in the Russian Federation by Russian legal entities or nationals are subject to a security clearance procedure by the Federal Service for Intellectual Property (ROSPATENT) to ensure that the designs do not contain state secrets.

More information on foreign filing is available on the ROSPATENT website.

Rule 13(3) and (4)

Filing date of the international application

Provided that the international application does not contain any irregularities entailing a postponement of the filing date (refer to “Irregularities entailing a postponement of the filing date of the international application”), the International Bureau allocates to the international application a filing date in accordance with the following principles:

  • in the case of direct filings, and in the case of indirect filings of international applications other than international applications governed exclusively by the 1999 Act, the filing date is the date of receipt by the International Bureau of the international application (refer to “Communications with the International Bureau”);

Rule 13(3)(ii)

  • in the case of indirect filings of international applications governed exclusively by the 1999 Act, the filing date is the date on which the application was received by the Office of the applicant’s Contracting Party concerned, provided that it is received by the International Bureau within one month of that date or within six months in case of security clearance (refer to “Security clearance” and “Channels of communication”). If that time limit is not complied with, the filing date of the international application is the date of its receipt by the International Bureau.

Rule 13(3)(i) and (4)

Irregularities in the international application

Time limit for correcting irregularities

If the International Bureau finds that the international application does not, at the time of its receipt by the International Bureau, fulfill the applicable requirements, it invites the applicant to make the required corrections within three months from the date of the invitation sent by the International Bureau. Where an irregularity is not remedied within this three-month time limit, the international application is considered abandoned and the International Bureau refunds any fees paid in respect of that application, after deduction of an amount corresponding to the basic fee.

Rule 14(1) and (3)

Payment of fees

If the International Bureau finds that the required fees have not been paid, it invites the applicant to pay these fees within two months from the date of the invitation (refer to “Fees due”).  If the basic fee is not paid within the two-month time limit, the international application is considered abandoned.  The International Bureau will not start examining the international application until at least the basic fee for one design has been received.

Rule 12(2); Rule 14(1)(b) and (3)

Irregularities entailing a postponement of the filing date of the international application

Where the international application has, on the date on which it is received by the International Bureau, an irregularity which is prescribed as an irregularity entailing a postponement of the filing date, the filing date is the date on which the correction of such irregularity is received by the International Bureau. The irregularities which are prescribed as entailing a postponement of the filing date of the international application are the following:

  • the international application is not in one of the prescribed languages;
  • any of the following elements is missing from the international application:
    • an express or implicit indication that international registration under the 1999 Act or the 1960 Act is sought;
    • indications allowing the identity of the applicant to be established;
    • indications sufficient to enable the applicant or its representative, if any, to be contacted;
    • a reproduction, or, in accordance with Article 5(1)(iii) of the 1999 Act, a specimen, of each design that is the subject of the international application;
    • the designation of at least one Contracting Party.

Rule 14(2)

Irregularities concerning the prohibition on self-designation

Where a Contracting Party designated under the 1999 Act, whose Office is an Examining Office, has made the declaration prohibiting its self-designation (refer to “Prohibition on self-designation” and 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 that Contracting Party.

99 Article 14(3)

Irregularities concerning special requirement notified by a Contracting Party or regarding the identity of the creator, description and claim

In the case of an irregularity which relates either:

if the applicant does not remedy such irregularity within the prescribed time limit of three months, the international application is deemed not to contain the designation of the Contracting Party in question.

Furthermore, if the applicant does remedy an irregularity which relates to Article 5(2) of the 1999 Act, the date of the international registration is the date on which the correction of such irregularity is received by the International Bureau or the filing date of the international application, whichever is the later.

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