[Federal Register Volume 78, Number 230 (Friday, November 29, 2013)]
[Proposed Rules]
[Pages 71870-71902]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-28262]



[[Page 71869]]

Vol. 78

Friday,

No. 230

November 29, 2013

Part V





Department of Commerce





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United States Patent and Trademark Office





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37 CFR Parts 1, 3, 5, et al.





Changes To Implement the Hague Agreement Concerning International 
Registration of Industrial Designs; Proposed Rule

  Federal Register / Vol. 78 , No. 230 / Friday, November 29, 2013 / 
Proposed Rules  

[[Page 71870]]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1, 3, 5 and 11

[Docket No. PTO-P-2013-0025]
RIN 0651-AC87


Changes To Implement the Hague Agreement Concerning International 
Registration of Industrial Designs

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: Title I of the Patent Law Treaties Implementation Act of 2012 
(``PLTIA'') amends the patent laws to implement the provisions of the 
1999 Geneva Act of the Hague Agreement Concerning International 
Registration of Industrial Designs (``Hague Agreement'') and is to take 
effect on the entry into force of the Hague Agreement with respect to 
the United States. The Hague Agreement provides that an applicant is 
entitled to apply for design protection in Hague Agreement member 
countries and with intergovernmental organizations by filing a single, 
standardized international design application in a single language. The 
United States Patent and Trademark Office (USPTO or Office) proposes 
changes to the rules of practice to implement title I of the PLTIA.

DATES: Comment Deadline Date: Written comments must be received on or 
before January 28, 2014.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: [email protected]. Comments may also be 
submitted by postal mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, 
marked to the attention of Boris Milef, Senior PCT Legal Examiner, 
Office of PCT Legal Administration.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (http://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message over the 
Internet because the Office may easily share such comments with the 
public. Electronic comments are preferred to be submitted in plain 
text, but also may be submitted in ADOBE[supreg] portable document 
format or MICROSOFT WORD[supreg] format. Comments not submitted 
electronically should be submitted on paper in a format that 
facilitates convenient digital scanning into ADOBE[supreg] portable 
document format.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, currently located in Madison East, 
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also 
will be available for viewing via the Office's Internet Web site 
(http://www.uspto.gov) and at http://www.regulations.gov. Because 
comments will be made available for public inspection, information that 
the submitter does not desire to make public, such as an address or 
phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Boris Milef, Senior PCT Legal 
Examiner, Office of PCT Legal Administration, at (571) 272-3288.

SUPPLEMENTARY INFORMATION:
    Executive Summary: Purpose: The Hague Agreement provides that an 
applicant is entitled to apply for design protection in all member 
countries and with intergovernmental organizations by filing a single, 
standardized international design application in a single language. 
Title I of the PLTIA amends Title 35 to implement the provisions of the 
Hague Agreement and is to take effect on the entry into force of the 
Hague Agreement with respect to the United States. This notice proposes 
changes to the relevant rules of practice in Title 37, Chapter I of the 
Code of Federal Regulations to implement title I of the PLTIA.
    Summary of Major Changes to U.S. Practice: The major changes to 
U.S. practice in title I of the PLTIA pertain to: (1) Standardizing 
formal requirements for international design applications; (2) 
establishing the USPTO as an office through which international design 
applications may be filed; (3) providing a right of priority with 
respect to international design applications; (4) treating an 
international design application that designates the United States as 
having the same effect from its filing date as that of a national 
design application; (5) providing provisional rights for published 
international design applications that designate the United States; (6) 
setting the patent term for design patents issuing from both national 
design applications under chapter 16 and international design 
applications designating the United States to 15 years from the date of 
patent grant; (7) providing for examination by the Office of 
international design applications that designate the United States; and 
(8) permitting an applicant's failure to act within prescribed time 
limits in an international design application to be excused as to the 
United States under certain conditions.
    The Office is specifically proposing to revise the rules of 
practice (37 CFR parts 1, 3, 5, and 11) to provide for the filing of 
international design applications by U.S. applicants in the USPTO as an 
office of indirect filing. The Office would transmit the international 
design application and any collected international fees to the 
International Bureau of the World Intellectual Property Organization 
(``WIPO''), subject to national security review and payment of a 
transmittal fee. The International Bureau would review the application 
for compliance with the applicable formal requirements under the Hague 
Agreement.
    The Office also proposes to revise the rules of practice to set 
forth the formal requirements of an international design application, 
including specific content requirements where the United States is 
designated. Specifically, an international design application 
designating the United States would have to identify the inventor and 
include a claim and the inventor's oath or declaration. The proposed 
rules also specify that an international design application designating 
the United States may be refused by the Office as a designated office 
if the applicant is not a person qualified under 35 U.S.C. chapter 11 
to be an applicant.
    The Office also proposes to revise the rules of practice to provide 
for examination of international design applications that designate the 
United States. International design applications are reviewed by the 
International Bureau for compliance with formal requirements under the 
Hague Agreement. Where these requirements have been met, the 
International Bureau would register the industrial design in the 
International Register and, subsequently, publish the international 
registration and send a copy of the publication to each designated 
office. Since international registration would only occur after the 
International Bureau finds that the application conforms to the 
applicable formal requirements, examination before the Office would 
generally be limited to substantive matters. With certain exceptions, 
the Hague Agreement imposes a time period of up to 12 months from the 
date of publication of the international registration for an examining 
office to refuse an

[[Page 71871]]

international design application. The rules are proposed to be revised 
to provide for the applicability of the requirements of 35 U.S.C. 
chapter 16 to examination of international design applications 
consistent with the Hague Agreement, and to provide for the various 
notifications to the International Bureau required of an examining 
office under the Hague Agreement.
    The Office is also proposing to revise the rules of practice to 
provide for: (1) Review of a filing date established by the 
International Bureau; (2) excusing an applicant's failure to act within 
prescribed time limits in connection with an international design 
application; (3) priority claims with respect to international design 
applications; (4) payment of fees; and (5) treatment of international 
design applications for national security review.
    Costs and Benefits: This rulemaking is not economically significant 
under Executive Order 12866 (Sept. 30, 1993).
    Background: The 1999 Geneva Act of the Hague Agreement Concerning 
the International Registration of Industrial Designs (``Hague 
Agreement''), negotiated under the auspices of WIPO, is the latest 
revision to the 1925 Hague Agreement Concerning the International 
Deposit of Industrial Designs (``1925 Agreement''). The United States 
is not a party to the 1925 Agreement, and did not join any of the 
subsequent Acts revising the 1925 Agreement, because those agreements 
either did not provide, or did not adequately provide, for substantive 
examination of international design applications by national offices. 
The Hague Agreement, adopted at a diplomatic conference on July 2, 
1999, is the first Act that adequately provides for a system of 
individual review by the national offices of Contracting Parties.
    In accordance with Article 28, the Hague Agreement will enter into 
force for the United States three months after the date that the United 
States deposits its instrument of ratification with the Director 
General of the International Bureau of WIPO or at any later date 
indicated in the instrument. As stated in the President's November 13, 
2006, Letter of Transmittal to the Senate, the United States would not 
deposit its instrument of ratification until the necessary implementing 
legal structure has been established domestically. Treaty Doc. 109-21. 
Title I of the PLTIA, enacted on December 18, 2012, amended title 35 
United States Code, in order to implement the Hague Agreement. See 
Public Law 112-211, Sec. Sec.  101-103, 126 Stat. 1527, 1527-33 (2012). 
Its provisions are to take effect on the entry into force of the Hague 
Agreement with respect to the United States. These proposed rules 
implement title I of the PLTIA.
    The main purpose of the Hague Agreement is to facilitate protection 
for industrial designs by allowing applicants to apply for protection 
in those countries and intergovernmental organizations that are 
Contracting Parties to the Hague Agreement by filing a single 
standardized application in a single language. Currently, a U.S. design 
applicant seeking global protection generally has to file separate 
design applications in each country or intergovernmental organization 
for which protection is sought, complying with the formal requirements 
imposed by each country or intergovernmental organization. The Hague 
Agreement simplifies the application process and reduces the costs for 
applicants seeking to obtain rights globally. The Hague Agreement also 
provides for centralized international registration of designs and 
renewal of registrations. The Hague Agreement imposes a time limit on a 
Contracting Party to refuse the effects of international registration 
in that Contracting Party if the conditions for the grant of protection 
under the law of that Contracting Party are not met.
    Major provisions of the Hague Agreement as implemented by title I 
of the PLTIA include the following:
    Article 3 of the Hague Agreement provides that ``[a]ny person that 
is a national of a State that is a Contracting Party or of a State 
member of an intergovernmental organization that is a Contracting 
Party, or that has a domicile, a habitual residence or a real and 
effective industrial or commercial establishment in the territory of a 
Contracting Party, shall be entitled to file an international 
application.'' Article 4(1)(a) provides that ``[t]he international 
application may be filed, at the option of the applicant, either 
directly with the International Bureau or through the Office of the 
applicant's Contracting Party.'' Article 4(2) allows ``[t]he Office of 
any Contracting Party [to] require that the applicant pay a transmittal 
fee to it, for its own benefit, in respect of any international 
application filed through it.''
    Section 101(a) of the PLTIA adds 35 U.S.C. 382 to implement the 
provisions of Articles 3 and 4. 126 Stat. at 1528. Section 382(a) 
provides that ``[a]ny person who is a national of the United States, or 
has a domicile, a habitual residence, or a real and effective 
industrial or commercial establishment in the United States, may file 
an international design application by submitting to the United States 
Patent and Trademark Office an application in such form, together with 
such fees, as may be prescribed by the Director.'' Id. Section 382(b) 
requires the Office to ``perform all acts connected with the discharge 
of its duties under the [Hague Agreement], including the collection of 
international fees and the transmittal thereof to the International 
Bureau.'' Id. Transmittal of the international design application would 
be subject to 35 U.S.C. chapter 17 and payment of a transmittal fee. 
Id.
    Article 5 of the Hague Agreement and Rule 7 of the ``Common 
Regulations under the 1999 Act and the 1960 Act of the Hague 
Agreement'' (``Hague Agreement Regulations'' or ``Regulations'') 
concern the contents of an international design application. Article 
5(1) requires the international design application to be in one of the 
prescribed languages and specifies the contents required for all 
international design applications. Specifically, it provides that the 
application ``shall contain or be accompanied by (i) a request for 
international registration under [the Hague Agreement]; (ii) the 
prescribed data concerning the applicant; (iii) 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 application, presented in the prescribed 
manner; however, where the industrial design is two-dimensional and a 
request for deferment of publication is made in accordance with 
[Article 5(5)], the international application may, instead of 
containing reproductions, be accompanied by the prescribed number of 
specimens of the industrial design; (iv) an indication of the product 
or products which constitute the industrial design or in relation to 
which the industrial design is to be used, as prescribed; (v) an 
indication of the designated Contracting Parties; (vi) the prescribed 
fees; and (vii) any other prescribed particulars.''
    Article 5(2) of the Hague Agreement and Rule 11 of the Hague 
Agreement Regulations set forth additional mandatory contents that may 
be required by any Contracting Party whose Office is an Examining 
Office and whose law, at the time it becomes party to the Hague 
Agreement, so requires. Specifically, Article 5(2) provides that ``an 
application for the grant of protection to an industrial design [may], 
in order for that application to be accorded a filing date under that 
law'' be required to contain, any of the following elements: ``(i) 
indications concerning the identity of the creator of the industrial 
design that is the subject of that application; (ii) a

[[Page 71872]]

brief description of the reproduction or of the characteristic features 
of the industrial design that is the subject of that application; and 
(iii) a claim.''
    Section 101(a) of the PLTIA adds 35 U.S.C. 383 to provide that, 
``[i]n addition to any requirements pursuant to chapter 16, the 
international design application shall contain--(1) a request for 
international registration under the treaty; (2) an indication of the 
designated Contracting Parties; (3) data concerning the applicant as 
prescribed in the treaty and the Regulations; (4) 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 number and manner 
prescribed in the treaty and the Regulations; (5) 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 in 
the treaty and the Regulations; (6) the fees prescribed in the treaty 
and the Regulations; and (7) any other particulars prescribed in the 
Regulations.'' 126 Stat. at 1529-30.
    Article 6 of the Hague Agreement provides a right of priority with 
respect to international design applications. Article 6(1) provides 
that ``[t]he international design application may contain a declaration 
claiming, under Article 4 of the Paris Convention, the priority of one 
or more earlier applications filed in or for any country party to that 
Convention or any Member of the World Trade Organization.'' Article 
6(2) provides that ``[t]he international design application shall, as 
from its filing date and whatever may be its subsequent fate, be 
equivalent to a regular filing within the meaning of Article 4 of the 
Paris Convention.''
    Section 101(a) of the PLTIA adds 35 U.S.C. 386 to provide for a 
right of priority with respect to international design applications. 
Section 386(a) provides that ``[i]n accordance with the conditions and 
requirements of subsections (a) through (d) of section 119 and section 
172, a national application shall be entitled to the right of priority 
based on a prior international design application that designated at 
least 1 country other than the United States.'' 126 Stat. at 1529. 
Section 386(b) provides that ``[i]n accordance with the conditions and 
requirements of subsections (a) through (d) of section 119 and section 
172 and the treaty and the Regulations, an international design 
application designating the United States shall be entitled to the 
right of priority based on a prior foreign application, a prior 
international application as defined in section 351(c) designating at 
least 1 country other than the United States, or a prior international 
design application designating at least 1 country other than the United 
States.'' Id. Section 386(c) provides for domestic benefit claims with 
respect to international design applications designating the United 
States in accordance with the conditions and requirements of 35 U.S.C. 
120. 126 Stat. at 1529-30.
    Article 7 of the Hague Agreement and Rule 12 of the Hague Agreement 
Regulations provide for designation fees. Under Article 7(2) and Rule 
12(3), the designation fee may be an ``individual designation fee.'' 
Article 7(2) provides that for any Contracting Party whose Office is an 
Examining Office, the ``amount may be fixed by the said Contracting 
Party . . . for the maximum period of protection allowed by the 
Contracting Party concerned.'' Rule 12(3) provides that the individual 
designation fee may ``comprise two parts: The first part to be paid at 
the time of filing the international design application, and the second 
part to be paid at a later date which is determined in accordance with 
the law of the Contracting Party concerned.'' Rule 12(1) lists other 
fees concerning the international design application, including the 
basic fee and publication fee.
    Article 8(1) of the Hague Agreement and Rule 14 of the Hague 
Agreement Regulations provide that the International Bureau will 
examine the international design application for compliance with the 
requirements of the Hague Agreement and Regulations and invite the 
applicant to make any required correction within a prescribed time 
limit. Under Article 8(2), the failure to timely comply with the 
invitation will result in abandonment of the application, except where 
the irregularity concerns a requirement under Article 5(2) or a special 
requirement under the Regulations, in which case the failure to timely 
correct will result in the application being deemed not to contain the 
designation of the Contracting Party concerned.
    Article 9 of the Hague Agreement establishes the filing date of an 
international design application. Article 9(1) provides that ``[w]here 
the international application is filed directly with the International 
Bureau, the filing date shall, subject to [Article 9(3)], be the date 
on which the International Bureau receives the international 
application.'' Article 9(2) provides that ``[w]here the international 
application is filed through the Office of the applicant's Contracting 
Party, the filing date shall be determined as prescribed.'' The filing 
date of an international application filed with an office of indirect 
filing is prescribed in Rule 13(3) of the Regulations.
    Article 9(3) provides that ``[w]here the international application 
has, on the date on which it is received by the International Bureau, 
an irregularity which is prescribed as an irregularity entailing a 
postponement of the filing date of the international application, the 
filing date shall be the date on which the correction of such 
irregularity is received by the International Bureau.'' Rule 14(1) sets 
forth the time limit in which the applicant is required to correct such 
irregularities, and Rule 14(2) sets forth the irregularities entailing 
postponement of the filing date of the international design 
application.
    The PLTIA adds 35 U.S.C. 384, which provides in subsection (a) that 
the filing date of an international design application in the United 
States shall be the ``effective registration date'' subject to review 
under subsection (b). 126 Stat. at 1529. The term ``effective 
registration date'' is defined in Sec.  381(a)(5), added by the PLTIA, 
as ``the date of international registration determined by the 
International Bureau under the treaty.'' 126 Stat. at 1528. Section 
384(b) provides that ``[a]n applicant may request review by the 
Director of the filing date of the international design application in 
the United States,'' and that ``[t]he Director may determine that the 
filing date of the international design application in the United 
States is a date other than the effective registration date.'' 126 
Stat. at 1529. It also authorizes the Director to ``establish 
procedures, including the payment of a surcharge, to review the filing 
date under this section.'' Id. Section 384(a) also provides that ``any 
international design application designating the United States that 
otherwise meets the requirements of chapter 16 may be treated as a 
design application under chapter 16.'' Id.
    Article 10(1) of the Hague Agreement provides that ``[t]he 
International Bureau shall register each industrial design that is the 
subject of an international application immediately upon receipt by it 
of the international application or, where corrections are invited 
under Article 8, immediately upon receipt of the required 
corrections.'' Article 10(2) provides that ``[s]ubject to subparagraph 
(b), the date of the international registration shall be the filing 
date of the international application.'' Article 10(2)(b) provides that 
``[w]here the international application has, on the date on which it

[[Page 71873]]

is received by the International Bureau, an irregularity that relates 
to Article 5(2), the date of the international registration shall be 
the date on which the correction of such irregularity is received by 
the International Bureau or the filing date of the international 
application, whichever is the later.'' Under Rule 15(2) of the 
Regulations, ``the international registration shall contain (i) all the 
data contained in the international application . . .; (ii) any 
reproduction of the industrial design; (iii) the date of the 
international registration; (iv) the number of the international 
registration; [and] (v) the relevant class of the International 
Classification, as determined by the International Bureau.''
    Article 10(3)(a) of the Hague Agreement provides that ``[t]he 
international registration shall be published by the International 
Bureau.'' Under Article 10(3)(b), ``[t]he International Bureau shall 
send a copy of the publication of the international registration to 
each designated Office.''
    Section 101(a) of the PLTIA adds 35 U.S.C. 390 to provide that 
``[t]he publication under the treaty of an international design 
application designating the United States shall be deemed a publication 
under [35 U.S.C.] 122(b).'' 126 Stat. at 1531.
    Article 10(4) of the Hague Agreement provides that the 
International Bureau shall, subject to Articles 10(5) and 11(4)(b), 
keep each international application and international registration 
confidential until publication. Under Article 10(5)(a), ``[t]he 
International Bureau shall, immediately after registration has been 
effected, send a copy of the international registration, along with any 
relevant statement, document or specimen accompanying the international 
application, to each Office that has notified the International Bureau 
that it wishes to receive such a copy and has been designated in the 
international application.''
    Article 11 of the Hague Agreement provides for deferment of 
publication under certain conditions. Article 11(3) prescribes the 
procedure where a request for deferment is filed in an international 
design application designating a Contracting Party that has made a 
declaration under Article 11(1)(b) stating that deferment is not 
possible under its law.
    Article 12(1) of the Hague Agreement provides that ``[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. . . .'' Article 12(1) further 
provides 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 application that 
are provided for in [the Hague Agreement] or the Regulations or are 
additional to, or different from, those requirements have not been 
satisfied under the law of the Contracting Party concerned.'' Article 
12(2) provides that the refusal of the effects of an international 
registration shall be communicated to the International Bureau within 
the prescribed period and shall state the grounds on which the refusal 
is based. Under Rule 18(1) of the Hague Agreement Regulations, the 
prescribed period for sending the notification of refusal is six months 
from publication, or twelve months from publication where an office 
makes a declaration under Rule 18(1)(b). The declaration under Rule 
18(1)(b) may state that the international registration shall produce 
the effects under Article 14(2)(a) at the latest ``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 ``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 [Rule 18(1)(a) or (b)].'' See Rule 18(1)(c).
    Rule 18(2) provides that the notification of refusal ``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 . . ., (iv) where the refusal . . . is based 
[on] 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 . . . accessible to 
the public) and the name and address of the owner . . ., (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 (vii) the date on which the refusal was pronounced.''
    Article 12(3) of the Hague Agreement provides that ``[t]he 
International Bureau shall, without delay, transmit a copy of the 
notification of refusal to the holder,'' and that ``[t]he holder shall 
enjoy the same remedies as . . . if the international registration had 
been the subject of an application for a grant of protection under the 
law applicable to the Office that communicated the refusal.'' Under 
Article 12(4), ``[a]ny refusal may be withdrawn, in part or in whole, 
at any time.''
    Article 13 of the Hague Agreement permits a Contracting Party to 
notify the Director General in a declaration, where the Contracting 
Party's ``law, at the time it becomes party to this Act, requires that 
designs [in the] application conform to a requirement of unity of 
design, unity of production or unity of use, . . . or that only one 
independent and distinct design may be claimed in a single 
application.''
    Under Article 14(1) of the Hague Agreement, ``[t]he international 
registration shall, from the date of the international registration, 
have at least the same effect in each designated Contracting Party as a 
regularly filed application for the grant of protection of the 
industrial design under the law of that Contracting Party.''
    Section 101(a) of the PLTIA adds 35 U.S.C. 385 to provide that 
``[a]n international design application designating the United States 
shall have the effect, for all purposes, from its filing date . . . of 
an application for patent filed in the Patent and Trademark Office 
pursuant chapter 16 [of Title 35 of the United States Code].'' 126 
Stat. at 1529. The PLTIA also amends 35 U.S.C. 154 to provide for 
provisional rights in international design applications that designate 
the United States. 126 Stat. at 1531-32.
    Article 14(2) of the Hague Agreement provides that ``[i]n each 
designated Contracting Party the Office of which has not communicated a 
refusal in accordance with Article 12, the international registration 
shall have the same effect as a grant of [design protection] under the 
law of that Contracting Party at the latest from the date of expiration 
of the period allowed for it to communicate a refusal or, where a 
Contracting Party has made a corresponding declaration under the 
Regulations, at the latest at the time specified in that declaration.'' 
Article 14(2)(b) provides that ``[w]here the Office of a designated 
Contracting Party has communicated a refusal and has subsequently 
withdrawn, in part or in whole, that refusal, the international 
registration shall, to the extent that the refusal is withdrawn, have 
the same effect in that Contracting Party as a grant of [design 
protection] under the law of said Contracting Party from the date on 
which the refusal was withdrawn.'' Rule

[[Page 71874]]

18(4) of the Hague Agreement Regulations sets forth the required 
contents of a notification of withdrawal of refusal. Alternatively, 
under Rule 18bis(2), the office of a Contracting Party may send the 
International Bureau a statement of grant of protection in lieu of a 
notification of withdrawal of refusal.
    Article 16 of the Hague Agreement and Rule 21 of the Hague 
Agreement Regulations provide for the recording of certain changes in 
the International Register by the International Bureau, such as changes 
in ownership or the name or address of the holder. Under Article 16(2), 
any such recording at the International Bureau ``shall have the same 
effect as if it had been made in the Register of the Office of each of 
the Contracting Parties concerned, except that a Contracting Party may, 
in a declaration, notify the Director General that a recording [of a 
change in ownership] shall not have that effect in that Contracting 
Party until the Office of that Contracting Party has received the 
statements or documents specified in that declaration.''
    Under Article 17 of the Hague Agreement, an ``international design 
registration shall be effected for an initial term of five years 
counted from the date of international registration'' and ``may be 
renewed for additional terms of five years in accordance with the 
prescribed procedure and subject to payment of the prescribed fees.'' 
The initial term of protection and additional terms may be replaced by 
a maximum period of protection allowed by a Contracting Party. See 
Article 7(2). The PLTIA amends 35 U.S.C. 173 to set the term of a 
design patent to 15 years from date of grant. 126 Stat. at 1532.
    The PLTIA adds 35 U.S.C. 387 to allow the Director to establish 
procedures, including a requirement for payment of the fee specified in 
35 U.S.C. 41(a)(7), to excuse as to the United States ``[a]n 
applicant's failure to act within prescribed time limits in connection 
with requirements pertaining to an international design application'' 
upon a showing of unintentional delay. 126 Stat. at 1530.
    Hague Agreement Rule 8, as recently amended by the Hague Union 
Assembly and to enter into force as of January 1, 2014 (see WIPO 
Assembly Draft Report, H/A/32/3 Prov. (October 2, 2013), available at 
http://www.wipo.int/meetings/en/details.jsp?meeting_id=29895) provides 
for special requirements concerning the applicant and the creator. 
Under Rule 8(1)(a)(ii), ``[w]here the law of a Contracting Party bound 
by the 1999 Act requires the furnishing of an oath or declaration of 
the creator, that Contracting Party may, in a declaration, notify the 
Director General of that fact.'' Rule 8(1)(b) provides that the 
declarations referred in Rule 8(1)(a)(i) and (a)(ii) shall specify the 
form and mandatory contents of any required statement, document, oath 
or declaration. Rule 8(3) provides that ``[w]here an international 
application contains the designation of a Contracting Party that has 
made the declaration referred to in paragraph (1)(a)(ii) it shall also 
contain indications concerning the identity of the creator of the 
industrial design.'' See discussion of Sec.  1.1021(d).
    Relevant documents, including the implementing legislation (title I 
of the PLTIA), Senate Committee Reports, and the Transmittal Letter, 
are available on the Web site at http://www.uspto.gov/patents/int_protect/index.jsp. This Web site also contains a link to WIPO's Web 
site, which makes available relevant treaty documents, at http://www.wipo.int/hague/en/legal_texts/.

