2920.05(b) One Independent and Distinct Design [R-07.2022]
Hague Article 13
Special Requirements Concerning Unity of Design
- (1) [Notification of Special Requirements] Any Contracting Party whose law, at the time it becomes party to this Act, requires that designs that are the subject of the same application conform to a requirement of unity of design, unity of production or unity of use, or belong to the same set or composition of items, or that only one independent and distinct design may be claimed in a single application, may, in a declaration, notify the Director General accordingly. However, no such declaration shall affect the right of an applicant to include two or more industrial designs in an international application in accordance with Article 5(4), even if the application designates the Contracting Party that has made the declaration.
- (2) [Effect of Declaration]Any such declaration shall enable the Office of the Contracting Party that has made it to refuse the effects of the international registration pursuant to Article 12(1) pending compliance with the requirement notified by that Contracting Party.
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37 CFR 1.1064 One independent and distinct design.
- (a) Only one independent and distinct design may be claimed in a nonprovisional international design application.
- (b) If the requirements under paragraph (a) of this section are not satisfied, the examiner shall in the notification of refusal or other Office action require the applicant in the reply to that action to elect one independent and distinct design for which prosecution on the merits shall be restricted. Such requirement will normally be made before any action on the merits but may be made at any time before the final action. Review of any such requirement is provided under §§ 1.143 and 1.144.
Only one independent and distinct design may be claimed in a nonprovisional international design application. See 37 CFR 1.1064. Under Article 13 of the Hague Agreement, a Contracting Party whose law at the time it becomes party to the Hague Agreement requires, inter alia, that only one independent and distinct design may be claimed in a single application, can refuse the effects of the international registration on grounds of noncompliance with such requirement. U.S. law requires that only one independent and distinct design may be claimed in a single application. See In re Rubinfield, 270 F.2d 391 (CCPA 1959); In re Platner, 155 USPQ 222 (Comm’r Pat. 1967); MPEP § 1504.05. The practice set forth in MPEP § 1504.05 is generally applicable to nonprovisional international design applications. If more than one independent and distinct design is claimed in the nonprovisional international design application, the examiner should in the notification of refusal or other Office action require the applicant in the reply to that action to elect one independent and distinct design for which prosecution on the merits shall be restricted. The requirement should normally be made before any action on the merits but may be made at any time before the final action. Review of any such requirement is provided under 37 CFR 1.143 and 1.144.
Renumbering of the figures following cancellation of non-elected embodiments is not required. See MPEP § 2920.04(b). In addition, applicants should consider the need to correct inventorship under 37 CFR 1.48 as a result of a restriction requirement and further note that correction of inventorship after an Office action on the merits is subject to an additional fee under 37 CFR 1.48(c). See MPEP § 602.01(c)(1). Examiners should use FP 29.102 to remind applicants that renumbering of the drawing figures following cancellation of non-elected embodiments is not required and to consider the need to correct inventorship due to the cancellation of non-elected designs.
¶ 29.102 Reply Reminder for Restriction Requirements Concerning Figure Numbering
In replying to this Refusal electing a Group for prosecution, applicant should also consider amending the application to cancel the drawing figures and remove the description corresponding to the nonelected Group(s), and to correct inventorship, as appropriate, resulting from such amendment pursuant to 37 CFR 1.48. See MPEP § 602.01(c)(1). Applicant should note that correcting inventorship after an Office action on the merits has been given or mailed in the application will require an additional fee pursuant to 37 CFR 1.48(c).
Renumbering of the drawing figures is not required. To maintain consistency with the published International Registration, it is recommended that the numbering of the drawing figures included in the elected Group not be changed even if non-elected embodiments are cancelled. Any amendment to the drawing figures should comply with 37 CFR 1.1026 and Part Four of the Administrative Instructions (in particular, see Section 405 of the Administrative Instructions with respect to numbering of reproductions).
Examiner Note:
Add this paragraph at the end of a restriction requirement in a nonprovisional international design application. If there is no patent practitioner of record, also include form paragraph 29.100 Reply Reminder.
Protection of designs cancelled from a nonprovisional international design application as a result of a restriction requirement may be pursued through the filing of a divisional application(s). Such a divisional application may be filed either as a design application under 35 U.S.C. chapter 16 or as an international design application designating the United States. For further information regarding divisional applications, see MPEP § 2920.05(e).