2909 Contents of the International Design Application [R-07.2022]

The elements of an international design application fall into three categories: (1) mandatory contents; (2) additional mandatory contents; and (3) optional contents.

I. MANDATORY CONTENTS

Mandatory contents are those items required in all international design applications. Such contents are set forth in Article 5(1) and Rule 7 of the Hague Agreement and 37 CFR 1.1021(a). Specifically, the international design application must be in English, French, or Spanish, it must be presented on the official form (see MPEP § 2909.01) and signed by the applicant, and it must include: (1) a request for international registration under the Hague Agreement; (2) the prescribed data concerning the applicant; (3) the prescribed number of copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international design application, presented in the prescribed manner (where the industrial design is two-dimensional and a request for deferment of publication is made in accordance with Article 5(5) of the Hague Agreement, the international design application may, instead of containing reproductions, be accompanied by the prescribed number of specimens of the industrial design); (4) an indication of the product or products that constitute the industrial design or in relation to which the industrial design is to be used, as prescribed; (5) an indication of the designated Contracting Parties; (6) the prescribed fees; (7) the Contracting Party or Parties in respect of which the applicant fulfills the conditions to be the holder of an international registration; (8) the number of industrial designs included in the international application, which may not exceed 100, and the number of reproductions or specimens of the industrial designs accompanying the international application; (9) the amount of the fees being paid and the method of payment or instructions to debit the required amount of fees to an account opened with the International Bureau and the identification of the party effecting the payment or giving the instructions; and (10) an indication of applicant’s Contracting Party as required under Rule 7(4)(a).

II. ADDITIONAL MANDATORY CONTENTS

Additional mandatory contents are elements that are required by certain Contracting Parties and therefore are mandatory in any international design application that designates such Contracting Parties (see Article 5(2) and Rule 7 of the Hague Agreement and 37 CFR 1.1021(b)). Such additional mandatory contents may consist of, pursuant to Article 5(2) of the Hague Agreement, indications concerning the identity of the creator, a brief description of the reproduction or of the characteristic features of the industrial design, (iii) a claim, and/or, pursuant to Rule 8(1) of the Hague Agreement, a statement, document, oath, or declaration.

III. OPTIONAL CONTENTS

Optional contents are items that may be included in an international design application. Optional contents are addressed in Rule 7(5) of the Hague Agreement and 37 CFR 1.1021(c) and may include: (1) two or more industrial designs, subject to the prescribed conditions; (2) a request for deferment of publication or a request for immediate publication; (3) any of the additional mandatory elements discussed above, even if such elements are not required by any Contracting Party designated in the international design application; (4) the prescribed information concerning the applicant’s representative; (5) a claim of priority of one or more earlier filed applications, which, pursuant to Administrative Instruction section 408(a), may be accompanied by an access code allowing to retrieve the priority document from a Digital Access Service for Priority Documents (DAS) digital library; (6) a declaration, for purposes of Article 11 of the Paris Convention, that the product or products that constitute the industrial design, or in which the industrial design is incorporated, have been shown at an official or officially recognized international exhibition, together with the place where the exhibition was held and the date on which the product or products were first exhibited there and, where less than all the industrial designs contained in the international application are concerned, the indication of those industrial designs to which the declaration relates or does not relate; (7) any declaration, statement, or other relevant indication as may be specified in the Administrative Instructions; (8) a statement that identifies information known by the applicant to be material to the eligibility for protection of the industrial design concerned; and (9) a proposed translation of any text matter contained in the international application for purposes of recording and publication.

IV. REQUIRED CONTENTS WHERE THE UNITED STATES IS DESIGNATED

As set forth in 37 CFR 1.1021(d), in addition to the mandatory requirements otherwise required for international design applications, an international design application designating the United States must also include: (1) a claim (37 CFR 1.1021(b)(1)(iii) and 37 CFR 1.1025); (2) indications concerning the identity of the creator (i.e., the inventor, see 37 CFR 1.9(d)) in accordance with Rule 11(1); and (3) the inventor’s oath or declaration (37 CFR 1.63 and 1.64).

A claim is a filing date requirement for design applications in the United States. See 35 U.S.C. 171. The United States has declared, pursuant to Article 5(2), that an international design application designating the United States must contain a claim. See MPEP § 2903. Consequently, an international design application designating the United States that does not contain a claim will not be registered by the International Bureau in the international register and thus will not be entitled to a filing date in the United States. See MPEP §§ 2907 and 2908. In such case, the International Bureau will invite the applicant to submit the claim within a prescribed time limit and will accord a date of international registration as of the date of receipt of the claim (assuming there are no other defects). Failure to timely submit the claim in response to the invitation by the International Bureau will result in the application being deemed not to contain the designation of the United States. See Article 8(2)(b). Use of the official application form (form DM/1) will help ensure that applicants designating the United States will satisfy the requirement for a claim, as Item (12) of the official form includes a claim for the purposes of the designation of the United States. See MPEP § 2909.01.

Pursuant to Rule 8(1), the United States has declared that an international design application designating the United States must contain an oath or declaration of the creator and indications concerning the identity of the creator. See MPEP § 2903. The requirements for the inventor’s oath or declaration are set forth in 37 CFR 1.63 and 1.64. 37 CFR 1.1021(d) further provides that the requirements in 37 CFR 1.63(b) and 1.64(b)(4) to identify each inventor by his or her legal name, mailing address, and residence, if an inventor lives at a location which is different from the mailing address, and the requirement in 37 CFR 1.64(b)(2) to identify the residence and mailing address of the person signing the substitute statement will be considered satisfied by the presentation of such information in the international design application prior to international registration. If the inventor’s oath or declaration has not been filed, the International Bureau will invite the applicant to submit the inventor’s oath or declaration within a prescribed time limit. Failure to timely submit the inventor’s oath or declaration in response to the invitation by the International Bureau will result in the application being deemed not to contain the designation of the United States. See Article 8(2)(b). Annex I to the official application form (form DM/1) available at www.wipo.int/hague/en/forms/ includes a declaration of inventorship form and a substitute statement form for use with international design applications designating the United States. See MPEP § 2909.03.

An international design application designating the United States must include a specification as prescribed by 35 U.S.C. 112 and preferably include a brief description of the reproductions pursuant to Rule 7(5)(a) describing the view or views of the reproductions. See 37 CFR 1.1024. The Office encourages applicants filing international design applications that designate the United States to include a brief description in the application describing the views of the reproductions, as such description is helpful for examination and may, in some cases, help avoid issues concerning the scope of the claimed design or sufficiency of disclosure. Furthermore, a description of the view or views of the reproductions may be required by the Office in a nonprovisional international design application, as defined by 37 CFR 1.9(a)(3), pursuant to 37 CFR 1.1067. See MPEP § 2920.04(a), subsection II. The brief description of the reproductions should be included in Item (10) “Description of the Reproductions (Legends) of the Industrial Designs” of the official application form (form DM/1). See MPEP § 2909.01.

An international design application designating the United States may not contain a request for deferment of publication. See 37 CFR 1.1028. In addition, specimens are not permitted in international design applications designating the United States. See 37 CFR 1.1027.