Discussion of Specific Rules

    The following is a discussion of proposed amendments to Title 37 of 
the Code of Federal Regulations, Parts 1, 3, 5 and 11.
    Rules referencing priority or benefit under 35 U.S.C. 119, 120, 
121, or 365: The Office proposes to reference 35 U.S.C. 386(a) and (b) 
where the current rules contain a reference to priority under 35 U.S.C. 
119(a)-(d) or 365(a) or (b); and to reference 35 U.S.C. 386(c) where 
the current rules contain a reference to benefit under 35 U.S.C. 120, 
121, or 365(c). Section 101(a) of the PLTIA adds 35 U.S.C. 386 to 
provide for a right of priority with respect to international design 
applications. 126 Stat. at 1529-30. The proposed references are 
required to account for the right of priority established under 35 
U.S.C. 386.
    Section 1.4: Section 1.4(a)(2) is proposed to be amended to include 
a reference to the proposed rules relating to international design 
applications in subpart I.
    Section 1.5: Section 1.5(a) is proposed to be amended to provide 
that the international registration number may be used on 
correspondence directed to the Office to identify an international 
design application. The international registration number is the number 
assigned by the International Bureau upon registration of the 
international design in the International Register. See Rule 15 of the 
Regulations.
    Section 1.6: Section 1.6(d)(3) is proposed to be amended to include 
the filing of an international design application among the 
correspondence for which facsimile transmission is not permitted, and 
if submitted, will not be accorded a receipt date. This is consistent 
with the treatment of the filing of national patent applications and 
international applications under the Patent Cooperation Treaty 
(``PCT'').
    Section 1.6(d)(4) is proposed to be amended to prohibit the filing 
of color drawings by facsimile in an international design application. 
This is consistent with the treatment of color drawings in national 
applications and international applications under the PCT.
    Section 1.6(d)(6) is proposed to be amended to change ``a patent 
application'' to ``an application'' to clearly prohibit the submission 
of correspondence by facsimile in an international design application 
that is subject to a secrecy order under Sec. Sec.  5.1 through 5.5.
    Section 1.8: Section 1.8(a)(2)(i) is proposed to be amended to add 
a new paragraph (K) to include the filing of an international design 
application among the correspondence that will not receive benefit from 
a Certificate of Mailing or Transmission. See discussion of Sec.  
1.6(d)(3), supra.
    Section 1.9: Sections 1.9(a)(1) and 1.9(a)(3) are proposed to be 
amended to include in the definitions of ``national application'' and 
``nonprovisional application,'' respectively, an international design 
application filed under the Hague Agreement for which the Office has 
received a copy of the international registration pursuant to Hague 
Agreement Article 10. Pursuant to 35 U.S.C. 385, added by section 
101(a) of the PLTIA, an international design application that 
designates the United States has the effect from its filing date of an 
application for patent filed in the United States Patent and Trademark 
Office pursuant to 35 U.S.C. chapter 16. 126 Stat. at 1529. The filing 
date of an international design application is, subject to review, the 
international registration date. See discussion of Sec.  1.1023, infra. 
Under Article 10, the International Bureau will send a copy of the 
international registration to each designated office after publication 
(Article 10(3)) or, upon notification by the Contracting Party, 
immediately after international registration (Article 10(5)). 
Consequently, the Office will receive a copy of the international 
registration pursuant to Article 10 only if the United States has been 
designated.
    Sections 1.9(l) and 1.9(m) are proposed to be added to define 
``Hague Agreement,'' ``Hague Agreement Article,'' ``Hague Agreement 
Regulations,'' and ``Hague Agreement

[[Page 71875]]

Rule'' as used in chapter I of Title 37 of the Code of Federal 
Regulations (``CFR'').
    Section 1.9(n) is proposed to be added to define ``international 
design application'' as used in chapter I of Title 37 of the CFR. 
Section 1.9(n) further provides that unless otherwise clear from the 
wording, reference to ``design application'' or ``application for a 
design patent'' in chapter I of the CFR includes an international 
design application that designates the United States.
    Section 1.14: Section 1.14(a)(1) is proposed to be amended to add a 
reference to added paragraph (j) concerning international design 
applications.
    Section 1.14(a)(1)(ii) is proposed to be amended to replace the 
reference to ``abandoned application that has been published as a 
patent application publication'' with a reference to ``abandoned 
published application.'' This change is consistent with the language of 
Sec.  1.11(a) to which Sec.  1.14(a)(1)(ii) refers. In addition, the 
term ``published application'' is defined in Sec.  1.9(c) as ``an 
application for patent which has been published under 35 U.S.C. 
122(b).'' Pursuant to 35 U.S.C. 374 and 35 U.S.C. 390, international 
applications and international design applications that designate the 
United States and are published under the respective treaty, ``shall be 
deemed a publication under section 122(b).'' Accordingly, a published 
application for purposes of Sec.  1.14 will include a publication by 
the International Bureau of either an international application under 
the PCT or an international design application under the Hague 
Agreement that designates the United States. Access to such published 
applications is permitted under PCT Article 30 and Hague Agreement 
Article 10. In contrast, the term ``patent application publication'' 
refers to a publication by the Office under Sec.  1.215. The Office 
does not intend to publish international design applications (see Sec.  
1.211), as international design applications are published by the 
International Bureau under the Hague Agreement in English. See Hague 
Agreement Article 10(3) and Rule 6(2). See also 35 U.S.C. 390, added by 
the PLTIA, deeming a publication under the Hague Agreement as a 
publication under 35 U.S.C. 122(b). 126 Stat. at 1531. In addition, the 
Office does not publish applications for design patents under 35 U.S.C. 
chapter 16. See Sec.  1.211(b).
    Sections 1.14(a)(1)(iv)-(vi) are proposed to be amended to include 
a publication of an international registration under Hague Agreement 
Article 10(3) among the publications for which access to an unpublished 
application may be obtained. Section 1.14(a)(1)(iv) is proposed to be 
amended to permit access to the file contents of an unpublished 
abandoned application where the application is identified in the 
publication of an international registration under Hague Agreement 
Article 10(3), or where benefit of the application is claimed under 35 
U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has 
issued as a U.S. patent, or has published as a statutory invention 
registration, a U.S. patent application publication, an international 
publication of an international application under PCT Article 21(2), or 
a publication of an international registration under Hague Agreement 
Article 10(3). Section 1.14(a)(1)(v) is proposed to be amended to 
permit access to the file contents of an unpublished pending 
application where benefit of the application is claimed under 35 U.S.C. 
119(e), 120, 121, 365(c), or 386(c) in an application that has issued 
as a U.S. patent, or has published as a statutory invention 
registration, a U.S. patent application publication, an international 
publication under PCT Article 21(2), or a publication of an 
international registration under Hague Agreement Article 10(3). Section 
1.14(a)(1)(vi) is proposed to be amended to permit access to a copy of 
the application as originally filed of an unpublished pending 
application if the application is incorporated by reference or 
otherwise identified in a U.S. patent, a statutory invention 
registration, a U.S. patent application publication, an international 
publication under PCT Article 21(2), or a publication of an 
international registration under Hague Agreement Article 10(3).
    Section 1.14(a)(1)(vii) is proposed to be amended consistent with 
amendments to Sec.  1.14(a)(1)(iv)-(vi).
    Section 1.14(j) is proposed to be added to set forth the conditions 
under which the records of an international design application 
maintained by the Office will be made available to the public.
    Section 1.14(j)(1) provides that with respect to an international 
design application maintained by the Office in its capacity as a 
designated office for national processing, the records associated with 
the international design application may be made available as provided 
under Sec.  1.14(a)-(i). Under Hague Agreement Article 10(5), the 
Office is to keep international design registrations confidential until 
publication of the international registration by the International 
Bureau. This provision does not alter the Office's long-standing 
practice to make application files available to the public to satisfy 
the Constitutionally mandated quid pro quo requiring public disclosure 
of patented inventions. See United States ex rel. Pollok v. Hall, 1889 
Dec. Comm'r Pat. 582, 48 O.G. 1263 (DC 1988) (recognizing that the 
rights of exclusivity and confidentiality stem from Article I, Section 
8, clause 8, of the Constitution in holding that the Office must make 
available to the public an abandoned application specifically 
referenced in a patent); P.J. Federico, Commentary on the New Patent 
Act, reprinted in 75 J. Pat. & Trademark Off. Soc'y 161, 196-197 (1993) 
(as background discussion to the addition of section 122 to the 1952 
Patent Act, noting that for nearly 100 years the Office has had 
regulations requiring that applications be maintained confidential 
while recognizing public accessibility when an abandoned application is 
referenced in later issued patent); see also Metropolitan West Side 
Elevated Railroad Company et al. v. Siemans, 1898 Dec. Comm'r Pat. 220, 
222 85 O.G. 290 (Comm'r Pat. 1898); In re Reed Mfg. Co., 1900 Dec. 
Comm'r Pat. 140, 92 O.G. 2001 (Comm'r Pat. 1900); Ex parte Lewis and 
Unger, 1903 Dec. Comm'r Pat. 303, 106 O.G. 543 (Comm'r Pat. 1903); In 
re Doman, 1905 Dec. Comm'r Pat. 101, 115 O.G. 804 (Comm'r Pat. 1905). 
As a designated office, the Office will establish a file for national 
processing upon receipt of the published international registration 
from the International Bureau. In such cases, the records of the 
application file will be available pursuant to Sec.  1.14(a)(ii)-(iii). 
The provisions of Sec.  1.14(j)(1) provide for access to such 
international design applications maintained by the Office for national 
processing, thus treating international design applications the same as 
regular national applications.
    Section 1.14(j)(2) provides that with respect to an international 
design application maintained by the Office in its capacity as an 
office of indirect filing (Sec.  1.1002), the records of the 
international design application may be available under Sec.  
1.14(j)(1) when they are contained in the file of the international 
design application maintained by the Office for national processing. 
Also, if benefit of the international design application is claimed 
under 35 U.S.C. 386(c) in a U.S. patent or published application, the 
file contents may be made available to the public, or a copy of the 
application-as-filed, the file contents of the application, or a 
specific document in the file of the application may be provided to any 
person upon written

[[Page 71876]]

request, and payment of the appropriate fee (Sec.  1.19(b)). The Office 
plans to use the application file maintained by the Office as an office 
of indirect filing as the file for national processing as a designated 
office. Consequently, the records maintained by the Office as an office 
of indirect filing may be available where the records are part of the 
file maintained by the Office as a designated office and are available 
pursuant to Sec.  1.14(j)(1). The records maintained by the Office as 
an office of the indirect filing may also be available where benefit to 
the international design application is claimed under 35 U.S.C. 386(c) 
in a U.S. patent or published application. Under the provisions of 35 
U.S.C. 386(c) and 35 U.S.C. 388, applicants may claim benefit to an 
international design application that designates the United States 
provided the application claiming benefit of the international design 
application is filed before the date of withdrawal, renunciation, 
cancellation, or abandonment of the international application, either 
generally or as to the United States.
    Section 1.16: Sections 1.16(b), (l) and (p) are proposed to be 
amended to clarify that the design application fees specified therein 
are applicable to design applications filed under 35 U.S.C. 111. The 
other provisions of section 1.16 are not proposed to change.
    Section 1.17: Section 1.17(f) is proposed to be amended to specify 
the fee for filing a petition under Sec.  1.1023 to review the filing 
date of an international design application in the United States. 
Section 101(a) of the PLTIA adds 35 U.S.C. 384, which provides that the 
filing date of an international application in the United States is the 
effective registration date (35 U.S.C. 384(a)), and authorizes the 
Director to establish procedures, including the payment of a surcharge, 
to review the filing date, which may result in a determination that the 
application has a filing date in the United States other than the 
effective registration date (35 U.S.C. 384(b)). 126 Stat. at 1529. The 
review procedure authorized under 35 U.S.C. 384(b) is set forth in 
proposed Sec.  1.1023, discussed infra, which requires, inter alia, the 
fee set forth in Sec.  1.17(f). Under 35 U.S.C. 389(b), added by the 
PLTIA, all questions of procedures regarding an international design 
application designating the United States, unless required by the Hague 
Agreement and regulations thereunder, shall be determined as in the 
case of applications filed under 35 U.S.C. chapter 16. 126 Stat. at 
1530. Accordingly, pursuant to the authority under 35 U.S.C. 389(b), 
the fee for filing a petition to review the filing date of an 
international design application under Sec.  1.1023 is the same as the 
fee for filing a petition to accord a filing date in a national 
application (see Sec. Sec.  1.53(e) and 1.57(a)).
    Section 1.17(u) is proposed to be added to set forth the fee for 
filing a petition to excuse an applicant's failure to act within 
prescribed time limits in an international design application. Section 
101(a) of the PLTIA adds 35 U.S.C. 387 to provide that an applicant's 
failure to act within prescribed time limits in connection with 
requirements pertaining to an international design application may be 
excused as to the United States upon a showing satisfactory to the 
Director of unintentional delay and under such conditions, including a 
requirement for payment of the fee specified in 35 U.S.C. 41(a)(7), as 
may be prescribed by the Director. 126 Stat. at 1530. The conditions 
for excusing an applicant's failure to act within the prescribed time 
limits in an international design application are set forth in proposed 
Sec.  1.1051, discussed infra. These requirements include, inter alia, 
the requirement to pay the fee set forth in Sec.  1.17(u). The fee set 
forth in Sec.  1.17(u) does not include a micro entity amount as this 
fee is set under 35 U.S.C. 41(a)(7) as amended by section 202(b)(1)(A) 
of the PLTIA, and not section 10(a) of the AIA. Section 10(b) of the 
AIA provides that the micro entity discount applies to fees set under 
section 10(a) of the AIA. See Pub. L. 112-29, 125 Stat. 284, 316-17 
(2011). The Office will consider including a micro entity amount in 
Sec.  1.17(u) in the event that patent fees are again set or adjusted 
under section 10(a) of the AIA.
    Section 1.17(v) is proposed to be added to specify the fee for 
filing a petition under Sec.  1.1052 to convert an international design 
application to a design application under 35 U.S.C. chapter 16. See 
discussion of Sec.  1.1052, infra. The petition fee is not being set 
pursuant to section 10(a) of the AIA. Rather, the Office is setting 
this fee in this rulemaking pursuant to its authority under 35 U.S.C. 
41(d)(2), which provides that fees for all processing, services, or 
materials relating to patents not specified in 35 U.S.C. 41 are to be 
set at amounts to recover the estimated average cost to the Office of 
such processing, services, or materials.
    The Office uses an Activity Based Information (``ABI'') methodology 
to determine the estimated average costs (or expense) on a per process, 
service, or material basis including the particular processes and 
services addressed in this rulemaking. The ABI analysis includes 
compiling the Office costs for a specified activity, including the 
direct-expense (e.g., direct personnel compensation, contract services, 
maintenance and repairs, communications, utilities, equipment, 
supplies, materials, training, rent and program-related information 
technology (``IT'') automation), an appropriate allocation of allocated 
direct expense (e.g., rent, program-related automation, and personnel 
compensation benefits such as medical insurance and retirement), and an 
appropriate allocation of allocated indirect expense (e.g., general 
financial and human resource management, nonprogram specific IT 
automation, and general Office expenses). The direct expense for an 
activity plus its allocated direct expense and allocated indirect 
expense is the ``fully burdened'' expense for that activity. The 
``fully burdened'' expense for an activity is then divided by 
production measures (number of that activity completed) to arrive at 
the fully burdened per-unit cost for that activity. The cost for a 
particular process is then determined by ascertaining which activities 
occur for the process, and how often each such activity occurs for the 
process. The ABI analysis in this rulemaking is based upon fiscal year 
2012 expense. The prospective fees are calculated using the ABI expense 
and applying adjustment factors to estimate the cost in fiscal year 
2015 expense, as fiscal year 2015 may be the next opportunity to 
consider whether to revisit the fees under section 10(a) of the AIA. 
This analysis uses 2012 expense as a proxy and adjusts for yearly 
inflation in the out-years.
    The Office is estimating the fiscal year 2015 cost in this 
rulemaking by using the projected change in the Consumer Price Index 
for All Urban Consumers (``CPI-U'') for fiscal years 2013, 2014, and 
2015, as the CPI-U is a reasonable basis for determining the change in 
Office costs between fiscal year 2012 and fiscal year 2015. The 
individual CPI-U during each fiscal year is multiplied together to 
obtain a cumulative CPI-U from fiscal year 2013 through fiscal year 
2015. The CPI-U increase for fiscal year 2013 is forecasted to be 2.1 
percent. The CPI-U increase for fiscal year 2014 is forecasted to be 
2.2 percent. The CPI-U increase for fiscal year 2015 is forecasted to 
be 2.2 percent. See http://www.whitehouse.gov/sites/default/files/omb/budget/fy2014/assets/spec.pdf. Thus, the estimated fiscal year 2015 
cost amounts are calculated by multiplying the actual expense amount 
for fiscal year 2012 by 1.066 (1.021

[[Page 71877]]

multiplied by 1.022 multiplied by 1.022 equals 1.066). The estimated 
fiscal year 2015 cost amounts are then rounded to the nearest ten 
dollars by applying standard arithmetic rules so that the resulting fee 
amounts will be convenient for international design application users.
    The processing of a petition to convert an international design 
application to a design application under 35 U.S.C. chapter 16 involves 
review and preparation of a decision for the petition. An estimate for 
the number of hours required for a GS-12, Step 5 attorney to review the 
petition and draft a decision is two hours. The ABI analysis indicates 
that the estimated fully burdened expense during fiscal year 2012 to 
review and prepare a decision for the petition is $172 ($86 fully 
burdened labor cost per hour multiplied by 2). Thus, the Office 
estimates the fiscal year unit cost to review the petition and draft a 
decision, using the estimated CPI-U increase for fiscal years 2013, 
2014, and 2015, is $183 ($172 multiplied by 1.066), which, when rounded 
to the nearest ten dollars, is a proposed fee for conversion of $180. 
Additional information concerning the Office's analysis of the 
estimated fiscal year 2015 costs for converting an international design 
application to a design application under 35 U.S.C. chapter 16 is 
available upon request.
    Section 1.18: Section 1.18(b)(3) is proposed to be added to provide 
that an issue fee paid through the International Bureau in an 
international design application designating the United States shall be 
in the amount specified on the Web site of the WIPO, available at: 
http://www.wipo.int/hague. The option for applicants to pay the issue 
fee through the International Bureau is provided for in Hague Agreement 
Rule 12(3)(c) and is in lieu of paying the issue fee under Sec.  
1.18(b)(1). Article 7(2) permits a Contracting Party to declare that 
the prescribed designation fee shall be replaced by an individual 
designation fee, whose amounts can be changed in further declarations. 
The International Bureau accepts payment only in Swiss currency (see 
Hague Agreement Rule 28(1)) and all fee amounts specified on the WIPO 
Web site are in Swiss currency.
    Section 1.25: Section 1.25(b) is proposed to be amended to provide 
that international design application fees (Sec.  1.1031) may be 
charged to a deposit account.
    Section 1.27: Section 1.27(c)(3) is proposed to be amended to 
provide that the payment, by any party, of the exact amount of the 
small entity first part of the individual designation fee for the 
United States (Hague Agreement Rule 12(1)(a)(iii)) to the International 
Bureau in an international design application will be treated as a 
written assertion of entitlement to small entity status. The proposed 
change to Sec.  1.27(c)(3) will permit applicants paying fees to the 
International Bureau in an international design application designating 
the United States to establish small entity status for the purposes of 
the United States.
    Section 1.29: Section 1.29(e) is proposed to be amended to provide 
that a micro entity certification filed in an international design 
application may be signed by a person authorized to represent the 
applicant under Sec.  1.1041(a) before the International Bureau where 
the micro entity certification is filed with the International Bureau.
    Section 1.41: Section 1.41(f) is proposed to be added to set forth 
the inventorship in an international design application designating the 
United States. Specifically, the inventorship of an international 
design application designating the United States is the creator or 
creators set forth in the publication of the international registration 
under Hague Agreement Article 10(3). Any correction of inventorship 
must be pursuant to Sec.  1.48.
    Section 1.46: Section 1.46(b) is proposed to be amended to provide 
that if an application entering the national stage under 35 U.S.C. 371, 
or an international design application before the United States as a 
designated office, is applied for by a person other than the inventor 
under Sec.  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, as provided under 
35 U.S.C. 118) that person must have been identified as the applicant 
for the United States in the international stage of the international 
application or as the holder in the publication of the international 
registration under Hague Agreement Article 10(3). The proposed 
amendment does not change the current practice with respect to national 
stage applications under 35 U.S.C. 371, where a person seeking to 
become an applicant under Sec.  1.46 in the national phase was not 
named as an applicant for the United States in the international phase. 
In such case, that person must comply with the requirements under Sec.  
1.46(c), including the requirements of Sec. Sec.  3.71 and 3.73, to be 
an applicant in the national phase. The proposed amendment treats 
international design applications in the same manner as international 
applications under the PCT. See discussion of Sec.  1.1011(b), infra, 
regarding who may be an applicant for an international design 
application designating the United States.
    Section 1.46(c) is proposed to be amended to provide that any 
request to correct or update the name of the applicant under this 
section must include an application data sheet under Sec.  1.76 
specifying the correct or updated name of the applicant in the 
applicant information section (Sec.  1.76(b)(7)), except that 
correction of the name of the applicant may be made pursuant to Hague 
Agreement Article 16 for an international design application. Section 
1.46(c) is also proposed to be amended to provide that any request to 
replace the original applicant with an applicant under Sec.  1.46 must 
include an application data sheet under Sec.  1.76 specifying the 
applicant in the applicant information section (Sec.  1.76(b)(7)) and 
comply with Sec. Sec.  3.71 and 3.73.
    Article 16(1)(ii) provides for recording in the International 
Register by the International Bureau of a change in the name and 
address 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. Accordingly, Sec.  1.46(c) is proposed to be amended to 
recognize a change in the name of the holder (i.e., applicant) in an 
international design application designating the United States, where 
the name change was recorded by the International Bureau pursuant to 
Article 16. Article 16 also provides for the recording of a change in 
ownership of the international registration, the effect of which may be 
made subject to the Office of the Contracting Party receiving the 
statement or documents it specifies in a declaration. In such case, the 
new owner may become an applicant in the international design 
application before the Office for national processing in accordance 
with the procedure set forth in Sec.  1.46(c).
    Section 1.53: Section 1.53(d)(1)(ii) is proposed to be amended to 
provide that a continued prosecution application (``CPA'') of a prior 
nonprovisional application may be filed where the prior nonprovisional 
application is a design application, but not an international design 
application, that is complete as defined by Sec.  1.51(b). Under 
current Sec.  1.53(d), a CPA may be filed where the prior 
nonprovisional application is a design application that is complete as 
defined by Sec.  1.51(b). The filing of a CPA of a prior nonprovisional 
international design application would not be appropriate, as a CPA is 
a design application under 35 U.S.C. chapter 16

