2920.05(a) Notification of Refusal [R-07.2022]

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Hague Article 12

Refusal

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  • (2) [Notification of Refusal]
    • (a) The refusal of the effects of an international registration shall be communicated by the Office to the International Bureau in a notification of refusal within the prescribed period.
    • (b) Any notification of refusal shall state all the grounds on which the refusal is based.

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Hague Rule 18

Notification of Refusal

  • (1) [Period for Notification of Refusal]
    • (a) The prescribed period for the notification of refusal of the effects of an international registration in accordance with Article 12(2) of the 1999 Act or Article 8(1) of the 1960 Act shall be six months from the publication of the international registration as provided for by Rule 26(3).
    • (b) Notwithstanding subparagraph (a), any Contracting Party whose Office is an Examining Office, or whose law provides for the possibility of opposition to the grant of protection, may, in a declaration, notify the Director General that, where it is designated under the 1999 Act, the period of six months referred to in that subparagraph shall be replaced by a period of 12 months.
    • (c) The declaration referred to in subparagraph (b) may also state that the international registration shall produce the effect referred to in Article 14(2)(a) of the 1999 Act at the latest
      • (i) at a time specified in the declaration which may be later than the date referred to in that Article but which shall not be more than six months after the said date or
      • (ii) at a time at which protection is granted according to the law of the Contracting Party where a decision regarding the grant of protection was unintentionally not communicated within the period applicable under subparagraph (a) or (b); in such a case, the Office of the Contracting Party concerned shall notify the International Bureau accordingly and endeavor to communicate such decision to the holder of the international registration concerned promptly thereafter.
  • (2) [Notification of Refusal]
    • (a) The notification of any refusal shall relate to one international registration, shall be dated and shall be signed by the Office making the notification.
    • (b) The notification shall contain or indicate
      • (i) the Office making the notification,
      • (ii) the number of the international registration,
      • (iii) all the grounds on which the refusal is based together with a reference to the corresponding essential provisions of the law,
      • (iv) where the grounds on which the refusal is based refer to similarity with an industrial design which has been the subject of an earlier national, regional or international application or registration, the filing date and number, the priority date (if any), the registration date and number (if available), a copy of a reproduction of the earlier industrial design (if that reproduction is accessible to the public) and the name and address of the owner of the said industrial design, as provided for in the Administrative Instructions,
      • (v) 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,
      • (vi) whether the refusal may be subject to review or appeal and, if so, the time limit, reasonable under the circumstances, for any request for review of, or appeal against, the refusal and the authority to which such request for review or appeal shall lie, with the indication, where applicable, that the request for review or the appeal has to be filed through the intermediary of a representative whose address is within the territory of the Contracting Party whose Office has pronounced the refusal, and (vii) the date on which the refusal was pronounced.

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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.

Under Article 12 of the Hague Agreement, “[t]he Office of any designated Contracting Party may, where the conditions for the grant of protection under the law of that Contracting Party are not met in respect of any or all of the industrial designs that are the subject of an international registration, refuse the effects, in part or in whole, of the international registration in the territory of the said Contracting Party, provided that no Office may refuse the effects, in part or in whole, of any international registration on the ground that requirements relating to the form or contents of the international design application that are provided for in this Act or the Regulations or are additional to, or different from, those requirements have not been satisfied under the law of the Contracting Party concerned.” This refusal of the effects of an international registration is called a “notification of refusal.” See Article 12(2). The notification of refusal is transmitted to the International Bureau who, without delay, transmits a copy of the notification to the holder of the international registration. Hague Agreement Rule 18 prescribes a time period for sending of the notification of refusal and the content of the notification.

In accordance with 37 CFR 1.1062(b), a notification of refusal is to be sent to the International Bureau within 12 months from the publication of the international registration where it appears that the applicant is not entitled to a patent under the law of the United States with respect to any industrial design that is the subject of the international registration. The notification of refusal may be sent after this 12-month period where the failure to send the notification within the 12-month period was unintentional.

The notification of refusal contains or indicates: (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 37 CFR 1.134 and 1.136 where a reply to the notification of refusal is required. See 37 CFR 1.1063(a).

The grounds of refusal may be in the form of a rejection based on a condition for patentability under title 35, United States Code (e.g., 35 U.S.C. 171, 102, 103, or 112), a requirement for restriction (where more than one independent and distinct design is presented in the application), and/or an objection (where not prohibited by Article 12(1) of the Hague Agreement). The grounds of refusal may also be based on applicant’s action taken prior to examination, including cancellation of industrial designs in the international design application by amendment, or by an express abandonment of the application pursuant to 37 CFR 1.138 or the renunciation of the designation of the United States (see MPEP § 2930).

