Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 200 – Types and Status of Application; Benefit and Priority (1)
For an international design application to be used as a basis for benefit claims, it must meet certain conditions. The MPEP specifies:
To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023.
This means that the international design application must have a valid filing date as determined by the regulations set forth in 37 CFR 1.1023. These regulations outline the requirements for establishing a filing date for international design applications, which typically include submitting the necessary documents and fees to the International Bureau or an appropriate office.
Additionally, the application claiming benefit must comply with the requirements of 35 U.S.C. 120, which include proper copendency and specific reference to the earlier application.
To learn more:
To learn more:
MPEP 2900 – International Design Applications (3)
The concept of a “real and effective industrial or commercial establishment” is mentioned in MPEP 2904 as one of the criteria for eligibility to file an international design application. The MPEP states:
“Any person that … has a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application.”
While the MPEP doesn’t provide a specific definition, this generally refers to a genuine and active business presence in a Contracting Party’s territory. Factors that might be considered include:
- Physical business location
- Ongoing business activities
- Employees or staff
- Commercial transactions
- Manufacturing or production facilities
It’s important to note that this is distinct from a mere postal address or nominal office. The establishment should demonstrate a real connection to the Contracting Party’s territory.
To learn more:
The timeline for submitting an Information Disclosure Statement (IDS) in an international design application designating the United States is outlined in MPEP 2920.05(f):
- At filing: An applicant may submit an IDS using Annex III to the official application form (DM/1 form) when filing the international design application.
- Preferred timing: “The Office would prefer to receive the IDS from the applicant after publication of the international registration.”
- Three-month window: According to 37 CFR 1.97(b)(5), “the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3).”
- Later submissions: “The Office may also consider an IDS filed after this three month period as provided in 37 CFR 1.97.”
It’s important to note that while the USPTO will accept IDS submissions at various stages, submitting within the three-month window after publication ensures consideration without additional requirements. For IDS submissions outside this window, applicants should consult 37 CFR 1.97 for specific requirements and potential fees.
To learn more:
According to 37 CFR 1.1042, applicants can specify a correspondence address for communications sent by the USPTO as an office of indirect filing. The MPEP states:
“Pursuant to 37 CFR 1.1042, the applicant may specify a correspondence address for correspondence sent by the USPTO as an office of indirect filing.“
This address can be different from the one specified on the official DM/1 form used for filing the international design application. If no specific address is provided, the USPTO will use the address of the applicant’s appointed representative or the address specified in Administrative Instruction 302.
To learn more:
MPEP 2904 – Who May File An International Design Application (1)
The concept of a “real and effective industrial or commercial establishment” is mentioned in MPEP 2904 as one of the criteria for eligibility to file an international design application. The MPEP states:
“Any person that … has a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application.”
While the MPEP doesn’t provide a specific definition, this generally refers to a genuine and active business presence in a Contracting Party’s territory. Factors that might be considered include:
- Physical business location
- Ongoing business activities
- Employees or staff
- Commercial transactions
- Manufacturing or production facilities
It’s important to note that this is distinct from a mere postal address or nominal office. The establishment should demonstrate a real connection to the Contracting Party’s territory.
To learn more:
MPEP 2912 – Correspondence In Respect Of International Design Applications Filed With The Uspto As An Office Of Indirect Filing (1)
According to 37 CFR 1.1042, applicants can specify a correspondence address for communications sent by the USPTO as an office of indirect filing. The MPEP states:
“Pursuant to 37 CFR 1.1042, the applicant may specify a correspondence address for correspondence sent by the USPTO as an office of indirect filing.“
This address can be different from the one specified on the official DM/1 form used for filing the international design application. If no specific address is provided, the USPTO will use the address of the applicant’s appointed representative or the address specified in Administrative Instruction 302.
To learn more:
MPEP 2920.05(F) – Information Disclosure Statement In An International Design Application Designating The United States (1)
The timeline for submitting an Information Disclosure Statement (IDS) in an international design application designating the United States is outlined in MPEP 2920.05(f):
- At filing: An applicant may submit an IDS using Annex III to the official application form (DM/1 form) when filing the international design application.
- Preferred timing: “The Office would prefer to receive the IDS from the applicant after publication of the international registration.”
- Three-month window: According to 37 CFR 1.97(b)(5), “the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3).”
- Later submissions: “The Office may also consider an IDS filed after this three month period as provided in 37 CFR 1.97.”
It’s important to note that while the USPTO will accept IDS submissions at various stages, submitting within the three-month window after publication ensures consideration without additional requirements. For IDS submissions outside this window, applicants should consult 37 CFR 1.97 for specific requirements and potential fees.
