Publication of the International Registration

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 I.D.B. 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.

99 Article 10(3)(a); 60 Article 6(3); Rule 17

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 I.D.B. 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 (change in ownership, changes of the name or address of the holder or representative, renunciations, limitations), appointments of representatives and cancellations thereof, corrections, renewals, cancellations of international registrations due to lack of payment of the second part of the fee, 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.

Rule 26

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.

Rule 26(3); A.I. Section 204(d)

The publication of the international registration in the Bulletin contains the following:

• the relevant data recorded in the International Register;
• the reproduction or reproductions of the design;
• where publication has been deferred, an indication of the date on which the deferment period expired or is considered to have expired.

Rule 17(2)

Publication cycle

The publication cycle of the I.D.B. 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.

Timing of publication

At the time of filing, the applicant may choose from the following three options concerning the timing of publication: 

• 12 months after the date of the international registration, as the default timing of publication (“standard publication”); or
• immediately after the recording of the international registration (i.e., immediate publication); or
• at a chosen time (specified in months counted from the filing date).

Rule 17(1)

Regarding the option to indicate publication “at a chosen time”, the applicant may always indicate a time earlier than the 12-month standard publication period.  The applicant may also request to defer publication beyond the standard publication period; the possible maximum deferment period depends on the Contracting Parties designated in the international application. 

For more information about 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.

After filing, the applicant or holder may request earlier publication at any time before the expiration of the publication period initially specified in the international application.  The international registration will be published immediately upon receipt of any such request by the International Bureau. 

For more information about earlier publication, refer to “Request for earlier publication".

Rule 17(1)(iibis)

Deferment of publication beyond the standard publication period

Consequences of deferred publication

When requesting deferment of publication beyond the standard publication period of 12 months from the date of international registration, publication fees do not have to be paid at the time of filing. They must however be paid no later than three weeks before the expiry of such deferment period.

Rule 16(3) and (4)

The obligation to pay publication fees no later than three weeks prior to the expiry of the deferment period also applies if the deferment period 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 (refer to “Request for earlier publication”).

Three months before the expiry of the deferment period, the International Bureau sends an unofficial reminder notice to the holder of the international registration, indicating the date by which the publication fee must be paid.  Non-receipt of that reminder by the holder does not constitute an excuse for failure to comply with any time limit for payment of the publication fee.  Failure to pay the publication fee (no later than three weeks before the expiry of the deferment period) results in the cancellation of the international registration.

Rule 16(3)(b) and (5)

Periods of deferment

The period of deferment depends upon the domestic law of each Contracting Party designated in the international application.

For Contracting Parties designated under the 1960 Act, the maximum period of deferment is 12 months from the filing date or, when claiming priority, from the priority date of the application concerned.  Since the standard publication period is 12 months after the date of international registration, no request for deferment (beyond the 12-month standard publication period) should be made if any Contracting Party is designated under the 1960 Act.

60 Article 6(4)(a); Rule 17(1)(iii)

Under the 1999 Act it is generally presumed that – unless a Contracting Party has officially declared that it authorizes only a shorter period or does not authorize deferment – all Contracting Parties permit the prescribed 30-month period of deferment counted from the filing date or, where priority is claimed, from the priority date of the application concerned.  Refer to “Deferred publication for a period which is less than the prescribed period” and “No deferment of publication”.

99 Article 11(1); Rule 16(1)(a)

Where an international application governed exclusively by the 1999 Act (i.e., in respect of which all Contracting Parties have been designated under the 1999 Act) contains a request for deferment of publication (beyond the 12-month standard publication period), such deferment may in principle be requested for a period of up to 30 months from the filing date, or – where priority is claimed – from the priority date.  However:

• if a designated Contracting Party has declared that, under its domestic law, the period of deferment allowed is less than 30 months, then publication takes place on the expiry of the period stated in that declaration, or 12 months after the date of international registration if that declared deferment period is shorter than the standard publication period.  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. Note that some Contracting Parties count deferment from the filing date, regardless of whether or not priority is claimed;

99 Article 11(2)(ii)

• if more than one designated Contracting Party has declared that the period of deferment allowed for is less than 30 months, then publication takes place on the expiry of the shortest of the periods stated in those declarations, or 12 months after the date of international registration if any of those declared deferment periods are shorter than the standard publication period;

99 Article 11(2)(ii)

• if a designated Contracting Party has declared that deferment of publication is not possible under its domestic law, the International Bureau notifies the applicant that the request for deferment of publication is incompatible with the designation of the Contracting Party concerned. If the holder does not withdraw that designation within one month of the date of the notification sent by the International Bureau, the request for deferment of publication is not taken into consideration and the standard publication period applies.

99 Article 11(3)(i); Rule 16(2)

Summary of time of publication

If any of the following Contracting Parties is designated, and the chosen time for publication in item 17 is more than 12 months, the international registration is published at 12 months after the date of the international registration (standard publication):

• Contracting Parties which have declared that the period of deferment allowed is 12 months or less;
• Contracting Parties which have declared that that deferment of publication is not possible and the holder did not withdraw that designation; and
• Contracting Parties designated under the 1960 Act.

If any of the above mentioned Contracting Parties is designated, and the chosen time for publication in item 17 is less than 12 months, the international registration is published at the chosen time.

Rule 16(1)(b); Rule 17(1)(ii) and (iii)

Options for the holder before publication

Before the period of deferment of publication, the following actions may be initiated by the holder with regard to the international registration:

Request for earlier publication

The holder may request earlier publication – i.e., publication prior to the expiry of the publication period initially specified in the international application or the 12-month standard publication period – in respect of any or all of the designs contained in the international registration. The international registration is then published immediately after the receipt of such request by the International Bureau.

60 Article 6(4)(b); 99 Article 11(4)(a); Rule 17(1)(iibis)

Request to provide extract or authorize access

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 no longer wish to preserve such confidentiality, for example, in order to assert his/her 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/she has designated, or to authorize access to the international registration by a third party.

99 Article 11(4)(b)

Renunciation or limitation

The holder may renounce the international registration for “all” the designated Contracting Parties, in respect of all the designs that are the subject of the international registration. Such a renunciation will result in the de facto cancellation of the whole international registration, and the 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 of the designs that are the subject of the international registration. In such case, only the designs that are not affected by the limitation will be published.

If the holder wishes that a request for the recording of a renunciation or limitation is taken into account for the publication of an international registration, such a request must comply with the applicable requirements (refer to “Renunciation” and “Limitation”), and be received by the International Bureau no later than three weeks prior to the expiry of the applicable publication period.  In default of this, the international registration is published at the expiration of the applicable publication period 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.

60 Article 6(4)(b); 99 Article 11(5); A.I. Section 601

Furnishing of confidential copies to Examining Offices

Confidentiality

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”).

60 Article 6(4)(d); 99 Article 10(4)

Examining Offices are faced with the situation in which they need to examine applications without knowing whether an international registration whose publication does not take place immediately 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.

99 Article 10(5)(a); A.I. Section 901

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.

99 Article 10(5)(b)

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.

Updating of data concerning the international registration

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 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.

A.I. Section 902

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.

Rule 10(1)(ii)