[[Page 71878]]

and thus subject to different statutory and regulatory requirements 
relative to a nonprovisional international design application.
    Section 1.55: Section 1.55(b) is proposed to be amended to provide 
that the six-month period specified in that paragraph is subject to 
Hague Agreement Rule 4(4). Rule 4(4) provides that if a period expires 
on a day on which the International Bureau or the Office concerned is 
not open to the public, the period shall expire on the first subsequent 
day on which the International Bureau or the Office concerned is open 
to the public. Section 101(a) of the PLTIA adds 35 U.S.C. 386(b) which 
provides: ``[i]n accordance with the conditions and requirements of 
subsections (a) through (d) of section 119 and section 172 and the 
treaty and the Regulations, an international design application 
designating the United States shall be entitled to the right of 
priority based on a prior foreign application . . . .'' 126 Stat. at 
1529. Thus, pursuant to 35 U.S.C. 386(b), the priority period in an 
international design application designating the United States is 
subject to extension under Rule 4(4).
    Section 1.55(m) is proposed to be added to set forth the time for 
filing a priority claim and certified copy of a foreign application in 
an international design application designating the United States. 
Section 1.55(m) provides that in an international design application 
designating the United States, the claim for priority may be made in 
accordance with the Hague Agreement and the Hague Agreement 
Regulations. Section 1.55(m) further provides that for purposes of the 
United States, the priority claim may also be presented in an 
application data sheet (Sec.  1.76(b)(6)), filed directly with the 
Office after publication of the international design application under 
Article 10(3) of the Hague Agreement, identifying the foreign 
application for which priority is claimed by specifying the application 
number, country (or intellectual property authority), day, month, and 
year of its filing. The priority claim and certified copy must be 
furnished in accordance with the time period and other conditions set 
forth in paragraph (g).
    Section 1.57: Section 1.57(a) is proposed to be amended by revising 
paragraph (a) to include a new paragraph (a)(3) and to renumber 
paragraph (3) as paragraph (4). Section 101(a) of the PLTIA adds 35 
U.S.C. 386 to provide for a right of priority to an international 
design application. 126 Stat. at 1529-30. Accordingly, Sec.  1.57(a) is 
proposed to be amended to provide for incorporation by reference to an 
inadvertently omitted portion of the specification or drawings based on 
a benefit claim under 1.78 to an international design application 
present upon filing, and to provide that any amendment to an 
international design application that designates the United States 
pursuant to Sec.  1.57(a) shall be effective only as to the United 
States, and shall have no effect on the filing date of the application.
    Section 1.76: Section 1.76(b)(6) is proposed to be amended to 
provide that the foreign priority information section of the 
application data sheet may include the intellectual property authority 
rather than country of filing. This change is for consistency with the 
requirements of 35 U.S.C. 119(b) and Sec.  1.55.
    Section 1.78: Section 101(a) of the PLTIA adds 35 U.S.C. 386(c) to 
provide for benefit claims with respect to international design 
applications designating the United States in accordance with the 
conditions and requirements of 35 U.S.C. 120. 126 Stat. at 1529-30. 
Accordingly, Sec.  1.78(c) is proposed to be amended to provide for 
benefit claims under 35 U.S.C. 386(c). Section 1.78(c)(1)(iii) is added 
to provide that the prior-filed application to which benefit is claimed 
may be an international design application designating the United 
States that is entitled to a filing date as set forth in Sec.  1.1023.
    Section 1.78(c)(2) is proposed to be amended to provide that the 
reference required under Sec.  1.78(c)(2) may identify an international 
design application by international registration number and 
international registration date.
    Section 1.78(c)(7) is proposed to be added to provide that where 
benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) to an 
international application or an international design application, which 
designates but did not originate in the United States, the Office may 
require a certified copy of such application together with an English 
translation thereof if filed in another language. The authority to 
require a certified copy of an international design application that 
designates the United States but did not originate in the United 
States, and an English translation thereof, is provided in 35 U.S.C. 
386(c). Similar authority with respect to international applications 
that designate the United States but do not originate in the United 
States is provided in 35 U.S.C. 365(c). Since international 
applications are published under PCT Article 21(2), and international 
design applications are published under Hague Agreement Article 10(3), 
the Office would not ordinarily require a certified copy of the 
international application or international design application pursuant 
to Sec.  1.78(c)(7). Rather, the Office foresees the authority under 
Sec.  1.78(c)(7) to be used primarily in instances where the 
international application or international design application did not 
publish under the respective treaty, or where there is a question as to 
the content of the disclosure of the application as of its filing date, 
and the certified copy and any English translation are needed to 
determine entitlement to the benefit of the filing date of the 
international application or international design application in order 
to, for example, overcome a prior art reference.
    Section 1.78(d) is proposed to be amended to provide for acceptance 
of a delayed benefit claim to an international application designating 
the United States pursuant to the petition procedure set forth therein.
    Section 1.84: Section 1.84(y) is proposed to be amended to include 
a cross reference to international design application reproductions in 
proposed Sec.  1.1026.
    Section 1.85: Section 1.85(a) is proposed to be amended to provide 
that if a drawing in an international design application designating 
the United States meets the requirements of Sec.  1.1026, the drawing 
may be admitted for examination. Section 1.85(c) is proposed to be 
amended to provide that if a drawing in an international design 
application does not comply with Sec.  1.1026 at the time an 
application is allowed, the Office may notify the applicant in a notice 
of allowability and set a three-month period of time from the mail date 
of the notice of allowability within which the applicant must file a 
corrected drawing to avoid abandonment.
    Section 1.97: Section 1.97(b)(3) is proposed to be added to provide 
that an information disclosure statement may be filed within three 
months of the date of publication of the international registration 
under Hague Agreement Article 10(3) in an international design 
application. An information disclosure statement may also be submitted 
with the international design application. See Hague Agreement Rule 
7(5)(g) (``The international application may be accompanied by a 
statement that identifies information known by the applicant to be 
material to the eligibility for protection of the industrial design 
concerned.'').
    Section 1.105: Section 1.105(a)(1) is proposed to be amended to 
make a requirement for information under

[[Page 71879]]

Sec.  1.105 applicable to international design applications and 
supplemental examination proceedings.
    Section 1.114: Section 1.114(e) is proposed to be amended to 
provide that a request for continued examination may not be filed in an 
international design application. This is consistent with the treatment 
of applications for design patents under 35 U.S.C. chapter 16.
    Section 1.155: Section 1.155 is proposed to be amended to provide 
for expedited examination of an international design application that 
designates the United States. To qualify for expedited examination, 
Sec.  1.155(a)(1) provides that the international design application 
must be published pursuant to Hague Agreement Article 10(3).
    Section 1.211: Section 1.211(b) is proposed to be amended to 
provide that an international design application under 35 U.S.C. 
chapter 38 shall not be published by the Office under Sec.  1.211. 
International registrations are published by the International Bureau 
pursuant to Article 10(3) of the Hague Agreement. The international 
registration includes the data contained in the international design 
application and any reproduction of the industrial design. See Rule 
15(2) of the Regulations.
    Section 1.312: Section 1.312 is proposed to be amended to provide 
that where the issue fee is paid in an international design application 
through the International Bureau, the date of payment of the issue fee 
for purposes of determining the timeliness of an amendment under Sec.  
1.312 will be the date the issue fee is recorded by the Office. This 
date will be indicated as the accounting date in the Office's Revenue 
Accounting and Management System. Under the Hague Agreement, the issue 
fee may be paid through the International Bureau. An amendment under 
Sec.  1.312 filed after payment of the issue fee to the International 
Bureau but before the fee is recorded by the Office would be untimely 
under the current rule. Because of the inherent time lag between 
payment of the issue fee to the International Bureau and crediting of 
the issue fee to the account of the Office, the Office may not have 
sufficient information at the time of receipt of the amendment under 
Sec.  1.312 to determine whether such amendment may be entered under 
the current rule. The proposed amendment to Sec.  1.312 is more 
favorable to applicants and would facilitate processing of such 
amendments by the Office. In addition, since the application will not 
be scheduled for printing as a patent until the issue fee is recorded 
by the Office, the proposed amendment would not delay issuance of the 
patent.
    A new subpart I is proposed to be added to provide for 
international and national processing of international design 
applications.
    Section 1.1001: Section 1.1001 is proposed to be added to include 
definitions of terms used in subpart I.
    Section 1.1002: Section 1.1002 is proposed to be added to indicate 
the major functions of the USPTO as an office of indirect filing. These 
include: (1) Receiving and according a receipt date to international 
design applications; (2) collecting and, when required, transmitting 
fees for processing international design applications; (3) determining 
compliance with applicable requirements of part 5 of chapter I of Title 
37 of the CFR; and (4) transmitting an international design application 
to the International Bureau, unless prescriptions concerning national 
security prevent the application from being transmitted.
    Section 1.1003: Section 1.1003 is proposed to be added to indicate 
the major functions of the USPTO as a designated office. These include: 
(1) Accepting for national examination international design 
applications which satisfy the requirements of the Hague Agreement, 
Regulations and the regulations; (2) performing an examination of the 
international design application in accordance with 35 U.S.C. chapter 
16; and (3) communicating the results of examination to the 
International Bureau.
    Section 1.1004: Section 1.1004 is proposed to be added to indicate 
the major functions of the International Bureau. These include: (1) 
Receiving international design applications directly from applicants 
and indirectly from an office of indirect filing; (2) collecting 
required fees and crediting designation fees to the accounts of the 
Contracting Parties concerned; (3) reviewing international design 
applications for compliance with prescribed formal requirements; (4) 
translating international design applications into the required 
languages for recordation and publication; (5) recording international 
design applications in the International Register; and (6) publishing 
international design applications in the International Designs 
Bulletin.
    Section 1.1011: Section 1.1011(a) is proposed to be added to 
specify who may file an international design application through the 
USPTO. Under Article 3, any person that is a national of a State that 
is a Contracting Party or a State member of an intergovernmental 
organization that is a Contracting Party, or that has a domicile, a 
habitual residence or a real and effective industrial or commercial 
establishment in the territory of a Contracting Party, shall be 
entitled to file an international application. Under Article 4(1), the 
international application may be filed, at the option of the applicant, 
either directly with the International Bureau or through the Office of 
the applicant's Contracting Party (i.e., an office of indirect filing). 
In accordance with Articles 3 and 4(1), Sec.  1.1011(a) specifies that 
only persons who are nationals of the United States or who have a 
domicile, a habitual residence or a real and effective industrial or 
commercial establishment in the territory of the United States may file 
international design applications through the United States Patent and 
Trademark Office.
    Section 1.1011(b) is proposed to be added to provide that although 
the USPTO will accept international design applications filed by any 
person referred to in Sec.  1.1011(a), an international design 
application designating the United States may be refused by the Office 
as a designated office if the applicant is not a person qualified under 
35 U.S.C. chapter 11 to be an applicant. The PLTIA does not distinguish 
a person qualified to be an applicant for an international design 
application designating the United States from a person qualified to be 
an applicant in a national design application under 35 U.S.C. 171-173. 
See section 101(a) of the PLTIA, which adds: 35 U.S.C. 389(b) (``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.''); 35 U.S.C. 382(c) (``Except as 
otherwise provided in this chapter, the provisions of chapter 16 shall 
apply.''); and 35 U.S.C. 383 (``In addition to any requirements 
pursuant to chapter 16, the international design application shall 
contain . . .''). 126 Stat. at 1528-30.
    Section 1.1021: Section 1.1021 is proposed to be added to specify 
the contents of the international design application.
    Section 1.1021(a) specifies the mandatory contents of an 
international design application. The international design application 
must be in English, French or Spanish. In addition, the application 
shall contain or be accompanied by: (1) A request for international 
registration under the Hague Agreement (Article 5(1)(i)); (2) the 
prescribed data concerning the

[[Page 71880]]

applicant (Article 5(1)(ii) and Rule 7(3)(i) and (ii)); (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, however, where the industrial design is two-
dimensional and a request for deferment of publication is made in 
accordance with Article 5(5), the international design application may, 
instead of containing reproductions, be accompanied by the prescribed 
number of specimens of the industrial design (Article 5(1)(iii)); (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 (Article 5(1)(iv) and Rule 7(3)(iv)); (5) an indication of 
the designated Contracting Parties (Article 5(1)(v)); (6) the 
prescribed fees (Article 5(1)(vi) and Rule 12(1)); (7) the Contracting 
Party or Parties in respect of which the applicant fulfills the 
conditions to be the holder of an international registration (Rule 
7(3)(iii)); (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 (Rule 7(3)(v)); (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 (Rule 7(3)(vii)); and (10) an indication of 
applicant's Contracting Party as required under Rule 7(4)(a).
    Section 1.1021(b) sets forth additional mandatory contents that may 
be required by certain Contracting Parties. These include: (1) Elements 
referred to in Article 5(2)(b) required for a filing date in the 
designated Contracting Party for which a declaration was made by that 
Contracting Party; and (2) a statement, document, oath or declaration 
required pursuant to Rule 8(1) by a designated Contracting Party. The 
elements that may be required under Article 5(2)(b) are: (i) 
Indications concerning the identity of the creator; (ii) a brief 
description of the reproduction or of the characteristic features of 
the industrial design; and (iii) a claim.
    Section 1.1021(c) identifies optional contents that the 
international design application may contain. These include: (1) Two or 
more industrial designs, subject to the prescribed conditions (Article 
5(4) and Rule 7(7)); (2) a request for deferment of publication 
(Article 5(5) and Rule 7(5)(e)); (3) an element referred to in item (i) 
or (ii) of Article 5(2)(b) of the Hague Agreement or in Article 8(4)(a) 
of the 1960 Act even where that element is not required in consequence 
of a notification in accordance with Article 5(2)(a) of the Hague 
Agreement or in consequence of a requirement under Article 8(4)(a) of 
the 1960 Act (Rule 7(5)(a)); (4) the name and address of applicant's 
representative, as prescribed (Rule 7(5)(b)); (5) a claim of priority 
under Article 4 of the Paris Convention, as prescribed (Rule 7(5)(c)); 
(6) a declaration, for purposes of Article 11 of the Paris Convention, 
that the product or products which 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 (Rule 7(5)(d)); (7) any 
declaration, statement or other relevant indication as may be specified 
in the Administrative Instructions (Rule 7(5)(f)); (8) a statement that 
identifies information known by the applicant to be material to the 
eligibility for protection of the industrial design concerned (Rule 
7(5)(g)); and (9) a proposed translation of any text matter contained 
in the international application for purposes of recording and 
publication (Rule 6(4)).
    Section 1.1021(d) is proposed to be added to set forth the required 
contents for an international design application that designates the 
United States. Section 1.1021(d) provides that, in addition to the 
mandatory requirements set forth in Sec.  1.1021(a), an international 
design application that designates the United States shall contain or 
be accompanied by: (1) A claim (Sec. Sec.  1.1021(b)(1)(iii) and 
1.1025); (2) indications concerning the identity of the creator (Rule 
11(1)); and (3) the inventor's oath or declaration (Sec. Sec.  1.63 and 
1.64). Section 1.1021(d)(3) further provides that the requirements in 
Sec.  1.63(b) and Sec.  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 Sec.  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.
    Under Article 5(2), a Contracting Party may require an 
international design application to contain certain additional 
elements, where the law of that Contracting Party, at the time it 
becomes a party to the Hague Agreement, requires the application to 
contain such elements to be accorded a filing date. The elements set 
forth in Article 5(2) are: (1) Indications concerning the identity of 
the creator of the industrial design; (2) a brief description of the 
reproduction or of the characteristic features of the industrial 
design; and (3) a claim. Article 5(2) permits a Contracting Party to 
notify the Director General of the elements required in order for the 
application to be accorded a filing date.
    A claim is a filing date requirement for design applications in the 
United States. While the PLTIA, in implementing the Patent Law Treaty, 
eliminates the requirement for a claim as a filing date requirement in 
utility applications, it does not eliminate the requirement for a claim 
as a filing date requirement for design applications. See section 202 
of the PLTIA amending 35 U.S.C. 171 to provide that ``[t]he filing date 
of an application for patent for design shall be the date on which the 
specification as prescribed by [35 U.S.C.] 112 and any required 
drawings are filed.'' 126 Stat. 1535. The specific wording of the claim 
shall be as prescribed in Sec.  1.1025. Id. Consequently, an 
international design application that designates the United States but 
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 35 U.S.C. 384 and Article 10(2). 
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 filing date defects). See Article 
10(2)(b). 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).
    Section 1.1021(d) also requires an international design application 
designating the United States to contain indications concerning the 
identity of the creator of the industrial design and the inventor's 
oath or declaration

[[Page 71881]]

(Sec. Sec.  1.63 or 1.64). The identity of the creator and the 
inventor's oath or declaration are requirements applicable to design 
applications under 35 U.S.C. chapter 16. See, e.g., 35 U.S.C. 115 and 
35 U.S.C. 101. The PLTIA provides for parity in the treatment of 
international design applications designating the United States with 
design applications under 35 U.S.C. chapter 16, except where otherwise 
provided by the PLTIA, Hague Agreement, or Regulations. See, e.g., 35 
U.S.C. 389(b) (``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.''); 
35 U.S.C. 382(c) (``Except as otherwise provided in this chapter, the 
provisions of chapter 16 shall apply.''); and 35 U.S.C. 383 (``In 
addition to any requirements pursuant to chapter 16, the international 
design application shall contain . . .''). 126 Stat. at 1528-30. See 
also discussion of Hague Agreement Rule 8, supra.
    Section 1.1022: Section 1.1022 is proposed to be added to specify 
form and signature requirements for international design applications. 
Section 1.1022(a) provides that the international design application 
shall be presented on the official form or any form having the same 
contents and format. See Rules 7(1) and 1(vi). Section 1.1022(b) 
provides that the international design application shall be signed by 
the applicant. Id.
    Section 1.1023: The filing date of an international design 
application in the United States is set forth in 35 U.S.C. 384, added 
by section 101 of the PLTIA, which provides ``[s]ubject to subsection 
(b), the filing date of an international design application in the 
United States shall be the effective registration date.'' 126 Stat. at 
1529. The term ``effective registration date'' is defined in 35 U.S.C. 
381(a)(5) as ``the date of international registration determined by the 
International Bureau under the treaty.'' 126 Stat. at 1528. 
Accordingly, Sec.  1.1023(a) is proposed to be added to set forth that 
the filing date of an international design application in the United 
States is the date of international registration determined by the 
International Bureau, subject to review under subsection (b).
    Section 1.1023(b) is proposed to be added to set forth a procedure 
to review the filing date of an international design application. 
Pursuant to 35 U.S.C. 384(b), ``[t]he Director may establish 
procedures, including the payment of a surcharge, to review the filing 
date under this section. Such review may result in a determination that 
the application has a filing date in the United States other than the 
effective registration date.'' 126 Stat. at 1529. Accordingly, Sec.  
1.1023(b) provides that where the applicant believes the international 
design application is entitled under the Hague Agreement to a filing 
date in the United States other than the date of international 
registration, the applicant may petition the Director to accord the 
international design application a filing date in the United States 
other than the date of international registration. Section 1.1023(b) 
requires that the petition be accompanied by the fee set forth in Sec.  
1.17(f) and include a showing to the satisfaction of the Director that 
the international design application is entitled to such filing date.
    Section 1.1024: Section 1.1024 is proposed to be added to set forth 
the requirements of a description, where contained in the international 
design application. WIPO form ``Application for International 
Registration'' (DM/1) includes a section (Box 9) entitled 
``Description.'' Rule 11(2) provides: ``[w]here the international 
application contains a description, the latter shall concern those 
features that appear in the reproductions of the industrial design and 
may not concern technical features of the operation of the industrial 
design or its possible utilization. If the description exceeds 100 
words, an additional fee, as set out in the Schedule of Fees, shall be 
payable.'' Pursuant to Article 5(2), a Contracting Party may require 
``a brief description of the reproduction or of the characteristic 
features of the industrial design that is the subject of that 
application'' where such is a filing date requirement under its 
national law. See Article 5(2)(b)(ii). Rule 7(5)(a) allows the 
applicant to include in the international design application the 
description referred to in Article 5(2)(b)(ii) even if not required by 
a Contracting Party pursuant to Article 5(2).
    At the time the United States becomes party to the Hague Agreement, 
the requirements for a filing date for an application for design patent 
will be governed by 35 U.S.C. 171, as amended under Section 202 of the 
PLTIA, which states in subsection (c): ``[t]he filing date of an 
application for patent for design shall be the date on which the 
specification as prescribed by [35 U.S.C.] 112 and any required 
drawings are filed.'' 126 Stat. 1535. A ``brief description of the 
reproduction or of the characteristic features of the international 
design'' is not a per se filing date requirement in the United States. 
Rather, 35 U.S.C. 112(a) requires, inter alia, that the ``specification 
shall contain a written description of the invention.'' This 
requirement may be satisfied by the reproductions. See In re Daniels, 
144 F.3d 1452, 1456, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998) (``It is the 
drawings of the design patent that provide the description of the 
invention.''); In re Klein, 987 F.2d 1569, 1571, 26 USPQ2d 1133, 1134 
(Fed. Cir. 1993) (``[U]sual[ly] in design applications, there is no 
description other than the drawings''); Hupp v. Siroflex of America, 
Inc., 122 F.3d 1456, 1464, 43 USPQ2d 1887, 1893 (Fed. Cir. 1997) (``A 
design patent contains no written description; the drawings are the 
claims to the patented subject matter.''); Ex parte Tayama, 24 USPQ2d 
1614, 1617 (Bd. Pat. App. & Int'f 1992) (``[D]esign applications must 
meet the requirements of 35 U.S.C. 112, first paragraph. While this 
ordinarily requires little if any detailed description, some design 
applications may require a disclosure as detailed as that in a complex 
utility application. There is no `per se' rule with respect to the 
extent of the disclosure necessary in a design application. The 
adequacy of the disclosure must be determined on a case-by-case 
basis.''). Nevertheless, applicants should consider whether including 
additional written description of the invention (in Box 9 of the DM/1 
form or otherwise) is needed to comply with 35 U.S.C. 112. Furthermore, 
the Office encourages the inclusion of a brief description of the views 
of the reproduction, as required for design applications filed under 35 
U.S.C. chapter 16. See, e.g., Sec.  1.153(b) (``No description, other 
than a reference to the drawing, is ordinarily required . . . .); Sec.  
1.154(b) (``The specification should include . . . 4) Description of 
the figure or figures of the drawing''); and MPEP 1503.01, II 
(``Descriptions of the figures are not required to be written in any 
particular format, however, if they do not describe the views of the 
drawing clearly and accurately, the examiner should object to the 
unclear and/or inaccurate descriptions and suggest language which is 
more clearly descriptive of the views.''). Such figure descriptions are 
helpful for examination and may, in some cases, avoid potential issues 
under 35 U.S.C. 112.
    Thus, Sec.  1.1024(a) is proposed to be added to provide that 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 view or views of the reproduction.

