2920.02 Applicant [R-07.2022]

The rules governing the applicant for patent set forth in 37 CFR 1.42–1.46 are generally applicable to nonprovisional international design applications. See 37 CFR 1.1061; see also MPEP § 605.01 for a detailed discussion regarding the applicant for patent.

With respect to applicants under 37 CFR 1.46 (i.e., the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter), 37 CFR 1.46(b) provides that if a nonprovisional international design application is applied for by a person other than the inventor under 37 CFR 1.46(a) (i.e., the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter), that person must have been identified as the applicant in the publication of the international registration under Hague Agreement Article 10(3). Thus, a 37 CFR 1.46 applicant identified as the applicant in the publication of the international registration is the applicant in the nonprovisional international design application.

Any request to change the applicant under 37 CFR 1.46 after an original applicant has been specified must include a corrected application data sheet (ADS) under 37 CFR 1.76 specifying the applicant in the applicant information section in accordance with 37 CFR 1.76(c)(2) and must comply with 37 CFR 3.71 and 3.73. See 37 CFR 1.46(c)(2). Thus, if there is a change of applicant under 37 CFR 1.46 (e.g., from the inventor to the assignee, or from one assignee to another assignee), the new applicant must establish its ownership of the application under 37 CFR 3.71(b) and 3.73. See MPEP § 605.01, subsection II.

Any request to correct or update the name of the applicant under 37 CFR 1.46 must include a corrected ADS under 37 CFR 1.76 specifying the correct or updated name of the applicant in the applicant information section. See 37 CFR 1.46(c)(1). Thus, if there is no change in the applicant itself but just the applicant’s name (due to a correction or name change), the applicant need only submit a corrected ADS specifying the correct or updated name in the applicant information section. Any corrected ADS must identify the information being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2).

A change in the name of the applicant under 37 CFR 1.46 recorded pursuant to Hague Agreement Article 16(1)(ii) may also be effective to change the name of the applicant in a nonprovisional international design application. See 37 CFR 1.46(c)(1). The recording of the name change pursuant to Article 16(1)(ii) must have been made no later than payment of the issue fee. Hague Agreement Article 16(1)(ii) provides for recording in the International Register by the International Bureau of a change in the name of the holder. Under Article 16(2), such recording has the same effect as if made in the office of each of the designated Contracting Parties. Thus, where the applicant under 37 CFR 1.46 in a nonprovisional international design application is the holder of the international registration, correction or update of the applicant’s name may be made through the mechanism under Article 16(1)(ii).