Objections based on requirements relating to the form or content of the application provided for in the Hague Agreement and Regulations thereunder are not prohibited by Article 12(1) where the International Bureau is not responsible for verifying compliance with such requirements. Such may arise, for example, where the applicant submits amended drawings directly to the Office in the course of examination that fail to comply with the formal requirements applicable to reproductions under Hague Agreement Rule 9 and Part Four of the Administrative Instructions. Nor does Article 12(1) prohibit objections based on inconsistencies among the views of the reproductions or incorrect or inaccurate statements contained in the description.

As in the case of Office actions in design applications filed under 35 U.S.C. chapter 16, copies of references cited by the examiner should be included with the notification of refusal. In addition, because Hague Agreement Rule 18(2)(b)(iv) does not distinguish references used in a ground of refusal based on where the reference originated from, the examiner should also include any U.S. patent or U.S. patent application publication used in a grounds of refusal (e.g., a rejection under 35 U.S.C. 102 or 103). See 37 CFR 1.1063(a)(3). Copies of references cited by the applicant in an information disclosure statement do not need to be included with the notification of refusal.

The notification of refusal should include a time period for reply under 37 CFR 1.134 and 1.136 to avoid abandonment where a reply to the notification of refusal is required. This time period will normally be made in the Office Action Summary, Form PTOL-326, accompanying a Notification of Refusal cover sheet, Form PTO-2319. Not all notifications of refusal will require a reply. For example, where the international registration contains multiple industrial designs and all but one design is cancelled by preliminary amendment prior to examination, and the remaining design is determined by the examiner to be allowable, then a notice of allowance will be sent concurrently with a notification of refusal, refusing the effects of the international registration in the United States with respect to the industrial design or designs that have been cancelled. Such a notification of refusal, otherwise known as a “Notification of Partial Refusal,” (Form PTO-2321) will be communicated to the International Bureau but will not set a time period for reply to the notification of refusal, as no reply to the refusal is required.

The Hague system does not require any submission from the applicant to the USPTO to initiate examination of a nonprovisional international design application. In many cases the applicant will not have retained the services of an attorney or agent registered to practice before the USPTO (“patent practitioner”) prior to receipt of the notification of refusal. Where there is no patent practitioner of record, the examiner should include the following form paragraph in the refusal to remind applicants of the signature requirements applicable to a reply to a notification of refusal:

¶ 29.100 Reply Reminder

Applicant is reminded that any reply to this communication must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).

Examiner Note:

Add this paragraph at the end of a notification of refusal or other Office action where a patent attorney or agent registered to practice before the United States Patent and Trademark Office has not been appointed as applicant’s representative. If this paragraph was included in a prior Office action, it may be, but is not required to be, included in a subsequent Office action.

In addition, the following form paragraph may be included in the notification of refusal to provide information to applicants regarding who may discuss the merits of the application with the examiner:

¶ 29.101 Discussion of the Merits of the Application

All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP § 713. The examiner will not discuss the merits of the application with applicant’s representative if the representative is not registered to practice before the USPTO. Appointment as applicant’s representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below.

Telephonic or in person interviews

A telephonic or in person interview may only be conducted with an attorney or agent registered to practice before the USPTO (“registered practitioner”) or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner).

The registered practitioner may either be of record or not of record. To become “of record,” a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA/80 “Power of Attorney to Prosecute Applications Before the USPTO,” available at www.uspto.gov/ patent/forms/forms-patent-applications-filed-or-after-september-16-2012, may be used for this purpose. See MPEP § 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing and filing an “Applicant Initiated Interview Request Form” (PTOL-413A) (available at the USPTO web page indicated above). See MPEP § 405. For acceptable ways to submit forms to the USPTO, see “When Responding to Official USPTO Correspondence” below.

Examiner Note:

Add this paragraph at the end of the Refusal where a patent attorney or agent registered to practice before the United States Patent and Trademark Office has not been appointed as applicant’s representative.

Any reply to the notification of refusal must be filed directly with the Office and not through the International Bureau. See 37 CFR 1.1063(b). A reply to the notification of refusal is subject to the requirements of 37 CFR 1.111.

Any further Office action following the notification of refusal, such as a Final Rejection, will normally be sent directly to the applicant.