[[Page 71882]]

    Section 1.1024(b) provides that the description requirements set 
forth in Rule 11(2) may apply to designations of Contracting Parties 
other than the United States that require a description. Applicants are 
cautioned that a characteristic features statement may serve to later 
limit the claim in the United States. See McGrady v. Aspenglas Corp., 
487 F. Supp. 859, 208 U.S.P.Q. 242 (S.D.N.Y. 1980); MPEP 1503.01.
    Section 1.1025: Section 1.1025 is proposed to be added to set forth 
that the specific wording of the claim in an international design 
application designating the United States shall be in formal terms to 
the ornamental design for the article (specifying name of article) as 
shown, or as shown and described. Section 1.1025 also provides that 
more than one claim is neither required nor permitted for purposes of 
the United States. Under Rule 11(3), a declaration requiring a claim 
pursuant to Article 5(2) ``shall specify the exact wording of the 
required claim.''
    Section 1.1026: Section 1.1026 is proposed to be added to provide 
that reproductions shall comply with the requirements of Rule 9 and 
Part Four of the Administrative Instructions. Rule 9 sets forth the 
requirements for reproductions in international design applications, 
including the form and number of reproductions, and references the 
requirements of the Administration Instructions. Part Four of the 
Administrative Instructions sets forth requirements concerning the 
presentation of the reproductions (Section 401), representation of the 
industrial design (Section 402), disclaimer (Section 403), requirements 
for photographs and other graphic representations (Section 404), 
numbering of reproductions (Section 405), requirements for specimens 
(Section 406), and relation with a principal industrial design or a 
principal application or registration (Section 407).
    Section 1.1027: Section 1.1027 provides that where a request for 
deferment of publication has been filed in respect of a two-dimensional 
industrial design, the international design application may include 
specimens of the design in accordance with Rule 10 and Part Four of the 
Administrative Instructions. Section 1.1027 further provides that 
neither a request for deferment of publication nor specimens are 
permitted in an international design application that designates the 
United States or any other Contracting Party that does not permit 
deferment of publication. Under the Hague Agreement, specimens are only 
permitted where a request for deferment of publication has been made. 
See Article 5(1)(iii) and Rule 10(1). However, a request for deferment 
of publication is not permitted in an international design application 
that designates a Contracting Party that has made a declaration under 
Article 11(1)(b) that its applicable law does not provide for deferment 
of publication. See Article 11(3).
    Section 1.1031: Section 1.1031 is proposed to be added to provide 
for payment of the international design application fees.
    Section 1.1031(a) provides that international design applications 
filed through the Office as an office of indirect filing are subject to 
payment of a transmittal fee in the amount of $130. Under the Hague 
Agreement, an office of indirect filing may require payment of a 
transmittal fee. See Article 4(2). Section 101(a) of the PLTIA adds 35 
U.S.C. 382(b), which provides that the international design application 
and international fees shall be forwarded by the Office to the 
International Bureau ``upon payment of a transmittal fee.'' 126 Stat. 
at 1528. Accordingly, Sec.  1.1031(a) provides for the payment of a 
transmittal fee. The transmittal fee is not being set pursuant to 
section 10(a) of the AIA. Rather, the Office is setting this fee 
pursuant to its authority under 35 U.S.C. 41(d)(2) in this rulemaking, 
which provides that fees for all processing, services, or materials 
relating to patents not specified in 35 U.S.C. 41 are to be set at 
amounts to recover the estimated average cost to the Office of such 
processing, services, or materials. See 35 U.S.C. 41(d)(2).
    The transmittal fee for an international design application filed 
under the Hague Agreement through the USPTO as an office of indirect 
filing involves the following activities, which the Office considered 
in estimating the fiscal year 2012 costs: (1) Processing incoming paper 
($2); (2) processing application fees ($7); (3) application indexing/
scanning ($65); (4) routing classification/security screening ($4); (5) 
second-level security screening and licensing and review processing 
($1); (6) initial bibliographic data entry ($17); (7) copying and 
mailing ($9); (8) performing processing section functions ($11); and 
(9) performing Hague file maintenance ($2).
    Applying the ABI methodology discussed above, the Office has thus 
estimated the fiscal year 2012 unit cost to transmit an international 
design application and international fees to the International Bureau 
as the sum total of the aforementioned activities, resulting in a total 
unit cost of $118. Using the estimated CPI-U increase for fiscal years 
2013, 2014 and 2015, the Office estimates the fiscal year 2015 unit 
cost to transmit the international design application and the 
international fees to the International Bureau is $126 ($118 multiplied 
by 1.066), which, when rounded to the nearest ten dollars, is a 
proposed fee for transmittal of $130. Additional information concerning 
the Office's analysis of the estimated fiscal year 2012 costs for 
receiving and transmitting international design applications and 
international fees to the International Bureau is available upon 
request.
    Section 1.1031(b) provides that the Schedule of Fees, a list of 
individual designation fee amounts, and a fee calculator may be viewed 
on the Web site of the WIPO, available at: http://www.wipo.int/hague. 
Under the Hague Agreement, the International Bureau is responsible for 
collecting the required fees set forth in the Schedule of Fees annexed 
to the Regulations (Rule 27(1)) and the individual designation fees 
referred to in Rule 12(1)(a)(iii). Where the required fees have not 
been paid, the International Bureau will invite the applicant to pay 
the required fees to avoid abandonment of the application. See Article 
8 and Rule 14. The fees set forth in the Schedule of Fees and the list 
of individual designation fee amounts may be viewed on the Web site of 
the WIPO, available at: http://www.wipo.int/hague. This Web site also 
includes a fee calculator tool to assist applicants in calculating the 
total amount of fees for filing an international design application.
    Section 1.1031(c) provides that the following fees required by the 
International Bureau may be paid either directly to the International 
Bureau or through the Office as an office of indirect filing in the 
amounts specified on the WIPO Web site described in Sec.  1.1031(b): 
(1) The international application fees (Rule 12(1)); and (2) the fee 
for descriptions exceeding 100 words (Rule 11(2)). The fees referred to 
in Hague Agreement Rule 12(1) include a basic fee, standard designation 
fees, individual designation fees, and a publication fee. Rule 12(3)(b) 
states that the Rule 12(1) reference to individual designation fees is 
construed as a reference to only the first part of the individual 
designation fee for any Contracting Party with a designation fee 
comprised of two parts.
    Section 1.1031(d) provides that the fees referred to in Sec.  
1.1031(c) may be paid directly to the International Bureau in Swiss 
currency. See Rule 27(2)(a). Administrative Instructions to the Hague 
Agreement set forth the various

[[Page 71883]]

modes of payment accepted by the International Bureau. See 
Administrative Instruction 801. These include: (1) Payment by debit 
through an account established with the International Bureau; (2) 
payment into the Swiss postal check account or any of the specified 
bank accounts of the International Bureau; or (3) payment by credit 
card.
    Section 1.1031(d) also provides for payment of the fees referred to 
in Sec.  1.1031(c) through the Office as an office of indirect filing, 
provided such fees are paid no later than the date of payment of the 
transmittal fee required under Sec.  1.1031(a). Any payment through the 
Office must be in U.S. dollars. Section 1.1031(d) also provides that 
applicants paying fees through the Office may be subject to a 
requirement by the International Bureau to pay additional amounts where 
the conversion from U.S. dollars to Swiss currency results in the 
International Bureau receiving less than the prescribed amounts. Under 
Rule 28(1), ``[a]ll payments made under these Regulations to the 
International Bureau shall be in Swiss currency irrespective of the 
fact that, where the fees are paid through an Office, such Office may 
have collected those fees in another currency.'' Consequently, the fees 
collected by the Office for forwarding to the International Bureau must 
be converted to Swiss currency. If the converted amount at the time the 
Office transfers the fees to the International Bureau in Swiss currency 
is less than the amount required by the International Bureau, the 
International Bureau may invite the applicant to pay the deficiency. 
Any payment in response to the invitation must be made directly to the 
International Bureau within the period set in the invitation.
    The proposed rules do not provide for a fee for renewing an 
international registration with respect to the United States. Article 7 
provides for a designation fee for each designated Contracting Party. 
Article 7(1) provides for a ``prescribed'' designation fee (also 
referred to as ``standard'' designation fee, see Rule 11). However, 
Article 7(2) allows a Contracting Party to make a declaration replacing 
the prescribed designation fee with an individual designation fee ``in 
connection with any international application in which it is 
designated, and in connection with the renewal of any international 
registration resulting from such an international application.'' 
Pursuant to Article 7(2), the amount of the individual designation fee 
may be fixed by the Contracting Party ``for the initial term of 
protection and for each term of renewal or for the maximum period of 
protection allowed by the Contracting Party concerned.'' Article 7(2) 
further provides that the individual designation fee may not be higher 
than the equivalent of the amount which the office of a Contracting 
Party would be entitled to receive for a grant of protection for an 
equivalent period to the same number of designs.
    Thus, while Article 7(2) permits a Contracting Party to fix an 
individual designation fee for renewing an international registration 
in respect of that Contracting Party, it does not require such fee. 
Rather, the individual designation fee fixed by the Contracting Party 
may be for the maximum period of protection allowed by the Contracting 
Party. Furthermore, the PLTIA does not require payment of a fee for 
renewing an international registration with respect to the United 
States. In addition, the PLTIA does not require renewal of the 
international registration to obtain the maximum period of protection 
in the United States. See, e.g., 35 U.S.C. 173 as amended by the PLTIA, 
126 Stat. at 1532 (``Patents for designs shall be granted for the term 
of 15 years from the date of grant.''). Accordingly, the proposed rules 
do not provide a fee for renewing an international design application 
with respect to the United States.
    The Office notes that Article 17(3) provides that any extension of 
the initial five-year term of protection accorded by an international 
registration is subject to renewal. However, the Hague Agreement allows 
a Contracting Party to provide greater protection under its national 
law than provided under the Hague Agreement. See Article 2(1) (``The 
provisions of this Act shall not affect the application of any greater 
protection which may be accorded by the law of a Contracting Party . . 
.''). Furthermore, the records of the diplomatic conference adopting 
the Hague Agreement make clear that renewal of the international 
registration for a designated Contracting Party that requires payment 
of a single designation fee for the entire 15-year (or more) period of 
protection is not required to obtain the full period of protection in 
that Contracting Party. See WIPO Records of the Diplomatic Conference 
for the Adoption of a New Act of the Hague Agreement Concerning the 
International Deposit of Industrial Design (Geneva Act) June 16 to July 
6, 1999, 254, ] 15.08 (2002), discussing Article 15 of the Basic 
Proposal presented to the diplomatic conference which, after minor 
amendment, became Article 17 (``It would be compatible with paragraphs 
(1) to (3) for a Contracting Party to stipulate a single 15-year (or 
more) period and to require payment of an initial individual 
designation fee for the whole period. In such case, protection would be 
maintained in its territory for that whole period, whether the 
international registration were renewed or not.'').
    Section 1.1035: Section 1.1035(a) is proposed to be added to 
provide, in accordance with Article 6 of the Hague Agreement, that the 
international design application may claim, under Article 4 of the 
Paris Convention, the priority of one or more earlier applications 
filed in or for any country party to that Convention or any Member of 
the World Trade Organization. Proposed Sec.  1.1035(a) further 
provides, in accordance with Rule 7(5)(c), that the priority claim must 
contain an indication of the name of the office where such filing was 
made and of the date and, where available, the number of that filing, 
and where the priority claim relates to less than all the industrial 
designs contained in the international design application, the 
indication of those industrial designs to which the priority claim 
relates or does not relate.
    While Article 6 of the Hague Agreement provides for priority under 
the Paris Convention, the Hague Agreement does not specifically provide 
for domestic benefit claims. Section 101(a) of the PLTIA adds 35 U.S.C. 
386(c) to specifically provide for the benefit in accordance with the 
conditions and requirements of 35 U.S.C. 120 of the filing date of a 
prior national application, a prior international application as 
defined in 35 U.S.C. 351(c) designating the United States, or a prior 
international design application designating the United States. 126 
Stat. at 1529-30. Accordingly, Sec.  1.1035(b) is proposed to be added 
to provide that an international design application designating the 
United States may claim benefit under 35 U.S.C. 120, 121, 365(c) or 
386(c) to an earlier filed application in accordance with Sec.  1.78. 
It is noted that Sec.  1.78 requires the domestic benefit claim to be 
included in an application data sheet (``ADS''), and that the Hague 
Agreement does not provide for submission of an ADS as an optional 
content item of the international design application. See Rules 7(5) 
and 7(6). Notwithstanding, if the ADS is included with the submission 
of the international design application to the Office as an indirect 
office, the ADS will be included in the national application file 
maintained by the Office as a designated office, and accordingly, will 
not have to

[[Page 71884]]

be submitted again. See discussion of Sec.  1.14(j).
    Section 1.1041: Section 1.1041 is proposed to be added to cover 
representation in an international design application.
    Section 1.1041(a) provides that the applicant or the holder may 
appoint a representative before the International Bureau in accordance 
with Rule 3. With respect to who may be appointed to represent the 
applicant before the International Bureau, the Hague Agreement does not 
provide for any requirement as to professional qualification, 
nationality or domicile. The appointment may be made in the 
international design application or in a separate communication. See 
Rule 3(2).
    Requirements as to the appointment of a representative before the 
office of a Contracting Party are outside the scope of the Hague 
Agreement, and are exclusively a matter for the Contracting Party. 
Accordingly, Sec.  1.1041(b) is proposed to be added to provide that 
applicants of international design applications may be represented 
before the Office as an office of indirect filing by a practitioner 
registered (Sec.  11.6) or granted limited recognition (Sec.  11.9(a) 
or (b)) to practice before the Office (Sec.  11.6). Section 1.1041(b) 
further provides that such practitioner may act pursuant to Sec.  1.34 
or be appointed, in writing signed by the applicant, giving the 
practitioner power to act on behalf of the applicant and specifying the 
name and registration number or limited recognition number of each 
practitioner. Section 1.1041(b) also provides that an appointment of a 
representative made in the international design application pursuant to 
Rule 3(2) that complies with the requirements of this paragraph will be 
effective as an appointment before the Office as an office of indirect 
filing. For purposes of representation before the Office in an 
international design application that becomes a national application 
(see Sec.  1.9(a)(1)), the regulations governing national applications 
shall apply. See Sec.  1.1061(a).
    Section 1.1045: Section 1.1045 is proposed to be added to set forth 
the procedures for transmittal of international design applications to 
the International Bureau. Section 101(a) of the PLTIA adds 35 U.S.C. 
382, which states, in subsection (b): ``[s]ubject to chapter 17, 
international design applications shall be forwarded by the Patent and 
Trademark Office to the International Bureau, upon payment of a 
transmittal fee.'' 126 Stat. at 1528. Rule 13(1) requires an office of 
indirect filing to notify the applicant and the International Bureau of 
the receipt date of an international design application, and to notify 
the applicant that the international design application has been 
transmitted to the International Bureau. Accordingly, Sec.  1.1045(a) 
is proposed to be added to provide that, subject to Sec.  1.1045(b) and 
payment of the transmittal fee set forth in Sec.  1.1031(a), 
transmittal of the international design application to the 
International Bureau shall be made by the Office as provided by Rule 
13(1). Section 1.1045(a) further provides that at the same time as it 
transmits the international design application to the International 
Bureau, the Office shall notify the International Bureau of the date on 
which it received the application, and that the Office shall also 
notify the applicant of the date on which it received the international 
design application and the date on which it transmitted the application 
to the International Bureau.
    Because transmittal of the international design application is 
subject to 35 U.S.C. chapter 17, Sec.  1.1045(b) is proposed to be 
added to provide that no copy of an international design application 
may be transmitted to the International Bureau, a foreign designated 
office, or other foreign authority by the Office or the applicant, 
unless the applicable requirements of part 5 of this chapter have been 
satisfied.
    Under the Hague Agreement, formalities review of the international 
design application is performed by the International Bureau, not the 
office of indirect filing. The functions of the office of indirect 
filing are de minimus, i.e., receiving and transmitting the 
international design application and international fees. There is no 
provision in the Hague Agreement for filing follow-on submissions with 
the office of indirect filing. Accordingly, Sec.  1.1045(c) is proposed 
to be added to provide that once transmittal of the international 
design application has been effected, except for matters properly 
before the USPTO as an office of indirect filing or as a designated 
office, all further correspondence concerning the application should be 
sent directly to the International Bureau, and that the Office will 
generally not forward communications to the International Bureau 
received after transmittal of the application to the International 
Bureau. Section 1.1045(c) further provides that any reply to an 
invitation sent to the applicant by the International Bureau must be 
filed directly with the International Bureau, and not with the Office, 
to avoid abandonment or other loss of rights under Article 8.
    Section 1.1051: Section 1.1051 is proposed to be added to set forth 
conditions under which an applicant's failure to act within prescribed 
time limits in connection with requirements pertaining to an 
international design application may be excused as to the United States 
upon a showing of unintentional delay. Section 101(a) of the PLTIA adds 
35 U.S.C. 387, which gives the Director authority to prescribe such 
conditions, including the payment of the fee specified in 35 U.S.C. 
41(a)(7), to excuse an applicant's failure to act within prescribed 
time limits in an international design application as to the United 
States where the delay was unintentional. 126 Stat. at 1530; see 
discussion of Sec.  1.17(u), supra. Under proposed Sec.  1.1051(a), a 
petition to excuse applicant's failure to act within the prescribed 
time limits must be accompanied by: (1) A copy of any invitation sent 
from the International Bureau setting a prescribed time limit for which 
applicant failed to timely act; (2) the reply required under Sec.  
1.1051(c), unless previously filed; (3) the fee as set forth in Sec.  
1.17(u); (4) a certified copy of the originally filed international 
design application, unless a copy of the international design 
application was previously communicated to the Office from the 
International Bureau or the international design application was filed 
with the Office as an office of indirect filing; and (5) a statement 
that the entire delay in filing the required reply from the due date 
for the reply until the filing of a grantable petition pursuant to this 
paragraph was unintentional. The Director may require additional 
information where there is a question whether the delay was 
unintentional.
    The requirements for a copy of the invitation sent from the 
International Bureau setting a prescribed time limit for which 
applicant failed to timely act, and for a certified copy of the 
originally filed international design application (unless a copy of the 
international design application was previously communicated to the 
Office from the International Bureau or the international design 
application was filed with the Office as an office of indirect filing) 
are needed because the Office may not have a record of the 
international design application. For example, the Office may not have 
a record where the international design application was filed directly 
with the International Bureau and was not published.
    Section 1.1051(b) provides that any request for reconsideration or 
review of a decision refusing to excuse the applicant's failure to act 
within prescribed time limits in connection

[[Page 71885]]

with requirements pertaining to an international design application 
upon petition filed pursuant to this section, to be considered timely, 
must be filed within two months of the decision refusing to excuse or 
within such time as set in the decision. Section 1.1051(b) further 
provides that, unless a decision indicates otherwise, the two-month 
time period may be extended under the provisions of Sec.  1.136.
    Section 1.1051(c) provides that the reply required may be: (1) The 
filing of a continuing application and, if the international design 
application has not been subject to international registration, a 
grantable petition under Sec.  1.1023(b) to accord the international 
design application a filing date; or (2) a grantable petition under 
Sec.  1.1052, where the international design application was filed with 
the Office as an office of indirect filing.
    Under the Hague Agreement, the International Bureau reviews 
international design applications for compliance with the requirements 
of the treaty and Regulations. If these requirements have not been met, 
the International Bureau will invite the applicant to make the required 
corrections. See Hague Agreement Article 8(1). Depending on the 
correction required, failure to timely comply with the invitation will 
result in the application being considered abandoned or deemed not to 
contain the designation of the Contracting Party for which the 
deficiency relates. See Hague Agreement Article 8(2). The Hague 
Agreement does not provide for continued processing of an international 
design application that has been abandoned under Article 8 (or for 
processing the application for a particular Contracting Party after the 
designation of that Contracting Party has been deemed not to be 
contained in the application), based on the Office excusing applicant's 
failure to timely comply with the invitation pursuant to 35 U.S.C. 387. 
For example, the Hague Agreement does not provide for forwarding by the 
International Bureau to the applicant of a notification of refusal in 
an abandoned international application. Accordingly, the Office is 
proposing to provide relief under 35 U.S.C. 387 by permitting the 
applicant to file a continuing application claiming benefit to an 
international design application under the conditions of 35 U.S.C. 
386(c) and 120. Upon grant of the petition under this section, 
applicant's delay will be excused for the purpose of establishing 
copendency or reinstatement of the U.S. designation in accordance with 
35 U.S.C. 120, 386(c) and 388. The ability to file a continuing 
application is similarly provided in the rule governing the procedure 
for revival of an abandoned national application. See 37 CFR 1.137(c). 
Alternatively, Sec.  1.1051(c) provides that the reply may be a 
grantable petition under Sec.  1.1052 to convert the international 
design application to an application under 35 U.S.C. chapter 16.
    Section 1.1052: Section 1.1052 is proposed to be added to set forth 
a procedure for converting an international design application 
designating the United States to a design application under 35 U.S.C. 
chapter 16. Section 101(a) of the PLTIA adds 35 U.S.C. 384(a), the 
second sentence of which provides: ``[n]otwithstanding the provisions 
of this part, any international design application designating the 
United States that otherwise meets the requirements of chapter 16 may 
be treated as a design application under chapter 16.'' 126 Stat. at 
1529. The requirements for a filing date for a design application under 
35 U.S.C. chapter 16 are set forth in Sec.  1.53(b). Accordingly, Sec.  
1.1052(a) provides that an international design application designating 
the United States filed with the Office as an office of indirect filing 
and meeting the requirements under Sec.  1.53(b) for a filing date for 
an application for a design patent may, on petition under this section, 
be converted to an application for a design patent under Sec.  1.53(b) 
and accorded a filing date as provided therein.
    Section 1.1052(a) further provides that the petition must be 
accompanied by the fee set forth in Sec.  1.17(v) and be filed prior to 
publication of the international registration under Article 10(3). The 
requirement that a grantable petition be filed prior to publication 
under Article 10(3) is necessary in view of the timing requirements 
under the Hague Agreement to issue a notification of refusal and to 
avoid expending Office resources processing and examining the 
application under two different statutory schemes.
    Section 1.1052(a) also provides that the conversion of an 
international design application to an application for a design patent 
under Sec.  1.53(b) will not entitle applicant to a refund of the 
transmittal fee or any fee forwarded to the International Bureau, or 
the application of any such fee toward the filing fee, or any other 
fee, for the application for a design patent under Sec.  1.53(b). In 
addition, Sec.  1.1052(a) provides that the application for a design 
patent resulting from conversion of an international design application 
must also include the basic filing fee (Sec.  1.16(b)), the search fee 
(Sec.  1.16(l)), the examination fee (Sec.  1.16(p)), the inventor's 
oath or declaration (Sec. Sec.  1.63 or 1.64), and a surcharge if 
required by Sec.  1.16(f). These provisions are similar to those 
applicable to converting an application under 35 U.S.C. 111(b) to an 
application under 35 U.S.C. 111(a). See Sec.  1.53(c)(3).
    Section 1.1052(b) provides that an international design application 
will be treated as an application for a design patent under Sec.  
1.53(b) if a decision on petition under this section is granted prior 
to transmittal of the international design application to the 
International Bureau pursuant to Sec.  1.1045. Otherwise, a decision 
granting a petition under this section will be effective to treat the 
international design application as an application for a design patent 
under Sec.  1.53(b) only for purposes of the United States. Thus, 
pursuant to Sec.  1.1052(b), if the Office grants the petition prior to 
transmittal of the international design application to the 
International Bureau, the Office will treat the international design 
application submission as an application for a design patent under 
Sec.  1.53(b). Once transmittal of the application under Sec.  1.1045 
has occurred, the grant of the petition will only be effective as to 
the United States, and the International Bureau will continue to 
process the international design application under the provisions of 
the Hague Agreement.
    Section 1.1052(c) provides that a petition under Sec.  1.1052 will 
not be granted in an abandoned international design application absent 
a grantable petition under Sec.  1.1051.
    Sections 1.1061-1.1070 relate to national processing of an 
international design application designating the United States.
    Section 1.1061: Section 1.1061(a) is proposed to be added to 
provide that the rules relating to applications for patents for other 
inventions or discoveries are also applicable to international design 
applications designating the United States, except as otherwise 
provided in chapter I of Title 37 of the CFR or required by the 
Articles or Regulations. Section 1.1061(a) is similar to current Sec.  
1.151 with respect to design applications under 35 U.S.C. chapter 16 
(``The rules relating to applications for patents for other inventions 
or discoveries are also applicable to applications for patents for 
designs except as otherwise provided.''). Section 101(a) of the PLTIA 
adds 35 U.S.C. 389(b) to provide that all questions of procedures 
regarding international design applications designating the United 
States shall be determined as in the case of applications filed under 
35 U.S.C. chapter 16, except where otherwise required by the Hague