To learn more:
Patent Law (4)
The concept of a “real and effective industrial or commercial establishment” is mentioned in MPEP 2904 as one of the criteria for eligibility to file an international design application. The MPEP states:
“Any person that … has a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application.”
While the MPEP doesn’t provide a specific definition, this generally refers to a genuine and active business presence in a Contracting Party’s territory. Factors that might be considered include:
- Physical business location
- Ongoing business activities
- Employees or staff
- Commercial transactions
- Manufacturing or production facilities
It’s important to note that this is distinct from a mere postal address or nominal office. The establishment should demonstrate a real connection to the Contracting Party’s territory.
To learn more:
The timeline for submitting an Information Disclosure Statement (IDS) in an international design application designating the United States is outlined in MPEP 2920.05(f):
- At filing: An applicant may submit an IDS using Annex III to the official application form (DM/1 form) when filing the international design application.
- Preferred timing: “The Office would prefer to receive the IDS from the applicant after publication of the international registration.”
- Three-month window: According to 37 CFR 1.97(b)(5), “the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3).”
- Later submissions: “The Office may also consider an IDS filed after this three month period as provided in 37 CFR 1.97.”
It’s important to note that while the USPTO will accept IDS submissions at various stages, submitting within the three-month window after publication ensures consideration without additional requirements. For IDS submissions outside this window, applicants should consult 37 CFR 1.97 for specific requirements and potential fees.
To learn more:
For an international design application to be used as a basis for benefit claims, it must meet certain conditions. The MPEP specifies:
To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023.
This means that the international design application must have a valid filing date as determined by the regulations set forth in 37 CFR 1.1023. These regulations outline the requirements for establishing a filing date for international design applications, which typically include submitting the necessary documents and fees to the International Bureau or an appropriate office.
Additionally, the application claiming benefit must comply with the requirements of 35 U.S.C. 120, which include proper copendency and specific reference to the earlier application.
To learn more:
To learn more:
According to 37 CFR 1.1042, applicants can specify a correspondence address for communications sent by the USPTO as an office of indirect filing. The MPEP states:
“Pursuant to 37 CFR 1.1042, the applicant may specify a correspondence address for correspondence sent by the USPTO as an office of indirect filing.“
This address can be different from the one specified on the official DM/1 form used for filing the international design application. If no specific address is provided, the USPTO will use the address of the applicant’s appointed representative or the address specified in Administrative Instruction 302.
To learn more:
Patent Procedure (4)
The concept of a “real and effective industrial or commercial establishment” is mentioned in MPEP 2904 as one of the criteria for eligibility to file an international design application. The MPEP states:
“Any person that … has a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application.”
While the MPEP doesn’t provide a specific definition, this generally refers to a genuine and active business presence in a Contracting Party’s territory. Factors that might be considered include:
- Physical business location
- Ongoing business activities
- Employees or staff
- Commercial transactions
- Manufacturing or production facilities
It’s important to note that this is distinct from a mere postal address or nominal office. The establishment should demonstrate a real connection to the Contracting Party’s territory.
To learn more:
The timeline for submitting an Information Disclosure Statement (IDS) in an international design application designating the United States is outlined in MPEP 2920.05(f):
- At filing: An applicant may submit an IDS using Annex III to the official application form (DM/1 form) when filing the international design application.
- Preferred timing: “The Office would prefer to receive the IDS from the applicant after publication of the international registration.”
- Three-month window: According to 37 CFR 1.97(b)(5), “the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3).”
- Later submissions: “The Office may also consider an IDS filed after this three month period as provided in 37 CFR 1.97.”
It’s important to note that while the USPTO will accept IDS submissions at various stages, submitting within the three-month window after publication ensures consideration without additional requirements. For IDS submissions outside this window, applicants should consult 37 CFR 1.97 for specific requirements and potential fees.
To learn more:
For an international design application to be used as a basis for benefit claims, it must meet certain conditions. The MPEP specifies:
To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023.
This means that the international design application must have a valid filing date as determined by the regulations set forth in 37 CFR 1.1023. These regulations outline the requirements for establishing a filing date for international design applications, which typically include submitting the necessary documents and fees to the International Bureau or an appropriate office.
Additionally, the application claiming benefit must comply with the requirements of 35 U.S.C. 120, which include proper copendency and specific reference to the earlier application.
To learn more:
To learn more:
According to 37 CFR 1.1042, applicants can specify a correspondence address for communications sent by the USPTO as an office of indirect filing. The MPEP states:
“Pursuant to 37 CFR 1.1042, the applicant may specify a correspondence address for correspondence sent by the USPTO as an office of indirect filing.“
This address can be different from the one specified on the official DM/1 form used for filing the international design application. If no specific address is provided, the USPTO will use the address of the applicant’s appointed representative or the address specified in Administrative Instruction 302.
To learn more: