2920.05 Examination [R-07.2015]

Created On
byChhabra Law Firm

35 U.S.C. 389  Examination of international design application.

  • (a) IN GENERAL.—The Director shall cause an examination to be made pursuant to this title of an international design application designating the United States.
  • (b) APPLICABILITY OF CHAPTER 16.—All questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16.
  • (c) FEES.—The Director may prescribe fees for filing international design applications, for designating the United States, and for any other processing, services, or materials relating to international design applications, and may provide for later payment of such fees, including surcharges for later submission of fees.
  • (d) ISSUANCE OF PATENT.—The Director may issue a patent based on an international design application designating the United States, in accordance with the provisions of this title. Such patent shall have the force and effect of a patent issued on an application filed under chapter 16.

37 CFR 1.1062 Examination.

  • (a) Examination. The Office shall make an examination pursuant to title 35, United States Code, of an international design application designating the United States.
  • (b) Timing. For each international design application to be examined under paragraph (a) of this section, the Office shall, subject to Rule 18(1)(c)(ii), send to the International Bureau within 12 months from the publication of the international registration under Rule 26(3) a notification of refusal (§ 1.1063) where it appears that the applicant is not entitled to a patent under the law with respect to any industrial design that is the subject of the international registration.

37 CFR 1.1063 Notification of Refusal.

  • (a) A notification of refusal shall contain or indicate:
    • (1) The number of the international registration;
    • (2) The grounds on which the refusal is based;
    • (3) A copy of a reproduction of the earlier industrial design and information concerning the earlier industrial design, where the grounds of refusal refer to similarity with an industrial design that is the subject of an earlier application or registration;
    • (4) Where the refusal does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate; and
    • (5) A time period for reply under §§ 1.134 and 1.136, where a reply to the notification of refusal is required.
  • (b) Any reply to the notification of refusal must be filed directly with the Office and not through the International Bureau. The requirements of § 1.111 shall apply to a reply to a notification of refusal.

International design applications designating the United States are examined pursuant to title 35, United States Code. All questions of substance and, unless otherwise required by the Hague Agreement or Regulations thereunder, procedures regarding an international design application designating the United States shall be determined as in the case of design applications filed under 35 U.S.C. chapter 16. See 35 U.S.C. 389. Accordingly, the practices set forth in MPEP §§ 1504.01 (Statutory Subject Matter for Designs), 1504.02 (Novelty), 1504.03 (Nonobviousness), 1504.04 (Considerations Under 35 U.S.C. 112), 1504.05 (Restriction), and 1504.06 (Double Patenting) are generally applicable to international design applications designating the United States.

While there is substantial overlap in examining practices with respect to international design applications designating the United States and design applications filed under 35 U.S.C. chapter 16, there are also differences. These differences include:

  • (1) the Office sends a Notification of Refusal to the International Bureau for forwarding to the holder of the international registration where it is determined that the conditions for the grant of a patent are not met in respect of any or all designs that are the subject of international registration;
  • (2) upon issuance of a patent, the Office sends a statement of grant of protection to the International Bureau indicating that protection is granted in the United States to those designs that are the subject of the international registration and covered by the patent.

Regulations concerning international design applications are set forth in 37 CFR Part 1, subpart I.