[[Page 71886]]

Agreement and the Regulations (126 Stat. at 1530). Section 1.1061(b) is 
proposed to be added to identify, consistent with the Hague Agreement 
and the Regulations, certain regulations that do not apply to 
international design applications.
    Section 1.1062: Section 1.1062(a) is proposed to be added to 
provide that the Office shall make an examination pursuant to Title 35 
of the United States Code of an international design application 
designating the United States. Examination of international design 
applications designating the United States is mandated by 35 U.S.C. 
389(a), which was added by section 101(a) of the PLTIA (126 Stat. at 
1530).
    Section 1.1062(a) further provides, in accordance with Article 
12(1), that an international design application may not be refused on 
grounds that requirements relating to the form or contents of the 
international design application provided for in the Hague Agreement or 
the Regulations or additional to, or different from, those requirements 
have not been satisfied.
    Section 1.1062(b) concerns the timing of certain actions in 
international design applications. Pursuant to Hague Agreement Article 
12, where the conditions for the grant of protection under the law of 
the Contracting Party are not met, a notification of refusal of the 
effects of international registration must be communicated to the 
International Bureau within the prescribed period. Rule 18(1) sets 
forth the period for communicating the notification of refusal. While 
Rule 18(1)(a) sets forth the prescribed period as six months from the 
date of publication, this period may be extended by a Contracting Party 
pursuant to a declaration made under Rule 18(1)(b) (extending the six-
month period to twelve months). Furthermore, the declaration under Rule 
18(1)(b) may also include, inter alia, a statement under Rule 
18(1)(c)(ii) (providing for the later communication of a decision 
regarding the grant of protection where a decision regarding the grant 
of protection was unintentionally delayed by the office of the 
Contracting Party). Section 1.1062(b) is proposed to be added to 
provide that for each international design application to be examined, 
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 
(Sec.  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. The Office intends to send 
all notifications of refusal prior to the expiration of the 12-month 
period set forth in Sec.  1.1062(b). Any failure by the Office to do so 
would be unintentional pursuant to Rule 18(1)(c)(ii).
    The Office does not regard the failure to send the notification of 
refusal within the period referenced in Sec.  1.1062(b) to confer 
patent rights or other effect under Article 14(2). The Hague Agreement 
is not self-executing, and the PLTIA provides for patent rights only 
upon issuance of a patent. See 35 U.S.C. 389(d) added by the PLTIA, 126 
Stat. at 1531; see also S. Exec. Rep. No. 110-7, at 5 (``The proposed 
Act makes no substantive changes in U.S. design patent law with the 
exception of the following: the provision of limited rights to patent 
applicants between the date that their international design application 
is published by the IB and the date on which they are granted a U.S. 
patent based on that application; the extension of a patent term for 
designs from fourteen to fifteen years from grant; and allowing the 
USPTO to use a published international design registration as a basis 
for rejecting a subsequently filed national patent application that is 
directed at the same or a similar subject matter.''). Furthermore, the 
PLTIA requires an international design application that designates the 
United States to be examined by the Office pursuant to Title 35 of the 
United States Code. See 35 U.S.C. 389(a). Granting of patent rights 
without examination is inconsistent with 35 U.S.C. 389(a). The absence 
of a notification of refusal is not a patent. See 35 U.S.C. 153 
(``Patents shall be issued in the name of the United States of America, 
under the seal of the Patent and Trademark Office, and shall be signed 
by the Director or have his signature placed thereon and shall be 
recorded in the Patent and Trademark Office.'').
    Section 1.1063: Section 1.1063(a) is proposed to be added to 
provide, in accordance with Rule 18(2), that 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) where 
the grounds of refusal refer to similarity with an industrial design 
that is the subject of an earlier application or registration, a copy 
of a reproduction of the earlier industrial design and information 
concerning the earlier industrial design as required under Rule 
18(2)(b)(iv); and (4) a time period for reply to the notification under 
Sec.  1.134 and Sec.  1.136 to avoid abandonment.
    Pursuant to Article 12, the Office communicates the notification of 
refusal directly to the International Bureau, which then transmits 
without delay a copy of the notification of refusal to the holder. Rule 
18(2)(vi) provides that the notification of refusal shall indicate 
whether the refusal is subject to review or appeal, and if so, the time 
limit for requesting review or appeal. Accordingly, the notification of 
refusal communicated by the Office will set a time period for reply 
under Sec.  1.134 and Sec.  1.136 to avoid abandonment.
    Section 1.1063(b) is proposed to be added to provide that any reply 
to the notification of refusal must be filed directly with the Office 
and not through the International Bureau. Section 1.1063(b) further 
provides that the requirements of Sec.  1.111 shall apply to a reply to 
a notification of refusal.
    Under the Hague Agreement, any reply to the notification of refusal 
must be filed directly with the Office. The applicant may not file a 
reply to a notification of refusal through the International Bureau. 
Any further correspondence from the Office will normally be sent 
directly to the applicant. The procedures applicable to design 
applications under chapter 16 are generally applicable to international 
design applications after communication of the notification of refusal. 
See Article 12(3)(b) and 35 U.S.C. 389(b); see also WIPO, Guide to the 
International Registration of Industrial Designs Under the Hague 
Agreement, B.II.39, ] 9.23 (Jan. 2012) (``Where the holder of an 
international registration receives, through the International Bureau, 
a notification of refusal, he has the same rights and remedies (such as 
review of, or appeal against, the refusal) as if the industrial design 
had been filed directly with the Office that issued the notification of 
refusal. The international registration is, therefore, with respect to 
the Contracting Party concerned, subject to the same procedures as 
would apply to an application for registration filed with the Office of 
that Contracting Party.''). Thus, for example, the provisions of 35 
U.S.C. 133 and Sec. Sec.  1.134 through 1.136 govern the time to reply 
to an Office action, including a notification of refusal, and the 
consequence for failure to timely reply (i.e., abandonment).
    Because the procedures following the notification of refusal are 
governed by national practice, the failure of an applicant to renew an 
international registration pursuant to Article 17(2) does not affect 
the pendency status of an international design application before the 
Office. Otherwise, applicants in international design applications 
would not have the same rights and remedies as applicants in national 
design

[[Page 71887]]

applications, as required under Article 12(3)(b) and 35 U.S.C. 389. 
Similarly, the failure to renew a registration under Article 17(2) does 
not impact an applicant's ability to file a continuing application 
under 35 U.S.C. 120, 121, 365(c) or 386(c), as the critical inquiry 
under 35 U.S.C. 120 is the presence of copendency.
    Section 1.1064: Section 1.1064 is proposed to be added to provide 
for requirements relating to only one independent and distinct design 
in international design applications.
    Article 13 permits a Contracting Party whose law at the time it 
becomes party to this Act, requires that designs in the application 
conform to a requirement of unity of design, unity of production or 
unity of use, or that only one independent and distinct design may be 
claimed in a single application, to notify the Director General in a 
declaration. Section 1.1064(a) is proposed to provide that only one 
independent and distinct design may be claimed in an international 
design application designating the United States.
    Section 1.1064(b) specifies that if the requirements under 
1.1064(a) 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. Section 1.1064(b) 
further specifies that 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 Sec. Sec.  
1.143 and 1.144. The procedure set forth in 1.1064(b) is analogous to 
the procedures applicable to national applications. See Sec.  1.142.
    Section 1.1066: Section 1.1066 is proposed to be added to specify 
the correspondence address for an international design application. 
Unlike other types of applications before the Office, an applicant does 
not need to file any further submissions with the Office to initiate 
examination under Sec.  1.1062 of an international design application 
designating the United States. Rather, published international design 
registrations that designate the United States will be systematically 
received from the International Bureau and examined in due course. 
Accordingly, Sec.  1.1066(a) is proposed to set forth how the Office 
will establish the correspondence address for an international design 
application in the absence of a communication from the applicant 
changing the correspondence address. Specifically, Sec.  1.1066(a) 
provides that, unless changed in accordance with Sec.  1.1066(b), the 
Office will use as the correspondence address the address of the 
representative identified in the publication of the international 
registration, or if there is no address for the representative, the 
address of the applicant identified therein.
    Section 1.1066(b) provides that the correspondence address may be 
changed by the parties set forth in Sec.  1.33(b)(1) or (b)(3) in 
accordance with Sec.  1.33(a).
    Section 1.1066(c) is proposed to be added to provide that a 
reference in the rules to the correspondence address set forth in Sec.  
1.33(a) shall be construed to include a reference to Sec.  1.1066 for a 
nonprovisional application that is an international design application.
    Section 1.1067: Section 1.1067(a) is proposed to be added to 
provide for a title in an international design application. The Hague 
Agreement does not require that an international design application 
contain a title. The Office believes a title that identifies the 
article in which a design is embodied is helpful to the public in 
understanding the nature and use of the article embodying the design 
after the patent has issued. In addition, a U.S. patent must contain a 
title of the invention. See 35 U.S.C. 154(a)(1) (``Every patent shall 
contain a short title of the invention . . .''). Accordingly, pursuant 
to Sec.  1.1067(a), the applicant may provide a title of the design 
that designates the particular article in an international design 
application that is before the Office for examination. Section 
1.1067(a) further provides that where an international design 
application does not contain a title of the design, the Office may 
establish a title. In determining the title, the Office may look to the 
particular article specified in the claim.
    Section 1.1067(b) is proposed to be added to provide that if the 
applicant is notified in a notice of allowability that an oath or 
declaration in compliance with Sec.  1.63, or substitute statement in 
compliance with Sec.  1.64, executed by or with respect to each named 
inventor has not been filed, the applicant must file each required oath 
or declaration in compliance with Sec.  1.63, or substitute statement 
in compliance with Sec.  1.64, no later than the date on which the 
issue fee is paid to avoid abandonment. This time period is not 
extendable under Sec.  1.136. As explained above, Hague Agreement Rule 
8, as recently passed by the Hague Union Assembly, accommodates current 
U.S. law regarding the inventor's oath or declaration. Where the 
presence of the required inventor's oath or declaration is verified by 
the International Bureau as part of its formalities review, the need to 
notify the applicant in a notice of allowability to provide the 
inventor's oath or declaration should be rare; e.g., where an inventor 
added pursuant to Sec.  1.48(a) has not executed an oath or 
declaration. See Sec.  1.48(b).
    Section 1.1069: Section 1.1069 is proposed to be added to provide 
for the sending of a notification of division to the International 
Bureau. Under Rule 18(3), where an international registration is 
divided before the office of a designated Contracting Party to overcome 
a ground of refusal stated in a notification of refusal, the office 
must notify the International Bureau with data concerning the division 
as specified in Administrative Instruction 502 (``notification of 
division''). Accordingly, Sec.  1.1069(a) is proposed to be added to 
provide for the notification of division required under Rule 18. 
Section 1.1069(a) provides that where, following a notification of 
refusal requiring an election of an independent and distinct design, a 
divisional application claiming benefit under 35 U.S.C. 386(c) and 121 
to the international design application is filed for the non-elected 
design(s), the Office shall notify the International Bureau. Section 
1.1069(a) further provides that the notification to the International 
Bureau shall indicate: (1) The number of the international registration 
concerned; (2) the numbers of the industrial designs which have been 
the subject of the division with the Office concerned; and (3) the 
divisional application number(s).
    Section 1.1069(b) is proposed to be added to provide that the 
Office may require the applicant, in a divisional application that is 
subject to a notification under Sec.  1.1069(a), to identify the design 
in the international design application that is the subject of the 
divisional application. Because an international design application may 
contain up to 100 designs (see Rule 7(3)(v)) and, furthermore, uses a 
different numbering system for reproductions than is used in design 
applications filed under 35 U.S.C. chapter 16 (see Administrative 
Instruction 405 of the Hague Agreement), in some cases it may not be 
readily apparent how the design in the divisional application 
corresponds to the design of the parent international design 
application for purposes of the notification of division. Accordingly, 
in such cases, the Office may seek applicant's assistance to identify 
the corresponding design pursuant to Sec.  1.1069(b).
    Section 1.1070: Section 1.1070 is proposed to be added to provide 
for the

[[Page 71888]]

sending of a notification of invalidation to the International Bureau. 
Article 15 provides that the office of the Contracting Party in whose 
territory the effects of the international registration have been 
invalidated shall, where it is aware of the invalidation, notify the 
International Bureau of the invalidation (``notification of 
invalidation''). Rule 20 provides that where the effects of an 
international registration are invalidated in a designated Contracting 
Party and the invalidation is no longer subject to any review or 
appeal, the office of the Contracting Party whose competent authority 
has pronounced the invalidation shall, where it is aware of the 
invalidation, notify the International Bureau accordingly. Rule 20 
further specifies the required contents of the notification of 
invalidation. In accordance with Article 15 and Rule 20, Sec.  
1.1070(a) provides that where a design patent that was granted from an 
international design application is invalidated in the United States, 
and the invalidation is no longer subject to any review or appeal, the 
patentee shall inform the Office. Section 1.1070(b) provides that after 
receiving a notification of invalidation under Sec.  1.1070(a) or 
through other means, the Office will notify the International Bureau in 
accordance with Rule 20.
    Section 3.1: Section 3.1 is proposed to be amended to include an 
international design application that designates the United States of 
America within the definition of ``application'' for purposes of Part 3 
of Title 37 of the CFR. The effect of this definitional change will 
allow assignments (or other documents affecting title) of international 
design applications that designate the United States to be submitted to 
the Office for recording. The proposed change to Sec.  3.1 is in 
response to 35 U.S.C. 385, added under the PLTIA, which provides that 
an international design application designating the United States has 
the effect, for all purposes, of an application for patent filed in the 
Office pursuant to 35 U.S.C. chapter 16. 126 Stat. at 1529.
    Section 3.21: Section 3.21 is proposed to be amended to provide 
that an assignment relating to an international design application that 
designates the United States must identify the international design 
application by the international registration number or by the U.S. 
application number assigned to the international design application.
    Section 5.1: Section 5.1(b) is proposed to be amended to change the 
definition of ``application'' as used in Part 5 of Title 37 of the CFR 
to include international design applications, and to provide 
consistency with the definitions in Sec.  1.9. Section 5.1(b) is also 
proposed to be amended to include a definition of ``foreign 
application'' to permit simplification of other rules contained in Part 
5.
    Section 5.3: Section 5.3(d) is proposed to be amended to clarify 
that an international design application that is subject to a secrecy 
order will not be mailed, delivered, or otherwise transmitted to the 
international authorities or the applicant.
    Section 5.11: The title of Sec.  5.11 is proposed to be amended to 
more accurately describe when a foreign filing license is required. 
Section 5.11(a) is also proposed to be amended to clarify that a 
foreign filing license is not required to file an international design 
application in the Office as an office of indirect filing. Sections 
5.11(b), (c), (e) and (f) are proposed to be amended to change 
``foreign patent application'' to ``foreign application,'' as the 
provisions of 35 U.S.C. 184 are not limited to ``patent'' applications 
but include other types of applications; e.g., registrations of 
industrial designs.
    Section 5.12: Section 5.12 is proposed to be amended for 
consistency with the definition of application in Sec.  5.1(b), and to 
indicate that the grant of a foreign filing license may be on an 
official notice other than the filing receipt; e.g., in the case of 
international applications filed under the Patent Cooperation Treaty, 
on the ``Notification of the International Application Number and of 
the International Filing Date'' (Form PCT/RO/105).
    Section 5.13: Section 5.13 is proposed to be amended to provide 
that a ``corresponding'' application for purposes of this section may 
be an international design application.
    Section 5.14: Section 5.14(c) is proposed to be amended for clarity 
and internal consistency, as this subsection is directed to an 
``application to be filed or exported abroad.''
    Section 5.15: Section 5.15(a) is proposed to be amended for 
consistency with the definition of ``application'' in 5.1(b) and to 
remove redundancies.
    Section 11.10: Section 11.10(b)(3)(iii) is proposed to be amended 
to include international design application in the definition of patent 
application for purposes of Sec.  11.10.

Rulemaking Considerations

    A. Administrative Procedure Act: This rulemaking implements title I 
of the PLTIA and the Hague Agreement. The changes proposed in this 
rulemaking (except for the setting of some fees) establish procedures 
for the filing, processing, and examination of international design 
applications and revise existing rules of practice to account for 
international design applications in accordance with title I of the 
PLTIA and to ensure that the rules of practice are consistent with the 
Hague Agreement. Therefore, the changes proposed in this rulemaking 
involve rules of agency practice and procedure, and/or interpretive 
rules. See Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 
2001) (rules governing an application process are procedural under the 
Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala, 244 
F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals are 
procedural where they do not change the substantive standard for 
reviewing claims); Nat'l Org. of Veterans' Advocates v. Sec'y of 
Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that 
clarifies interpretation of a statute is interpretive).
    Accordingly, prior notice and opportunity for public comment for 
these proposed changes are not required pursuant to 5 U.S.C. 553(b) or 
(c) (or any other law). See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 
1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 
2(b)(2)(B), does not require notice and comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice'') (quoting 5 U.S.C. 
553(b)(A)). The Office, however, is publishing these proposed changes 
for comment as it seeks the benefit of the public's views on the 
Office's proposed implementation of title I of the PLTIA and the Hague 
Agreement.
    B. Regulatory Flexibility Act: For the reasons set forth herein, 
the Deputy General Counsel for General Law of the United States Patent 
and Trademark Office has certified to the Chief Counsel for Advocacy of 
the Small Business Administration that changes proposed in this notice 
will not have a significant economic impact on a substantial number of 
small entities. See 5 U.S.C. 605(b).
    The notable changes proposed in this notice are to revise the rules 
of practice to implement title I of the PLTIA. The changes to the rules 
of practice proposed in this notice involve: (1) The establishment of 
procedures for the filing, processing, and examination of international 
design applications; and (2) the revision of existing rules of practice 
to account for international design applications. The proposed rules 
impose no additional required burdens on any applicant, since seeking 
design protection by filing an international design application is 
merely an optional alternative to seeking design protection by filing a 
national design application.

[[Page 71889]]

The proposed rules will benefit applicants by streamlining the process 
for obtaining international protection of an industrial design in 
Contracting Parties to the Hague Agreement by the filing of a single, 
standardized international design application in a single language.
    As of 2013, there are 60 Contracting Parties that are members to 
the Hague system. In 2011, the most recent year available, 2,531 
international design applications were filed via the Hague system. In 
that same year, 2,363 international design registrations issued through 
the Hague system. In comparison, the USPTO received 32,799 design 
applications in 2012, the most recent year for which data is available. 
In 2012, the USPTO issued 21,951 design patents. Approximately 49.6% of 
the design applications filed in 2012 were filed by an entity claiming 
small entity status. None of the proposed rules disproportionately 
affect small entities.
    The fees and requirements referenced in this proposed rulemaking do 
not have a significant economic impact because they are comparable to 
the fees and requirements an applicant has in a national design 
application. Section 385 requires that an ``international design 
application designating the United States shall have the effect, for 
all purposes from its filing date . . . of an application for patent 
filed in the Patent and Trademark Office pursuant to chapter 16.'' Such 
fees include an issue fee, if applicable, and paid directly to the 
USPTO, and a petition fee for review of a filing date.
    The USPTO proposes to set only two new fees based on cost recovery, 
as discussed in further detail in prior sections: A transmittal fee, 
payable to the USPTO for transmitting the international design 
application to WIPO when an applicant files the application with the 
USPTO as an office of indirect filing, and a conversion fee when an 
applicant seeks to have the Office treat an international design 
application as a national design application under 35 U.S.C. chapter 
16. The transmittal fee is proposed to be set at $130. The USPTO 
estimates that approximately 1,000 applications will be filed 
indirectly with the USPTO annually and will thus require payment of a 
transmittal fee. Of these, the Office estimates that approximately 500 
will be filed by an entity that is a small entity based on USPTO design 
application filings in 2012. The conversion fee is proposed to be set 
at $180. The USPTO estimates that approximately 20 applicants will pay 
the conversion fee annually, and of these, approximately 10 will be 
filed by an applicant that is a small entity.
    The other fees mentioned in this proposed rulemaking are not USPTO 
fees at all, but rather, are created through the treaty process and 
WIPO's Common Regulations. For example, the USPTO does not collect and 
retain at the time of payment the following fees: WIPO Basic Fee, WIPO 
Publication Fee, WIPO Extra Word Fee, and Designation Fees (including 
the United States individual designation fee first part). Thus, the 
proposed rules referencing non-USPTO fees impose no economic impact 
upon applicants. The petition fee for excusable delay is set forth by 
statute, 35 U.S.C. 41(a)(7), as amended by 202(b)(1)(A) of the PLTIA, 
126 Stat. 1535, at $850 for small entities and $1,700 for all other 
entities, beginning on December 18, 2013.
    For the foregoing reasons, the changes proposed in this notice will 
not have a significant economic impact on a substantial number of small 
entities.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563. 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector and the public as a whole, 
and provided on-line access to the rulemaking docket; (7) attempted to 
promote coordination, simplification, and harmonization across 
government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    E. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the 
United States Patent and Trademark Office will submit a report 
containing the final rule and other required information to the United 
States Senate, the United States House of Representatives, and the 
Comptroller General of the Government Accountability Office. The 
changes in this notice are not expected to result in an annual effect 
on the economy of 100 million dollars or more, a major increase in 
costs or prices, or significant adverse effects on competition, 
employment, investment, productivity, innovation, or the ability of 
United States-based enterprises to compete with foreign-based 
enterprises in domestic and export markets. Therefore, this notice is 
not expected to result in a ``major rule'' as defined in 5 U.S.C. 
804(2).
    L. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this notice do not involve a Federal intergovernmental mandate that 
will result in the expenditure by State, local,

[[Page 71890]]

and tribal governments, in the aggregate, of 100 million dollars (as 
adjusted) or more in any one year, or a Federal private sector mandate 
that will result in the expenditure by the private sector of 100 
million dollars (as adjusted) or more in any one year, and will not 
significantly or uniquely affect small governments. Therefore, no 
actions are necessary under the provisions of the Unfunded Mandates 
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
    M. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    N. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions that involve the use of 
technical standards.
    O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.) requires that the Office consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This rulemaking involves information collection requirements 
which are subject to review by the Office of Management and Budget 
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). 
New information will be collected and a new information collection 
request to authorize the collection of new information involved in this 
notice is being submitted to OMB under the title ``Hague Agreement.'' 
The proposed collection will be available at the OMB's Information 
Collection Review Web site (www.reginfo.gov/public/do/PRAMain).
    The Office is submitting the information collection to OMB for its 
review and approval because this notice of proposed rulemaking will add 
the following to a collection of information for an international 
design application filed through the Office:

(1) Application for International Registration (Sec.  1.1022)
(2) Claim and Reproductions (Sec.  1.1021)
(3) Transmittal Letter (Sec. Sec.  1.4, 1.5)
(4) Appointment of a Representative (Sec.  1.1041)
(5) Petition to Excuse a Failure to Comply with a Time Limit (Sec.  
1.1051)
(6) Petition to Convert to a Design Application under 35 U.S.C. chapter 
16 (Sec.  1.1052)
(7) Petition to Review a Filing Date (Sec.  1.1023(b))
(8) Fee Authorization (Sec.  1.25)
(9) Petition to the Commissioner (Sec. Sec.  1.181, 182, and 183)

I. Summary

    The Patent Law Treaties Implementation Act of 2012 (PLTIA) amends 
the patent laws to implement the provisions of the Geneva Act of the 
Hague Agreement Concerning International Registration of Industrial 
Designs (Hague Agreement) in title I, and the Patent Law Treaty (PLT) 
in title II. The Hague Agreement facilitates intellectual property 
protection for industrial designs by creators in member countries and 
intergovernmental organizations that are Contracting Parties to the 
Hague Agreement through a single standardized application filed 
directly with the International Bureau (IB) of the World Intellectual 
Property Organization (WIPO) or indirectly through an appropriate 
Contracting Party's Office, such as the United States Patent and 
Trademark Office. It is administered by the IB of WIPO located in 
Geneva, Switzerland.
    Thus, under the Hague Agreement, a U.S. design applicant could file 
an international design application in English with the USPTO, which 
will forward the application to the IB. The industrial design may be 
eligible for protection both domestically and abroad in all Contracting 
Parties to the Agreement.
    The IB ascertains whether the international design application 
complies with formal requirements, records the international design 
application in the international register, and publishes the 
international registration in the International Designs Bulletin. The 
international registration contains all of the data of the 
international application, any reproduction of the industrial design, 
date of the international registration, number of the international 
registration, and relevant class of the International Classification.
    The IB will provide a copy of the publication of the international 
registration to each Contracting Party designated by the applicant. A 
designated Contracting Party may perform a substantive examination of 
the design application. If designated, the Office will perform a 
substantive examination of patentability of the international design 
application, as in the case of a regular design application filed under 
35 U.S.C. chapter 16.
    The Hague Agreement enables applicants from a Contracting Party to 
obtain protection of their designs with minimal formality and expense. 
Additionally, under the Hague Agreement, the international registration 
can be centrally maintained by the IB. For example, through the IB, 
applicants can record changes of their representative or changes in 
ownership, and renew their international registration.

II. Data

    Needs and Uses: This information collection is necessary for design 
applicants to file an international design application under the Hague 
Agreement through the Office as an office of indirect filing pursuant 
35 U.S.C. 382. The Office uses this information to process the 
international design application under the Hague Agreement and forward 
the design application to the IB. The IB ascertains whether the 
international application complies with the formal requirements, 
records the international design application in the international 
register, and publishes the international design application.
    Title of Collection: International Design Applications (Hague 
Agreement).
    OMB Control Number: 0651-00xx.
    Form Number(s): WIPO DM/1.
    Type of Review: New Collection.
    Method of Collection: By mail, facsimile, hand delivery, or 
electronically to the Office.
    Affected Public: Individuals or households; businesses or other 
for-profits; and not-for-profit institutions.
    Estimated Number of Respondents: 3,310.
    Estimated Time per Response: The Office estimates that the 
responses in this collection will take the public approximately 15 
minutes (0.25 hours) to 6 hours.
    Estimated Total Annual Respondent Burden Hours: 12,315 hours per 
year.
    Estimated Total Annual Respondent Cost Burden: $4,790,535 per year.
    Estimated Total Annual Non-hour Respondent Cost Burden: $2,403,302 
per year.

III. Solicitation

    The Office is soliciting comments to: (1) Evaluate whether the 
proposed information requirement is necessary for the proper 
performance of the functions of the Office, including whether the 
information will have practical utility; (2) evaluate the accuracy of 
the Office's estimate of the burden, including the validity of the 
methodology and assumptions used; (3) enhance the quality, utility, and 
clarity of the information to be collected; and (4) minimize the burden 
of collecting the information on those who are to respond, including 
through the use of

[[Page 71891]]

appropriate automated, electronic, mechanical, or other technological 
collection techniques or other forms of information technology; e.g., 
permitting electronic submission of responses.
    Interested persons are requested to send comments regarding this 
information collection by January 28, 2014, to: (1) The Office of 
Information and Regulatory Affairs, Office of Management and Budget, 
New Executive Office Building, Room 10202, 725 17th Street NW., 
Washington, DC 20503, Attention: Desk Officer for the United States 
Patent and Trademark Office; and (2) The Office of PCT Legal 
Administration by electronic mail message over the Internet addressed 
to [email protected], or by mail addressed to: Mail Stop PCT, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, 
marked to the attention of ``Rafael Bacares, Legal Examiner, Office of 
PCT Legal Administration International Design Applications (Hague 
Agreement).''

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Inventions and patents, 
Reporting and recordkeeping requirements, Small businesses.

37 CFR Part 3

    Administrative practice and procedure, Patents, Trademarks.

37 CFR Part 5

    Classified information, Foreign relations, Inventions and patents.

37 CFR Part 11

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.

    For the reasons set forth in the preamble, 37 CFR parts 1, 3, 5 and 
11 are proposed to be amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 is amended to read as 
follows:

    Authority:  35 U.S.C. 2(b)(2) and the Patent Law Treaties 
Implementation Act of 2012.

0
2. Section 1.4 is amended by revising paragraph (a)(2) to read as 
follows:

Sec.  1.4  Nature of correspondence and signature requirements.

    (a) * * *
    (1) * * *
    (2) Correspondence in and relating to a particular application or 
other proceeding in the Office. See particularly the rules relating to 
the filing, processing, or other proceedings of national applications 
in subpart B, Sec. Sec.  1.31 to 1.378; of international applications 
in subpart C, Sec. Sec.  1.401 to 1.499; of ex parte reexaminations of 
patents in subpart D, Sec. Sec.  1.501 to 1.570; of international 
design applications in subpart I, Sec. Sec.  1.1001 to 1.1070; of 
extension of patent term in subpart F, Sec. Sec.  1.710 to 1.785; of 
inter partes reexaminations of patents in subpart H, Sec. Sec.  1.902 
to 1.997; and of the Patent Trial and Appeal Board in parts 41 and 42 
of this title.
* * * * *
0
3. Section 1.5 is amended by revising paragraph (a) to read as follows:


Sec.  1.5  Identification of patent, patent application, or patent-
related proceeding.

    (a) No correspondence relating to an application should be filed 
prior to receipt of the assigned application number (i.e., U.S. 
application number, international application number, or international 
registration number as appropriate). When correspondence directed to 
the Patent and Trademark Office concerns a previously filed application 
for a patent, it must identify on the top page in a conspicuous 
location, the application number (consisting of the series code and the 
serial number; e.g., 07/123,456), or the serial number and filing date 
assigned to that application by the Patent and Trademark Office, or the 
international application number of the international application, or 
the international registration number of an international design 
application. Any correspondence not containing such identification will 
be returned to the sender where a return address is available. The 
returned correspondence will be accompanied with a cover letter which 
will indicate to the sender that if the returned correspondence is 
resubmitted to the Patent and Trademark Office within two weeks of the 
mail date on the cover letter, the original date of receipt of the 
correspondence will be considered by the Patent and Trademark Office as 
the date of receipt of the correspondence. Applicants may use either 
the Certificate of Mailing or Transmission procedure under Sec.  1.8 or 
the Express Mail procedure under Sec.  1.10 for resubmissions of 
returned correspondence if they desire to have the benefit of the date 
of deposit in the United States Postal Service. If the returned 
correspondence is not resubmitted within the two-week period, the date 
of receipt of the resubmission will be considered to be the date of 
receipt of the correspondence. The two-week period to resubmit the 
returned correspondence will not be extended. In addition to the 
application number, all correspondence directed to the Patent and 
Trademark Office concerning applications for patent should also state 
the name of the first listed inventor, the title of the invention, the 
date of filing the same, and if known, the group art unit or other unit 
within the Patent and Trademark Office responsible for considering the 
correspondence and the name of the examiner or other person to which it 
has been assigned.
* * * * *
0
4. Section 1.6 is amended by revising paragraphs (d)(3), (d)(4), and 
(d)(6) to read as follows:


Sec.  1.6  Receipt of correspondence.

* * * * *
    (d) * * *
    (3) Correspondence that cannot receive the benefit of the 
certificate of mailing or transmission as specified in Sec.  
1.8(a)(2)(i)(A) through (D), (F), (I), and (K) and Sec.  
1.8(a)(2)(iii)(A), except that a continued prosecution application 
under Sec.  1.53(d) may be transmitted to the Office by facsimile;
    (4) Color drawings submitted under Sec. Sec.  1.81, 1.83 through 
1.85, 1.152, 1.165, 1.173, 1.437, or 1.1026;
* * * * *
    (6) Correspondence to be filed in an application subject to a 
secrecy order under Sec. Sec.  5.1 through 5.5 of this chapter and 
directly related to the secrecy order content of the application;
* * * * *
0
5. Section 1.8 is amended by revising paragraphs (a)(2)(i)(I) and 
(a)(2)(i)(J), and adding a new paragraph (a)(2)(i)(K), to read as 
follows:


Sec.  1.8  Certificate of mailing or transmission.

    (a) * * *
    (2) * * *
    (i) * * *
    (I) The filing of a third-party submission under Sec.  1.290;
    (J) The calculation of any period of adjustment, as specified in 
Sec.  1.703(f); and
    (K) The filing of an international design application.
* * * * *
0
6. Section 1.9 is amended by revising paragraphs (a)(1) and (a)(3), and 
adding new paragraphs (l), (m), and (n) to read as follows:


Sec.  1.9  Definitions.

    (a) * * *
    (1) A national application as used in this chapter means either a 
U.S. application for patent which was filed

[[Page 71892]]

in the Office under 35 U.S.C. 111, an international application filed 
under the Patent Cooperation Treaty in which the basic national fee 
under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design 
application filed under the Hague Agreement in which the Office has 
received a copy of the international registration pursuant to Hague 
Agreement Article 10.
* * * * *
    (3) A nonprovisional application as used in this chapter means 
either a U.S. national application for patent which was filed in the 
Office under 35 U.S.C. 111(a), an international application filed under 
the Patent Cooperation Treaty in which the basic national fee under 35 
U.S.C. 41(a)(1)(F) has been paid, or an international design 
application filed under the Hague Agreement in which the Office has 
received a copy of the international registration pursuant to Hague 
Agreement Article 10.
* * * * *
    (l) Hague Agreement as used in this chapter means the Geneva Act of 
the Hague Agreement Concerning the International Registration of 
Industrial Designs adopted at Geneva, Switzerland, on July 2, 1999, and 
Hague Agreement Article as used in this chapter means an Article under 
the Hague Agreement.
    (m) Hague Agreement Regulations as used in this chapter means the 
Common Regulations Under the 1999 Act and the 1960 Act of the Hague 
Agreement; and Hague Agreement Rule as used in this chapter means one 
of the Hague Agreement Regulations.
    (n) An international design application as used in this chapter 
means an application for international registration of a design filed 
under the Hague Agreement. Unless otherwise clear from the wording, 
reference to ``design application'' or ``application for a design 
patent'' in this chapter includes an international design application 
that designates the United States.
0
7. Section 1.14 is amended by revising the introductory text of 
paragraph (a)(1), revising paragraphs (a)(1)(ii) through (a)(1)(vii), 
and adding a new paragraph (j), to read as follows:


Sec.  1.14  Patent applications preserved in confidence.

    (a) * * *
    (1) Records associated with patent applications (see paragraph (g) 
for international applications and paragraph (j) for international 
design applications) may be available in the following situations:
* * * * *
    (ii) Published abandoned applications. The file of an abandoned 
published application is available to the public as set forth in Sec.  
1.11(a). A copy of the application-as-filed, the file contents of the 
published application, or a specific document in the file of the 
published application may be provided to any person upon request, and 
payment of the appropriate fee set forth in Sec.  1.19(b).
    (iii) Published pending applications. A copy of the application-as-
filed, the file contents of the application, or a specific document in 
the file of a pending published application may be provided to any 
person upon request, and payment of the appropriate fee set forth in 
Sec.  1.19(b). If a redacted copy of the application was used for the 
patent application publication, the copy of the specification, 
drawings, and papers may be limited to a redacted copy. The Office will 
not provide access to the paper file of a pending application that has 
been published, except as provided in paragraph (c) or (i) of this 
section.
    (iv) Unpublished abandoned applications (including provisional 
applications) that are identified or relied upon. The file contents of 
an unpublished, abandoned application may be made available to the 
public if the application is identified in a U.S. patent, a statutory 
invention registration, a U.S. patent application publication, an 
international publication of an international application under PCT 
Article 21(2), or a publication of an international registration under 
Hague Agreement Article 10(3). An application is considered to have 
been identified in a document, such as a patent, when the application 
number or serial number and filing date, first named inventor, title 
and filing date or other application specific information are provided 
in the text of the patent, but not when the same identification is made 
in a paper in the file contents of the patent and is not included in 
the printed patent. Also, the file contents may be made available to 
the public, upon a written request, if benefit of the abandoned 
application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 
386(c) in an application that has issued as a U.S. patent, or has 
published as a statutory invention registration, a U.S. patent 
application publication, an international publication of an 
international application under PCT Article 21(2), or a publication of 
an international registration under Hague Agreement Article 10(3). A 
copy of the application-as-filed, the file contents of the application, 
or a specific document in the file of the application may be provided 
to any person upon written request, and payment of the appropriate fee 
(Sec.  1.19(b)).
    (v) Unpublished pending applications (including provisional 
applications) whose benefit is claimed. A copy of the file contents of 
an unpublished pending application may be provided to any person, upon 
written request and payment of the appropriate fee (Sec.  1.19(b)), if 
the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 
121, 365(c), or 386(c) in an application that has issued as a U.S. 
patent, or in an application that has published as a statutory 
invention registration, a U.S. patent application publication, an 
international publication of an international application under PCT 
Article 21(2), or a publication of an international registration under 
Hague Agreement Article 10(3). A copy of the application-as-filed, or a 
specific document in the file of the pending application may also be 
provided to any person upon written request, and payment of the 
appropriate fee (Sec.  1.19(b)). The Office will not provide access to 
the paper file of a pending application, except as provided in 
paragraph (c) or (i) of this section.
    (vi) Unpublished pending applications (including provisional 
applications) that are incorporated by reference or otherwise 
identified. A copy of the application as originally filed of an 
unpublished pending application may be provided to any person, upon 
written request and payment of the appropriate fee (Sec.  1.19(b)), if 
the application is incorporated by reference or otherwise identified in 
a U.S. patent, a statutory invention registration, a U.S. patent 
application publication, an international publication of an 
international application under PCT Article 21(2), or a publication of 
an international registration under Hague Agreement Article 10(3). The 
Office will not provide access to the paper file of a pending 
application, except as provided in paragraph (c) or (i) of this 
section.
    (vii) When a petition for access or a power to inspect is required. 
Applications that were not published or patented, that are not the 
subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 
386(c) in an application that has issued as a U.S. patent, an 
application that has published as a statutory invention registration, a 
U.S. patent application publication, an international publication of an 
international application under PCT Article 21(2), or a publication of 
an international registration under Hague Agreement Article 10(3), or 
are not identified in a U.S. patent, a statutory invention

[[Page 71893]]

registration, a U.S. patent application publication, an international 
publication of an international application under PCT Article 21(2), or 
a publication of an international registration under Hague Agreement 
Article 10(3), are not available to the public. If an application is 
identified in the file contents of another application, but not the 
published patent application or patent itself, a granted petition for 
access (see paragraph (i)) or a power to inspect (see paragraph (c)) is 
necessary to obtain the application, or a copy of the application.
* * * * *
    (j) International design applications.
    (1) With respect to an international design application maintained 
by the Office in its capacity as a designated office (Sec.  1.1003) for 
national processing, the records associated with the international 
design application may be made available as provided under paragraphs 
(a) through (i) of this section.
    (2) With respect to an international design application maintained 
by the Office in its capacity as an office of indirect filing (Sec.  
1.1002), the records of the international design application may be 
available under paragraph (j)(1) of this section where contained in the 
file of the international design application maintained by the Office 
for national processing. Also, if benefit of the international design 
application is claimed under 35 U.S.C. 386(c) in a U.S. patent or 
published application, the file contents may be made available to the 
public, or a copy of the application-as-filed, the file contents of the 
application, or a specific document in the file of the application may 
be provided to any person upon written request, and payment of the 
appropriate fee (Sec.  1.19(b)).
0
8. Section 1.16 is amended by revising the introductory text of 
paragraphs (b), (l) and (p) to read as follows:


Sec.  1.16  National application filing, search, and examination fees.

* * * * *
    (b) Basic fee for filing each application under 35 U.S.C. 111 for 
an original design patent:
* * * * *
    (l) Search fee for each application under 35 U.S.C. 111 for an 
original design patent:
* * * * *
    (p) Examination fee for each application under 35 U.S.C. 111 for an 
original design patent:
* * * * *
0
9. Section 1.17 is amended by revising paragraph (f) and adding new 
paragraphs (u) and (v) to read as follows:


Sec.  1.17  Patent application and reexamination processing fees.

* * * * *
    (f) For filing a petition under one of the following sections which 
refers to this paragraph:

By a micro entity (Sec.  1.29)--$100.00
By a small entity (Sec.  1.27(a))--$200.00
By other than a small or micro entity--$400.00

    Sec.  1.36(a)--for revocation of a power of attorney by fewer than 
all of the applicants.
    Sec.  1.53(e)--to accord a filing date.
    Sec.  1.57(a)--to accord a filing date.
    Sec.  1.182--for decision on a question not specifically provided 
for.
    Sec.  1.183--to suspend the rules.
    Sec.  1.378(e)--for reconsideration of decision on petition 
refusing to accept delayed payment of maintenance fee in an expired 
patent.
    Sec.  1.741(b)--to accord a filing date to an application under 
Sec.  1.740 for extension of a patent term.
    Sec.  1.1023--to review the filing date of an international design 
application.
* * * * *
    (u) For filing a petition to excuse applicant's failure to act 
within prescribed time limits in an international design application 
(35 U.S.C. 387 and Sec.  1.1051):

By a small entity (Sec.  1.27(a))--$850.00
By other than a small entity--$1,700.00

    (v) For filing a petition to convert an international design 
application to a design application under 35 U.S.C. chapter 16 (35 
U.S.C. 384 and Sec.  1.1052)--$180.00

0
10. Section 1.18 is amended by adding a new paragraph (b)(3) to read as 
follows:


Sec.  1.18  Patent post allowance (including issue) fees.

* * * * *
    (b) * * *
    (3) For an international design application designating the United 
States, where an issue fee is paid through the International Bureau 
(Hague Agreement Rule 12(3)(c)) as an alternative to paying the issue 
fee under paragraph (b)(1): The amount specified on the Web site of the 
World Intellectual Property Organization, available at: http://www.wipo.int/hague.
* * * * *
0
11. Section 1.25 is amended by revising the first sentence of paragraph 
(b) to read as follows:


Sec.  1.25  Deposit accounts.

* * * * *
    (b) Filing, issue, appeal, international-type search report, 
international application processing, international design application 
fees (Sec.  1.1031), petition, and post-issuance fees may be charged 
against these accounts if sufficient funds are on deposit to cover such 
fees. * * *
* * * * *
0
12. Section 1.27 is amended by revising paragraph (c)(3) to read as 
follows:


Sec.  1.27  Definition of small entities and establishing status as a 
small entity to permit payment of small entity fees; when a 
determination of entitlement to small entity status and notification of 
loss of entitlement to small entity status are required; fraud on the 
Office.

* * * * *
    (c) * * *
    (3) Assertion by payment of the small entity basic filing, basic 
transmittal, basic national fee, or international search fee. The 
payment, by any party, of the exact amount of one of the small entity 
basic filing fees set forth in Sec. Sec.  1.16(a), 1.16(b), 1.16(c), 
1.16(d), 1.16(e), the small entity transmittal fee set forth in Sec.  
1.445(a)(1), the small entity international search fee set forth in 
Sec.  1.445(a)(2) to a Receiving Office other than the United States 
Receiving Office in the exact amount established for that Receiving 
Office pursuant to PCT Rule 16, the small entity first part of the 
individual designation fee for the United States (Hague Agreement Rule 
12(1)(a)(iii)) to the International Bureau in an international design 
application, or the small entity basic national fee set forth in Sec.  
1.492(a), will be treated as a written assertion of entitlement to 
small entity status even if the type of basic filing, basic 
transmittal, or basic national fee is inadvertently selected in error.
* * * * *
0
13. Section 1.29 is amended by revising the first sentence of paragraph 
(e) to read as follows:


Sec.  1.29  Micro entity status.

* * * * *
    (e) Micro entity status is established in an application by filing 
a micro entity certification in writing complying with the requirements 
of either paragraph (a) or paragraph (d) of this section and signed 
either in compliance with Sec.  1.33(b) or in an international design 
application by a person authorized to represent the applicant under 
Sec.  1.1041(a) before the International Bureau where the micro entity 
certification is filed with the International Bureau. * * *
* * * * *

[[Page 71894]]

0
14. Section 1.41 is amended by adding a new paragraph (f) to read as 
follows:


Sec.  1.41  Inventorship.

* * * * *
    (f) The inventorship of an international design application 
designating the United States is the creator or creators set forth in 
the publication of the international registration under Hague Agreement 
Article 10(3). Any correction of inventorship must be pursuant to Sec.  
1.48.
0
15. Section 1.46 is amended by revising paragraphs (b) and (c) to read 
as follows:


Sec.  1.46  Application for patent by an assignee, obligated assignee, 
or a person who otherwise shows sufficient proprietary interest in the 
matter.

* * * * *
    (b) If an application under 35 U.S.C. 111 is made by a person other 
than the inventor under paragraph (a) of this section, the application 
must contain an application data sheet under Sec.  1.76 specifying in 
the applicant information section (Sec.  1.76(b)(7)) 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. If an application entering the national stage 
under 35 U.S.C. 371 or an international design application before the 
United States as a designated office is applied for by a person other 
than the inventor under paragraph (a) of this section, 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 must have been identified as the applicant for 
the United States in the international stage of the international 
application or as the holder in the publication of the international 
registration under Hague Agreement Article 10(3).
    (c) Any request to correct or update the name of the applicant 
under this section must include an application data sheet under Sec.  
1.76 specifying the correct or updated name of the applicant in the 
applicant information section (Sec.  1.76(b)(7)) except that correction 
of the name of the applicant may be made pursuant to Hague Agreement 
Article 16 for an international design application. Any request to 
replace the original applicant with an applicant under this section 
must include an application data sheet under Sec.  1.76 specifying the 
applicant in the applicant information section (Sec.  1.76(b)(7)) and 
comply with Sec. Sec.  3.71 and 3.73 of this title.
* * * * *
0
16. Section 1.53 is amended by revising paragraph (d)(1)(ii) to read as 
follows:


Sec.  1.53  Application number, filing date, and completion of 
application.

* * * * *
    (d) * * *
    (1) * * *
    (ii) The prior nonprovisional application is a design application, 
but not an international design application, that is complete as 
defined by Sec.  1.51(b); and
* * * * *
0
17. Section 1.55 is amended by revising paragraph (b) and adding a new 
paragraph (m) to read as follows:


Sec.  1.55  Claim for foreign priority.

* * * * *
    (b) Time for filing subsequent application. The nonprovisional 
application must be filed not later than twelve months (six months in 
the case of a design application) after the date on which the foreign 
application was filed, or be entitled to claim the benefit under 35 
U.S.C. 120, 121, 365(c), or 386(c) of an application that was filed not 
later than twelve months (six months in the case of a design 
application) after the date on which the foreign application was filed. 
The twelve-month period is subject to 35 U.S.C. 21(b) (and Sec.  
1.7(a)) and PCT Rule 80.5, and the six-month period is subject to 35 
U.S.C. 21(b) (and Sec.  1.7(a)) and Hague Agreement Rule 4(4).
* * * * *
    (m) Time for filing priority claim and certified copy of foreign 
application in an international design application designating the 
United States. In an international design application designating the 
United States, the claim for priority may be made in accordance with 
the Hague Agreement and the Hague Agreement Regulations. For purposes 
of the United States, the priority claim may also be presented in an 
application data sheet (Sec.  1.76(b)(6)), filed directly with the 
Office after publication of the international registration under Hague 
Agreement Article 10(3), identifying the foreign application for which 
priority is claimed, by specifying the application number, country (or 
intellectual property authority), day, month, and year of its filing. 
The priority claim and certified copy must be furnished in accordance 
with the time period and other conditions set forth in paragraph (g) of 
this section.
0
18. Section 1.57 is amended by revising the introductory text of 
paragraph (a), redesignating paragraph (a)(3) as paragraph (a)(4), and 
adding a new paragraph (a)(3) to read as follows:


Sec.  1.57  Incorporation by reference.

    (a) Subject to the conditions and requirements of this paragraph, 
if all or a portion of the specification or drawing(s) is inadvertently 
omitted from an application, but the application contains a claim under 
Sec.  1.55 for priority of a prior-filed foreign application, or a 
claim under Sec.  1.78 for the benefit of a prior-filed provisional, 
nonprovisional, international application, or international design 
application, that was present on the filing date of the application, 
and the inadvertently omitted portion of the specification or 
drawing(s) is completely contained in the prior-filed application, the 
claim under Sec.  1.55 or Sec.  1.78 shall also be considered an 
incorporation by reference of the prior-filed application as to the 
inadvertently omitted portion of the specification or drawing(s).
* * * * *
    (3) Any amendment to an international design application that 
designates the United States pursuant to this paragraph shall be 
effective only as to the United States, and shall have no effect on the 
filing date of the application.
* * * * *
0
19. Section 1.76 is amended by revising paragraph (b)(6) to read as 
follows:


Sec.  1.76  Application data sheet.

* * * * *
    (b) * * *
    (6) Foreign priority information. This information includes the 
application number, country (or intellectual property authority), and 
filing date of each foreign application for which priority is claimed. 
Providing this information in the application data sheet constitutes 
the claim for priority as required by 35 U.S.C. 119(b) and Sec.  1.55.
* * * * *
0
20. Section 1.78 is amended by revising the introductory text of 
paragraphs (c) and (d), revising paragraphs (c)(1)(i) through 
(c)(1)(ii) and (c)(2), and adding new paragraph (c)(1)(iii) and (c)(7) 
to read as follows:


Sec.  1.78  Claiming benefit of earlier filing date and cross-
references to other applications.

* * * * *
    (c) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the 
benefit of a prior-filed nonprovisional, international application, or 
international design application. An applicant in a nonprovisional 
application, an

[[Page 71895]]

international application designating the United States, or an 
international design application designating the United States may 
claim the benefit of one or more prior-filed copending nonprovisional 
applications, international applications designating the United States, 
or international design applications designating the United States 
under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) 
and this section.
    (1) * * *
    (i) An international application entitled to a filing date in 
accordance with PCT Article 11 and designating the United States;
    (ii) A nonprovisional application under 35 U.S.C. 111(a) that is 
entitled to a filing date as set forth in Sec.  1.53(b) or Sec.  
1.53(d) for which the basic filing fee set forth in Sec.  1.16 has been 
paid within the pendency of the application; or
    (iii) An international design application designating the United 
States and entitled to a filing date as set forth in Sec.  1.1023.
    (2) Except for a continued prosecution application filed under 
Sec.  1.53(d), any nonprovisional application, international 
application designating the United States, or international design 
application designating the United States that claims the benefit of 
one or more prior-filed nonprovisional applications, international 
applications designating the United States, or international design 
applications designating the United States must contain or be amended 
to contain a reference to each such prior-filed application, 
identifying it by application number (consisting of the series code and 
serial number), international application number and international 
filing date, or international registration number and international 
registration date. If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be included 
in an application data sheet (Sec.  1.76(b)(5)). The reference also 
must identify the relationship of the applications, namely, whether the 
later-filed application is a continuation, divisional, or continuation-
in-part of the prior-filed nonprovisional application, international 
application, or international design application.
* * * * *
    (7) Where benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 
386(c) to an international application or an international design 
application which designates but did not originate in the United 
States, the Office may require a certified copy of such application 
together with an English translation thereof if filed in another 
language.
    (d) Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for 
the benefit of a prior-filed nonprovisional application, international 
application, or international design application. If the reference 
required by 35 U.S.C. 120 and paragraph (c)(2) of this section is 
presented after the time period provided by paragraph (c)(3) of this 
section, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the 
benefit of a prior-filed copending nonprovisional application, 
international application designating the United States, or 
international design application designating the United States may be 
accepted if the reference identifying the prior-filed application by 
application number, international application number and international 
filing date, or international registration number and filing date was 
unintentionally delayed. A petition to accept an unintentionally 
delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the 
benefit of a prior-filed application must be accompanied by:
* * * * *
0
21. Section 1.84 is amended by revising paragraph (y) to read as 
follows:


Sec.  1.84  Standards for drawings.

* * * * *
    (y) Types of drawings. See Sec.  1.152 for design drawings, Sec.  
1.1026 for international design reproductions, Sec.  1.165 for plant 
drawings, and Sec.  1.173(a)(2) for reissue drawings.
0
22. Section 1.85 is amended by revising paragraphs (a) and (c) to read 
as follows:


Sec.  1.85  Corrections to drawings.

    (a) A utility or plant application will not be placed on the files 
for examination until objections to the drawings have been corrected. 
Except as provided in Sec.  1.215(c), any patent application 
publication will not include drawings filed after the application has 
been placed on the files for examination. Unless applicant is otherwise 
notified in an Office action, objections to the drawings in a utility 
or plant application will not be held in abeyance, and a request to 
hold objections to the drawings in abeyance will not be considered a 
bona fide attempt to advance the application to final action (Sec.  
1.135(c)). If a drawing in a design application meets the requirements 
of Sec.  1.84(e), (f), and (g) and is suitable for reproduction, but is 
not otherwise in compliance with Sec.  1.84, the drawing may be 
admitted for examination. Similarly, if a drawing in an international 
design application designating the United States meets the requirements 
of Sec.  1.1026, the drawing may be admitted for examination.
* * * * *
    (c) If a corrected drawing is required or if a drawing does not 
comply with Sec.  1.84 or Sec.  1.1026 at the time an application is 
allowed, the Office may notify the applicant in a notice of 
allowability and set a three-month period of time from the mail date of 
the notice of allowability within which the applicant must file a 
corrected drawing in compliance with Sec.  1.84 or Sec.  1.1026, 
whichever is appropriate, to avoid abandonment. This time period is not 
extendable under Sec.  1.136 (see Sec.  1.136(c)).
0
23. Section 1.97 is amended by redesignating paragraphs (b)(3) and 
(b)(4) as paragraphs (b)(4) and (b)(5), respectively, and adding a new 
paragraph (b)(3) to read as follows:


Sec.  1.97  Filing of information disclosure statement.

* * * * *
    (b) * * *
    (3) Within three months of the date of publication of the 
international registration under Hague Agreement Article 10(3) in an 
international design application;
* * * * *
0
24. Section 1.105 is amended by revising the introductory text of 
paragraph (a)(1) to read as follows:


Sec.  1.105  Requirements for information.

    (a)(1) In the course of examining or treating a matter in a pending 
or abandoned application, in a patent, in a supplemental examination 
proceeding, or in a reexamination proceeding, the examiner or other 
Office employee may require the submission, from individuals identified 
under Sec.  1.56(c), or any assignee, of such information as may be 
reasonably necessary to properly examine or treat the matter, for 
example:
* * * * *
0
25. Section 1.114 is amended by redesignating paragraph (e)(5) as 
paragraph (e)(6), revising paragraph (e)(4), and adding new paragraph 
(e)(5) to read as follows:


Sec.  1.114  Request for continued examination.

* * * * *
    (e) * * *
    (4) An application for a design patent;
    (5) An international design application; or
    (6) A patent under reexamination.
0
26. Section 1.155 is amended by revising paragraph (a)(1) to read as 
follows:

[[Page 71896]]

Sec.  1.155  Expedited examination of design applications.

    (a) * * *
    (1) The application must include drawings in compliance with Sec.  
1.84, or for an international design application that designates the 
United States, published pursuant to Hague Agreement Article 10(3);
* * * * *
0
27. Section 1.211 is amended by revising paragraph (b) to read as 
follows.


Sec.  1.211  Publication of applications.

* * * * *
    (b) Provisional applications under 35 U.S.C. 111(b) shall not be 
published, and design applications under 35 U.S.C. chapter 16, 
international design applications under 35 U.S.C. chapter 38, and 
reissue applications under 35 U.S.C. chapter 25 shall not be published 
under this section.
* * * * *
0
28. Section 1.312 is revised to read as follows.


Sec.  1.312  Amendments after allowance.

    No amendment may be made as a matter of right in an application 
after the mailing of the notice of allowance. Any amendment filed 
pursuant to this section must be filed before or with the payment of 
the issue fee, and may be entered on the recommendation of the primary 
examiner, approved by the Director, without withdrawing the application 
from issue. For purposes of this section, where the issue fee is paid 
in an international design application through the International 
Bureau, the date of payment of the issue fee will be the date the issue 
fee is recorded by the Office.
0
29. Subpart I to part 1 is added to read as follows:
Subpart I--International Design Application

General Information

Sec.
1.1001 Definitions related to international design applications.
1.1002 The United States Patent and Trademark Office as an office of 
indirect filing.
1.1003 The United States Patent and Trademark Office as a designated 
office.
1.1004 The International Bureau.

Who May File An International Design Application

1.1011 Applicant for international design application.

The International Design Application

1.1021 Contents of the international design application.
1.1022 Form and signature.
1.1023 Filing date of an international design application in the 
United States.
1.1024 The description.
1.1025 The claim.
1.1026 Reproductions.
1.1027 Specimens.

Fees

1.1031 International design application fees.

Priority

1.1035 The priority claim in an international design application.

Representation

1.1041 Representation in an international design application.

Transmittal of the International Design Application to the 
International Bureau

1.1045 Procedures for transmittal of international design 
application to the International Bureau.

Relief From Prescribed Time Limits; Conversion to a design Application 
Under 35 U.S.C. Chapter 16

1.1051 Relief from prescribed time limits.
1.1052 Conversion to a design application under 35 U.S.C. chapter 
16.

National Processing of International Design Applications

1.1061 Rules applicable.
1.1062 Examination.
1.1063 Notification of Refusal.
1.1064 One independent and distinct design.
1.1066 Correspondence address for an international design 
application.
1.1067 Title and the inventor's oath or declaration.
1.1069 Notification of Division.
1.1070 Notification of Invalidation.

Subpart I -- International Design Application

General Information


Sec.  1.1001  Definitions related to international design applications.

    (a) Article as used in this subpart means an article of the Hague 
Agreement;
    (b) Regulations as used in this subpart means the ``Common 
Regulations Under the 1999 Act and the 1960 Act of the Hague 
Agreement'';
    (c) Rule as used in this subpart means one of the Regulations;
    (d) Administrative Instructions as used in this subpart means the 
Administrative Instructions referred to in Rule 34;
    (e) 1960 Act as used in this subpart means the Act signed at the 
Hague on November 28, 1960, of the Hague Agreement;
    (f) Other terms and expressions in subpart I not defined in this 
section are as defined in Article 1, Rule 1, and 35 U.S.C. 381.


Sec.  1.1002  The United States Patent and Trademark Office as an 
office of indirect filing.

    (a) The United States Patent and Trademark Office, as an office of 
indirect filing, shall accept international design applications where 
the applicant's Contracting Party is the United States.
    (b) The major functions of the United States Patent and Trademark 
Office as an office of indirect filing include:
    (1) Receiving and according a receipt date to international design 
applications;
    (2) Collecting and, when required, transmitting fees due for 
processing international design applications;
    (3) Determining compliance with applicable requirements of part 5 
of this chapter; and
    (4) Transmitting an international design application to the 
International Bureau, unless prescriptions concerning national security 
prevent the application from being transmitted.


Sec.  1.1003  The United States Patent and Trademark Office as a 
designated office.

    (a) The United States Patent and Trademark Office will act as a 
designated office (``United States Designated Office'') for 
international design applications in which the United States has been 
designated as a Contracting Party in which protection is sought.
    (b) The major functions of the United States Designated Office 
include:
    (1) Accepting for national examination international design 
applications which satisfy the requirements of the Hague Agreement, the 
Regulations and the regulations;
    (2) Performing an examination of the international design 
application in accordance with 35 U.S.C. chapter 16; and
    (3) Communicating the results of examination to the International 
Bureau.


Sec.  1.1004  The International Bureau.

    (a) The International Bureau is the World Intellectual Property 
Organization located at Geneva, Switzerland. It is the international 
intergovernmental organization which acts as the coordinating body 
under the Hague Agreement and the Regulations.
    (b) The major functions of the International Bureau include:
    (1) Receiving international design applications directly from 
applicants and indirectly from an office of indirect filing;
    (2) Collecting required fees and crediting designation fees to the 
accounts of the Contracting Parties concerned;

[[Page 71897]]

    (3) Reviewing international design applications for compliance with 
prescribed formal requirements;
    (4) Translating international design applications into the required 
languages for recordation and publication;
    (5) Recording international design applications in the 
International Register;
    (6) Publishing international design applications in the 
International Designs Bulletin; and
    (7) Sending copies of the publication of the international 
registration to each designated office.

Who May File an International Design Application


Sec.  1.1011  Applicant for an international design application.

    (a) Only persons who are nationals of the United States or who have 
a domicile, a habitual residence or a real and effective industrial or 
commercial establishment in the territory of the United States may file 
international design applications through the United States Patent and 
Trademark Office.
    (b) Although the United States Patent and Trademark Office will 
accept international design applications filed by any person referred 
to in paragraph (a) of this section, an international design 
application designating the United States may be refused by the Office 
as a designated office if the applicant is not a person qualified under 
35 U.S.C. chapter 11 to be an applicant.

The International Design Application


Sec.  1.1021  Contents of the international design application.

    (a) Mandatory contents. The international design application shall 
be in English, French or Spanish (Rule 6) and shall contain or be 
accompanied by:
    (1) A request for international registration under the Hague 
Agreement (Article 5(1)(i));
    (2) The prescribed data concerning the applicant (Article 5(1)(ii) 
and Rule 7(3)(i) and (ii));
    (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; however, where the 
industrial design is two-dimensional and a request for deferment of 
publication is made in accordance with Article 5(5), the international 
design application may, instead of containing reproductions, be 
accompanied by the prescribed number of specimens of the industrial 
design (Article 5(1)(iii));
    (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 (Article 5(1)(iv) and Rule 7(3)(iv));
    (5) An indication of the designated Contracting Parties (Article 
5(1)(v));
    (6) The prescribed fees (Article 5(1)(vi) and Rule 12(1));
    (7) The Contracting Party or Parties in respect of which the 
applicant fulfills the conditions to be the holder of an international 
registration (Rule 7(3)(iii));
    (8) The number of industrial designs included in the international 
design application, which may not exceed 100, and the number of 
reproductions or specimens of the industrial designs accompanying the 
international design application (Rule 7(3)(v));
    (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 (Rule 7(3)(vii)); and
    (10) An indication of applicant's Contracting Party as required 
under Rule 7(4)(a).
    (b) Additional mandatory contents required by certain Contracting 
Parties.
    (1) Where the international design application contains the 
designation of a Contracting Party that requires, pursuant to Article 
5(2), any of the following elements, then the international design 
application shall contain such required element(s):
    (i) Indications concerning the identity of the creator of the 
industrial design that is the subject of that application (Rule 11(1));
    (ii) A brief description of the reproduction or of the 
characteristic features of the industrial design that is the subject of 
that application (Rule 11(2));
    (iii) A claim (Rule 11(3)).
    (2) Where the international design application contains the 
designation of a Contracting Party that has made a declaration under 
Rule 8(1), then the international application shall contain the 
statement, document, oath or declaration specified in that declaration 
(Rule 7(4)(c)).
    (c) Optional contents. The international design application may 
contain:
    (1) Two or more industrial designs, subject to the prescribed 
conditions (Article 5(4) and Rule 7(7));
    (2) A request for deferment of publication (Article 5(5) and Rule 
7(5)(e));
    (3) An element referred to in item (i) or (ii) of Article 5(2)(b) 
of the Hague Agreement or in Article 8(4)(a) of the 1960 Act even where 
that element is not required in consequence of a notification in 
accordance with Article 5(2)(a) of the Hague Agreement or in 
consequence of a requirement under Article 8(4)(a) of the 1960 Act 
(Rule 7(5)(a));
    (4) The name and address of applicant's representative, as 
prescribed (Rule 7(5)(b));
    (5) A claim of priority under Article 4 of the Paris Convention, as 
prescribed (Rule 7(5)(c));
    (6) A declaration, for purposes of Article 11 of the Paris 
Convention, that the product or products which 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 design application are concerned, the indication of those 
industrial designs to which the declaration relates or does not relate 
(Rule 7(5)(d));
    (7) Any declaration, statement or other relevant indication as may 
be specified in the Administrative Instructions (Rule 7(5)(f));
    (8) A statement that identifies information known by the applicant 
to be material to the eligibility for protection of the industrial 
design concerned (Rule 7(5)(g));
    (9) A proposed translation of any text matter contained in the 
international design application for purposes of recording and 
publication (Rule 6(4)).
    (d) Required contents where the United States is designated. In 
addition to the mandatory requirements set forth in paragraph (a) of 
this section, an international design application that designates the 
United States shall contain or be accompanied by:
    (1) A claim (Sec. Sec.  1.1021(b)(1)(iii) and 1.1025);
    (2) Indications concerning the identity of the creator (Rule 
11(1)); and
    (3) The inventor's oath or declaration (Sec. Sec.  1.63 and 1.64). 
The requirements in Sec.  1.63(b) and Sec.  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 Sec.  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

[[Page 71898]]

application prior to international registration.


Sec.  1.1022  Form and signature.

    (a) The international design application shall be presented on the 
official form or any form having the same contents and format (Rules 
7(1) and 1(vi)).
    (b) The international design application shall be signed by the 
applicant.


Sec.  1.1023  Filing date of an international design application in the 
United States.

    (a) Subject to paragraph (b) of this section, the filing date of an 
international design application in the United States is the date of 
international registration determined by the International Bureau under 
the Hague Agreement (35 U.S.C. 384 and 381(a)(5)).
    (b) Where the applicant believes the international design 
application is entitled under the Hague Agreement to a filing date in 
the United States other than the date of international registration, 
the applicant may petition the Director under this paragraph to accord 
the international design application a filing date in the United States 
other than the date of international registration. Such petition must 
be accompanied by the fee set forth in Sec.  1.17(f) and include a 
showing to the satisfaction of the Director that the international 
design application is entitled to such filing date.


Sec.  1.1024  The description.

    (a) 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 view or views of the 
reproduction.
    (b) The description requirements set forth in Rule 11(2) may apply 
to designations of Contracting Parties other than the United States 
that require a description.


Sec.  1.1025  The claim.

    The specific wording of the claim in an international design 
application designating the United States shall be in formal terms to 
the ornamental design for the article (specifying name of article) as 
shown, or as shown and described. More than one claim is neither 
required nor permitted for purposes of the United States.


Sec.  1.1026  Reproductions.

    Reproductions shall comply with the requirements of Rule 9 and Part 
Four of the Administrative Instructions.


Sec.  1.1027  Specimens.

    Where a request for deferment of publication has been filed in 
respect of a two-dimensional industrial design, the international 
design application may include specimens of the design in accordance 
with Rule 10 and Part Four of the Administrative Instructions. Neither 
a request for deferment of publication nor specimens are permitted in 
an international design application that designates the United States 
or any other Contracting Party which does not permit deferment of 
publication.

Fees


Sec.  1.1031  International design application fees.

    (a) International design applications filed through the Office as 
an office of indirect filing are subject to payment of a transmittal 
fee (35 U.S.C. 382(b) and Article 4(2)) in the amount of $130.
    (b) The Schedule of Fees annexed to the Regulations (Rule 27(1)), a 
list of individual designation fee amounts, and a fee calculator may be 
viewed on the Web site of the World Intellectual Property Organization, 
available at: http://www.wipo.int/hague.
    (c) The following fees required by the International Bureau may be 
paid either directly to the International Bureau or through the Office 
as an office of indirect filing in the amounts specified on the World 
Intellectual Property Organization Web site described in paragraph (b) 
of this section:
    (1) International application fees (Rule 12(1)); and
    (2) Fee for descriptions exceeding 100 words (Rule 11(2)).
    (d) The fees referred to in paragraph (c) of this section may be 
paid as follows:
    (1) Directly to the International Bureau in Swiss currency (see 
Administrative Instruction 801); or
    (2) Through the Office as an office of indirect filing, provided 
such fees are paid no later than the date of payment of the transmittal 
fee required under paragraph (a) of this section. Any payment through 
the Office must be in U.S. dollars. Applicants paying the fees in 
paragraph (c) of this section through the Office may be subject to a 
requirement by the International Bureau to pay additional amounts where 
the conversion from U.S. dollars to Swiss currency results in the 
International Bureau receiving less than the prescribed amounts.

Priority


Sec.  1.1035  The priority claim in an international design 
application.

    (a) The international design application may claim under Article 4 
of the Paris Convention, the priority of one or more earlier 
applications filed in or for any country party to that Convention or 
any Member of the World Trade Organization. The priority claim must 
contain an indication of the name of the Office where such filing was 
made and of the date and, where available, the number of that filing, 
and where the priority claim relates to less than all the industrial 
designs contained in the international design application, the 
indication of those industrial designs to which the priority claim 
relates or does not relate (Article 6 and Rule 7(5)(c)).
    (b) An international design application designating the United 
States may claim benefit under 35 U.S.C. 120, 121, 365(c) or 386(c) to 
an earlier filed application in accordance with Sec.  1.78.

Representation


Sec.  1.1041  Representation in an international design application.

    (a) The applicant or the holder may appoint a representative before 
the International Bureau in accordance with Rule 3.
    (b) Applicants of international design applications may be 
represented before the Office as an office of indirect filing by a 
practitioner registered (Sec.  11.6) or granted limited recognition 
(Sec. Sec.  11.9(a) or (b)) to practice before the Office in patent 
matters. Such practitioner may act pursuant to Sec.  1.34 or be 
appointed, in writing signed by the applicant, giving the practitioner 
power to act on behalf of the applicant and specifying the name and 
registration number or limited recognition number of each practitioner. 
An appointment of a representative made in the international design 
application pursuant to Rule 3(2) that complies with the requirements 
of this paragraph will be effective as an appointment before the Office 
as an office of indirect filing.

Transmittal of International Design Application to the International 
Bureau


Sec.  1.1045  Procedures for transmittal of international design 
application to the International Bureau.

    (a) Subject to paragraph (b) of this section and payment of the 
transmittal fee set forth in Sec.  1.1031(a), transmittal of the 
international design application to the International Bureau shall be 
made by the Office as provided by Rule 13(1). At the same time as it 
transmits the international design application to the International 
Bureau, the Office shall notify the International Bureau of the date on 
which it received the application. The Office shall also notify

[[Page 71899]]

the applicant of the date on which it received the application and of 
the transmittal of the international design application to the 
International Bureau.
    (b) No copy of an international design application may be 
transmitted to the International Bureau, a foreign designated office, 
or other foreign authority by the Office or the applicant, unless the 
applicable requirements of part 5 of this chapter have been satisfied.
    (c) Once transmittal of the international design application has 
been effected under paragraph (a) of this section, except for matters 
properly before the United States Patent and Trademark Office as an 
office of indirect filing or as a designated office, all further 
correspondence concerning the application should be sent directly to 
the International Bureau. The United States Patent and Trademark Office 
will generally not forward communications to the International Bureau 
received after transmittal of the application to the International 
Bureau. Any reply to an invitation sent to the applicant by the 
International Bureau must be filed directly with the International 
Bureau, and not with the Office, to avoid abandonment or other loss of 
rights under Article 8.

Relief From Prescribed Time Limits; Conversion to a Design Application 
Under 35 U.S.C. Chapter 16


Sec.  1.1051  Relief from prescribed time limits.

    (a) If the delay in an applicant's failure to act within prescribed 
time limits under the Hague Agreement in connection with requirements 
pertaining to an international design application was unintentional, a 
petition may be filed pursuant to this section to excuse the failure to 
act as to the United States. A grantable petition pursuant to this 
section must be accompanied by:
    (1) A copy of any invitation sent from the International Bureau 
setting a prescribed time limit for which applicant failed to timely 
act;
    (2) The reply required under paragraph (c) of this section, unless 
previously filed;
    (3) The fee as set forth in Sec.  1.17(u);
    (4) A certified copy of the originally filed international design 
application, unless a copy of the international design application was 
previously communicated to the Office from the International Bureau or 
the international design application was filed with the Office as an 
office of indirect filing, and a translation thereof into the English 
language if it was filed in another language; and
    (5) A statement that the entire delay in filing the required reply 
from the due date for the reply until the filing of a grantable 
petition pursuant to this paragraph was unintentional. The Director may 
require additional information where there is a question whether the 
delay was unintentional.
    (b) Any request for reconsideration or review of a decision 
refusing to excuse the applicant's failure to act within prescribed 
time limits in connection with requirements pertaining to an 
international design application upon petition filed pursuant to this 
section, to be considered timely, must be filed within two months of 
the decision refusing to excuse or within such time as set in the 
decision. Unless a decision indicates otherwise, this time period may 
be extended under the provisions of Sec.  1.136.
    (c) Reply. The reply required may be:
    (1) The filing of a continuing application. If the international 
design application has not been subject to international registration, 
the reply must also include a grantable petition under Sec.  1.1023(b) 
to accord the international design application a filing date; or
    (2) A grantable petition under Sec.  1.1052, where the 
international design application was filed with the Office as an office 
of indirect filing.


Sec.  1.1052  Conversion to a design application under 35 U.S.C. 
chapter 16.

    (a) An international design application designating the United 
States filed with the Office as an office of indirect filing and 
meeting the requirements under Sec.  1.53(b) for a filing date for an 
application for a design patent may, on petition under this section, be 
converted to an application for a design patent under Sec.  1.53(b) and 
accorded a filing date as provided therein. A petition under this 
section must be accompanied by the fee set forth in Sec.  1.17(v) and 
be filed prior to publication of the international registration under 
Article 10(3). The conversion of an international design application to 
an application for a design patent under Sec.  1.53(b) will not entitle 
applicant to a refund of the transmittal fee or any fee forwarded to 
the International Bureau, or the application of any such fee toward the 
filing fee, or any other fee, for the application for a design patent 
under Sec.  1.53(b). The application for a design patent resulting from 
conversion of an international design application must also include the 
basic filing fee (Sec.  1.16(b)), the search fee (Sec.  1.16(l)), the 
examination fee (Sec.  1.16(p)), the inventor's oath or declaration 
(Sec. Sec.  1.63 or 1.64), and a surcharge if required by Sec.  
1.16(f).
    (b) An international design application will be treated as an 
application for a design patent under Sec.  1.53(b) if a decision on 
petition under this section is granted prior to transmittal of the 
international design application to the International Bureau pursuant 
to Sec.  1.1045. Otherwise, a decision granting a petition under this 
section will be effective to treat the international design application 
as an application for a design patent under Sec.  1.53(b) only for 
purposes of the United States.
    (c) A petition under this section will not be granted in an 
abandoned international design application absent a grantable petition 
under Sec.  1.1051.

National Processing of International Design Applications


Sec.  1.1061  Rules applicable.

    (a) The rules relating to applications for patents for other 
inventions or discoveries are also applicable to international design 
applications designating the United States, except as otherwise 
provided in this chapter or required by the Articles or Regulations.
    (b) The provisions of Sec. Sec.  1.84 and 1.152-1.154 shall not 
apply to international design applications.


Sec.  1.1062  Examination.

    (a) Examination. The Office shall make an examination pursuant to 
Title 35 of the United States Code of an international design 
application designating the United States. An international design 
application may not be refused on grounds that requirements relating to 
the form or contents of the international design application provided 
for in the Hague Agreement or the Regulations or additional to, or 
different from, those requirements have not been satisfied.
    (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 (Sec.  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.


Sec.  1.1063  Notification of Refusal

    (a) A notification of refusal shall contain or indicate:
    (1) The number of the international registration;

[[Page 71900]]

    (2) The grounds on which the refusal is based;
    (3) Where the grounds of refusal refer to similarity with an 
industrial design that is the subject of an earlier application or 
registration, a copy of a reproduction of the earlier industrial design 
and information concerning the earlier industrial design as required 
under Hague Rule 18(2)(b)(iv); and
    (4) A time period for reply to the notification under Sec.  1.134 
and Sec.  1.136 to avoid abandonment.
    (b) Any reply to the notification of refusal must be filed directly 
with the Office and not through the International Bureau. The 
requirements of Sec.  1.111 shall apply to a reply to a notification of 
refusal.


Sec.  1.1064  One independent and distinct design.

    (a) Only one independent and distinct design may be claimed in an 
international design application designating the United States.
    (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 
Sec. Sec.  1.143 and 1.144.


Sec.  1.1066  Correspondence address for an international design 
application.

    (a) Unless changed in accordance with paragraph (b) of this 
section, the Office will use as the correspondence address the address 
of applicant's representative identified in the publication of the 
international registration, or if there is no address for the 
representative, the address of the applicant identified therein.
    (b) The correspondence address may be changed by the parties set 
forth in Sec.  1.33(b)(1) or (b)(3) in accordance with Sec.  1.33(a).
    (c) Reference in the rules to the correspondence address set forth 
in Sec.  1.33(a) shall be construed to include a reference to this 
section for a nonprovisional application that is an international 
design application.


Sec.  1.1067  Title and inventor's oath or declaration.

    (a) The title of the design must designate the particular article. 
Where an international design application does not contain a title of 
the design, the Office may establish a title.
    (b) An international design application designating the United 
States must include the inventor's oath or declaration. See Sec.  
1.1021(d). If the applicant is notified in a notice of allowability 
that an oath or declaration in compliance with Sec.  1.63, or 
substitute statement in compliance with Sec.  1.64, executed by or with 
respect to each named inventor has not been filed, the applicant must 
file each required oath or declaration in compliance with Sec.  1.63, 
or substitute statement in compliance with Sec.  1.64, no later than 
the date on which the issue fee is paid to avoid abandonment. This time 
period is not extendable under Sec.  1.136 (see Sec.  1.136(c)).


Sec.  1.1069  Notification of Division.

    (a) Where, following a notification of refusal in an international 
design application requiring an election of an independent and distinct 
design under Sec.  1.1064(b), a divisional application claiming benefit 
under 35 U.S.C. 386(c) and 121 to the international design application 
is filed for the non-elected design(s), the Office shall notify the 
International Bureau. The notification to the International Bureau 
shall indicate:
    (1) The number of the international registration concerned;
    (2) The numbers of the industrial designs which have been the 
subject of the divisional application(s); and
    (3) The divisional application number(s).
    (b) The Office may require the applicant in a divisional 
application that is subject to a notification under paragraph (a) of 
this section to identify the design in the international design 
application pursued in the divisional application.


Sec.  1.1070  Notification of Invalidation.

    (a) Where a design patent that was granted from an international 
design application is invalidated in the United States, and the 
invalidation is no longer subject to any review or appeal, the patentee 
shall inform the Office.
    (b) After receiving a notification of invalidation under paragraph 
(a) of this section or through other means, the Office will notify the 
International Bureau in accordance with Hague Rule 20.

PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

0
30. The authority citation for part 3 continues to read as follows:

    Authority:  15 U.S.C. 1123; 35 U.S.C. 2(b)(2).

0
31. Section 3.1 is amended by revising the definition of 
``Application'' to read as follows:


Sec.  3.1  Definitions.

* * * * *
    Application means a national application for patent, an 
international patent application that designates the United States of 
America, an international design application that designates the United 
States of America, or an application to register a trademark under 
section 1 or 44 of the Trademark Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, 
unless otherwise indicated.
* * * * *
0
32. Section 3.21 is revised to read as follows:


Sec.  3.21  Identification of patents and patent applications.

    An assignment relating to a patent must identify the patent by the 
patent number. An assignment relating to a national patent application 
must identify the national patent application by the application number 
(consisting of the series code and the serial number; e.g., 07/
123,456). An assignment relating to an international patent application 
which designates the United States of America must identify the 
international application by the international application number; 
e.g., PCT/US2012/012345. An assignment relating to an international 
design application which designates the United States of America must 
identify the international design application by the international 
registration number or by the U.S. application number assigned to the 
international design application. If an assignment of a patent 
application filed under Sec.  1.53(b) is executed concurrently with, or 
subsequent to, the execution of the patent application, but before the 
patent application is filed, it must identify the patent application by 
the name of each inventor and the title of the invention so that there 
can be no mistake as to the patent application intended. If an 
assignment of a provisional application under Sec.  1.53(c) is executed 
before the provisional application is filed, it must identify the 
provisional application by the name of each inventor and the title of 
the invention so that there can be no mistake as to the provisional 
application intended.

PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND 
FILE APPLICATIONS IN FOREIGN COUNTRIES

0
33. The authority citation for 37 CFR part 5 continues to read as 
follows:


[[Page 71901]]


    Authority:  35 U.S.C. 2(b)(2), 41, 181-188, as amended by the 
Patent Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 
102 Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C. 
2751 et seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.C. 
2011 et seq.; the Nuclear Non Proliferation Act of 1978, 22 U.S.C. 
3201 et seq.; and the delegations in the regulations under these 
Acts to the Director (15 CFR 370.10(j), 22 CFR 125.04, and 10 CFR 
810.7).

0
34. Section 5.1 is amended by revising paragraph (b) to read as 
follows:


Sec.  5.1  Applications and correspondence involving national security.

* * * * *
    (b) Definitions. (1) Application as used in this part includes 
provisional applications (Sec.  1.9(a)(2) of this chapter), 
nonprovisional applications (Sec.  1.9(a)(3)), international 
applications (Sec.  1.9(b)), or international design applications 
(Sec.  1.9(n)).
    (2) Foreign application as used in this part includes, for filing 
in a foreign country, foreign patent agency, or international agency 
(other than the United States Patent Trademark Office) any of the 
following: An application for patent, international application, 
international design application, or application for the registration 
of a utility model, industrial design, or model.
* * * * *
0
35. Section 5.3 is amended by revising paragraph (d) to read as 
follows:


Sec.  5.3  Prosecution of application under secrecy orders; withholding 
patent.

* * * * *
    (d) International applications and international design 
applications under secrecy order will not be mailed, delivered, or 
otherwise transmitted to the international authorities or the 
applicant. International applications under secrecy order will be 
processed up to the point where, if it were not for the secrecy order, 
record and search copies would be transmitted to the international 
authorities or the applicant.
0
36. Section 5.11 is amended by revising the heading and paragraphs (a) 
through (c), (e)(3)(i), and (f) to read as follows:


Sec.  5.11  License for filing in, or exporting to, a foreign country 
an application on an invention made in the United States.

    (a) A license from the Commissioner for Patents under 35 U.S.C. 184 
is required before filing any application for patent including any 
modifications, amendments, or supplements thereto or divisions thereof 
or for the registration of a utility model, industrial design, or 
model, in a foreign patent office or any foreign patent agency or any 
international agency other than the United States Receiving Office or 
the United States Patent and Trademark Office as an office of indirect 
filing for international design applications, if the invention was made 
in the United States, and:
    (1) An application on the invention has been filed in the United 
States less than six months prior to the date on which the application 
is to be filed, or
    (2) No application on the invention has been filed in the United 
States.
    (b) The license from the Commissioner for Patents referred to in 
paragraph (a) would also authorize the export of technical data abroad 
for purposes relating to the preparation, filing or possible filing and 
prosecution of a foreign application without separately complying with 
the regulations contained in 22 CFR parts 120 through 130 
(International Traffic in Arms Regulations of the Department of State), 
15 CFR parts 730-774 (Export Administration Regulations of the Bureau 
of Industry and Security, Department of Commerce) and 10 CFR part 810 
(Assistance to Foreign Atomic Energy Activities Regulations of the 
Department of Energy).
    (c) Where technical data in the form of a patent application, or in 
any form, are being exported for purposes related to the preparation, 
filing or possible filing and prosecution of a foreign application, 
without the license from the Commissioner for Patents referred to in 
paragraphs (a) or (b) of this section, or on an invention not made in 
the United States, the export regulations contained in 22 CFR parts 120 
through 130 (International Traffic in Arms Regulations of the 
Department of State), 15 CFR parts 730-774 (Export Administration 
Regulations of the Bureau of Industry and Security, Department of 
Commerce) and 10 CFR part 810 (Assistance to Foreign Atomic Energy 
Activities Regulations of the Department of Energy) must be complied 
with unless a license is not required because a United States 
application was on file at the time of export for at least six months 
without a secrecy order under Sec.  5.2 being placed thereon. The term 
``exported'' means export as it is defined in 22 CFR part 120, 15 CFR 
part 734 and activities covered by 10 CFR part 810.
* * * * *
    (e) * * *
    (3) * * *
    (i) A license is not, or was not, required under paragraph (e)(2) 
of this section for the foreign application;
* * * * *
    (f) A license pursuant to paragraph (a) of this section can be 
revoked at any time upon written notification by the Patent and 
Trademark Office. An authorization to file a foreign application 
resulting from the passage of six months from the date of filing of a 
United States patent application may be revoked by the imposition of a 
secrecy order.
0
37. Section 5.12 is amended by revising paragraph (a) to read as 
follows:


Sec.  5.12  Petition for license.

    (a) Filing of an application on an invention made in the United 
States will be considered to include a petition for license under 35 
U.S.C. 184 for the subject matter of the application. The filing 
receipt or other official notice will indicate if a license is granted. 
If the initial automatic petition is not granted, a subsequent petition 
may be filed under paragraph (b) of this section.
* * * * *
0
38. Section 5.13 is revised to read as follows:


Sec.  5.13  Petition for license; no corresponding application.

    If no corresponding national, international design, or 
international application has been filed in the United States, the 
petition for license under Sec.  5.12(b) must also be accompanied by a 
legible copy of the material upon which a license is desired. This copy 
will be retained as a measure of the license granted.
0
39. Section 5.14 is amended by revising paragraph (c) to read as 
follows:


Sec.  5.14  Petition for license; corresponding U.S. application.

* * * * *
    (c) Where the application to be filed or exported abroad contains 
matter not disclosed in the United States application or applications, 
including the case where the combining of two or more United States 
applications introduces subject matter not disclosed in any of them, a 
copy of the application as it is to be filed or exported abroad, must 
be furnished with the petition. If, however, all new matter in the 
application to be filed or exported is readily identifiable, the new 
matter may be submitted in detail and the remainder by reference to the 
pertinent United States application or applications.
0
40. Section 5.15 is amended by revising paragraphs (a), (b), (d) and 
(e) to read as follows:


Sec.  5.15  Scope of license.

    (a) Applications or other materials reviewed pursuant to Sec. Sec.  
5.12 through

[[Page 71902]]

5.14, which were not required to be made available for inspection by 
defense agencies under 35 U.S.C. 181, will be eligible for a license of 
the scope provided in this paragraph. This license permits subsequent 
modifications, amendments, and supplements containing additional 
subject matter to, or divisions of, a foreign application, if such 
changes to the application do not alter the general nature of the 
invention in a manner that would require the United States application 
to have been made available for inspection under 35 U.S.C. 181. Grant 
of this license authorizes the export and filing of an application in a 
foreign country or to any foreign patent agency or international patent 
agency when the subject matter of the foreign application corresponds 
to that of the domestic application. This license includes authority:
    (1) To export and file all duplicate and formal application papers 
in foreign countries or with international agencies;
    (2) To make amendments, modifications, and supplements, including 
divisions, changes or supporting matter consisting of the illustration, 
exemplification, comparison, or explanation of subject matter disclosed 
in the application; and
    (3) To take any action in the prosecution of the foreign 
application provided that the adding of subject matter or taking of any 
action under paragraphs (a)(1) or (2) of this section does not change 
the general nature of the invention disclosed in the application in a 
manner that would require such application to have been made available 
for inspection under 35 U.S.C. 181 by including technical data 
pertaining to:
    (i) Defense services or articles designated in the United States 
Munitions List applicable at the time of foreign filing, the unlicensed 
exportation of which is prohibited pursuant to the Arms Export Control 
Act, as amended, and 22 CFR parts 121 through 130; or
    (ii) Restricted Data, sensitive nuclear technology or technology 
useful in the production or utilization of special nuclear material or 
atomic energy, dissemination of which is subject to restrictions of the 
Atomic Energy Act of 1954, as amended, and the Nuclear Non-
Proliferation Act of 1978, as implemented by the regulations for 
Unclassified Activities in Foreign Atomic Energy Programs, 10 CFR part 
810, in effect at the time of foreign filing.
    (b) Applications or other materials which were required to be made 
available for inspection under 35 U.S.C. 181 will be eligible for a 
license of the scope provided in this paragraph. Grant of this license 
authorizes the export and filing of an application in a foreign country 
or to any foreign patent agency or international patent agency. 
Further, this license includes authority to export and file all 
duplicate and formal papers in foreign countries or with foreign and 
international patent agencies and to make amendments, modifications, 
and supplements to, file divisions of, and take any action in the 
prosecution of the foreign application, provided subject matter 
additional to that covered by the license is not involved.
* * * * *
    (d) In those cases in which no license is required to file or 
export the foreign application, no license is required to file papers 
in connection with the prosecution of the foreign application not 
involving the disclosure of additional subject matter.
    (e) Any paper filed abroad or transmitted to an international 
patent agency following the filing of a foreign application that 
changes the general nature of the subject matter disclosed at the time 
of filing in a manner that would require such application to have been 
made available for inspection under 35 U.S.C. 181 or that involves the 
disclosure of subject matter listed in paragraphs (a)(3)(i) or (ii) of 
this section must be separately licensed in the same manner as a 
foreign application. Further, if no license has been granted under 
Sec.  5.12(a) on filing the corresponding United States application, 
any paper filed abroad or with an international patent agency that 
involves the disclosure of additional subject matter must be licensed 
in the same manner as a foreign application.
* * * * *

PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT 
AND TRADEMARK OFFICE

0
41. The authority citation for 37 CFR part 11 continues to read as 
follows:

    Authority:  5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 32, 
41.

0
42. Section 11.10 is amended by revising paragraph (b)(3)(iii) to read 
as follows:


Sec.  11.10  Restrictions on practice in patent matters.

* * * * *
    (b) * * *
    (3) * * *
    (iii) Particular patent or patent application means any patent or 
patent application, including, but not limited to, a provisional, 
substitute, international, international design, continuation, 
divisional, continuation-in-part, or reissue patent application, as 
well as any protest, reexamination, petition, appeal, or interference 
based on the patent or patent application.
* * * * *

    Dated: November 20, 2013.
 Teresa Stanek Rea,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 2013-28262 Filed 11-27-13; 8:45 am]
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