MPEP § 2940 — Statement of Grant of Protection (Annotated Rules)
§2940 Statement of Grant of Protection
This page consolidates and annotates all enforceable requirements under MPEP § 2940, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Statement of Grant of Protection
This section addresses Statement of Grant of Protection. Primary authority: 37 CFR 1.1068. Contains: 9 requirements and 1 permission.
Key Rules
Notification of Refusal
(1) [Statement of Grant of Protection Where No Notification of Refusal Has Been Communicated]
- (a) An Office which has not communicated a notification of refusal may, within the period applicable under Rule 18(1)(a) or (b), send to the International Bureau a statement to the effect that protection is granted to the industrial designs, or some of the industrial designs, as the case may be, that are the subject of the international registration in the Contracting Party concerned, it being understood that, where Rule 12(3) applies, the grant of protection will be subject to the payment of the second part of the individual designation fee.
- (b) The statement shall indicate
- (i) the Office making the statement,
- (ii) the number of the international registration,
- (iii) where the statement does not relate to all the industrial designs that are the subject of the international registration, those to which it relates,
- (iv) the date on which the international registration produced or shall produce the effect as a grant of protection under the applicable law, and
- (v) the date of the statement.
- (c) Where the international registration was amended in a procedure before the Office, the statement shall also contain or indicate all amendments.
- (d) Notwithstanding subparagraph (a), where Rule 18(1)(c)(i) or (ii) applies, as the case may be, or where protection is granted to the industrial designs following amendments in a procedure before the Office, the said Office must send to the International Bureau the statement referred to in subparagraph (a).
- (e) The applicable period referred to in subparagraph (a) shall be the period allowed pursuant to Rule 18(1)(c)(i) or (ii), as the case may be, to produce the effect as a grant of protection under the applicable law, with respect to a designation of a Contracting Party having made a declaration under either of the aforementioned Rules.
(b) The statement shall indicate
- (i) the Office making the statement,
- (ii) the number of the international registration,
- (iii) where the statement does not relate to all the industrial designs that are the subject of the international registration, those to which it relates,
- (iv) the date on which the international registration produced or shall produce the effect as a grant of protection under the applicable law, and
- (v) the date of the statement.
(2) [Statement of Grant of Protection Following a Refusal]
- (a) An Office which has communicated a notification of refusal and which has decided to either partially or totally withdraw such refusal, may, instead of notifying a withdrawal of refusal in accordance with Rule 18(4)(a), send to the International Bureau a statement to the effect that protection is granted to the industrial designs, or some of the industrial designs, as the case may be, that are the subject of the international registration in the Contracting Party concerned, it being understood that, where Rule 12(3) applies, the grant of protection will be subject to the payment of the second part of the individual designation fee.
- (b) The statement shall indicate
- (i) the Office making the notification,
- (ii) the number of the international registration,
- (iii) where the statement 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,
- (iv) the date on which the international registration produced the effect as a grant of protection under the applicable law, and
- (v) the date of the statement.
- (c) Where the international registration was amended in a procedure before the Office, the statement shall also contain or indicate all amendments.
(b) The statement shall indicate
- (i) the Office making the notification,
- (ii) the number of the international registration,
- (iii) where the statement 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,
- (iv) the date on which the international registration produced the effect as a grant of protection under the applicable law, and
- (v) the date of the statement.
International Design Applications
(1) [Statement of Grant of Protection Where No Notification of Refusal Has Been Communicated]
(b) The statement shall indicate
…
(iii) where the statement does not relate to all the industrial designs that are the subject of the international registration, those to which it relates,
(1) [Statement of Grant of Protection Where No Notification of Refusal Has Been Communicated]
…
(c) Where the international registration was amended in a procedure before the Office, the statement shall also contain or indicate all amendments.
(2) [Statement of Grant of Protection Following a Refusal]
(b) The statement shall indicate
…
(iii) where the statement 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,
(2) [Statement of Grant of Protection Following a Refusal]
…
(c) Where the international registration was amended in a procedure before the Office, the statement shall also contain or indicate all amendments.
Hague Definitions
Upon issuance of a patent on an international design application designating the United States, the Office may send to the International Bureau a statement to the effect that protection is granted in the United States to those industrial design or designs that are the subject of the international registration and covered by the patent.
Upon issuance of a patent on a nonprovisional international design application, the Office will send to the International Bureau a statement that protection is granted in the United States to the industrial design or designs that are the subject of the international registration and covered by the patent. See 37 CFR 1.1068. The sending of such a statement is provided for under Hague Agreement Rule 18 bis and serves the purpose of providing notice to the public and third parties through publication of the statement by the International Bureau in the International Designs Bulletin that protection for an industrial design has been granted in the United States.
Upon issuance of a patent on a nonprovisional international design application, the Office will send to the International Bureau a statement that protection is granted in the United States to the industrial design or designs that are the subject of the international registration and covered by the patent. See 37 CFR 1.1068. The sending of such a statement is provided for under Hague Agreement Rule 18 bis and serves the purpose of providing notice to the public and third parties through publication of the statement by the International Bureau in the International Designs Bulletin that protection for an industrial design has been granted in the United States.
Hague Agreement Overview
(1) [Statement of Grant of Protection Where No Notification of Refusal Has Been Communicated] (a) An Office which has not communicated a notification of refusal may, within the period applicable under Rule 18(1)(a) or (b), send to the International Bureau a statement to the effect that protection is granted to the industrial designs, or some of the industrial designs, as the case may be, that are the subject of the international registration in the Contracting Party concerned, it being understood that, where Rule 12(3) applies, the grant of protection will be subject to the payment of the second part of the individual designation fee.
PTAB Contested Case Procedures
(1) [Statement of Grant of Protection Where No Notification of Refusal Has Been Communicated]
…
(e) The applicable period referred to in subparagraph (a) shall be the period allowed pursuant to Rule 18(1)(c)(i) or (ii), as the case may be, to produce the effect as a grant of protection under the applicable law, with respect to a designation of a Contracting Party having made a declaration under either of the aforementioned Rules.
Citations
| Primary topic | Citation |
|---|---|
| Hague Definitions | 37 CFR § 1.1068 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2940 — Statement of Grant of Protection
Source: USPTO2940 Statement of Grant of Protection [R-07.2015]
Hague Rule 18bis
Statement of Grant of Protection
- (1) [Statement of Grant of Protection Where No
Notification of Refusal Has Been Communicated]
- (a) An Office which has not communicated a notification of refusal may, within the period applicable under Rule 18(1)(a) or (b), send to the International Bureau a statement to the effect that protection is granted to the industrial designs, or some of the industrial designs, as the case may be, that are the subject of the international registration in the Contracting Party concerned, it being understood that, where Rule 12(3) applies, the grant of protection will be subject to the payment of the second part of the individual designation fee.
- (b) The statement shall indicate
- (i) the Office making the statement,
- (ii) the number of the international registration,
- (iii) where the statement does not relate to all the industrial designs that are the subject of the international registration, those to which it relates,
- (iv) the date on which the international registration produced or shall produce the effect as a grant of protection under the applicable law, and
- (v) the date of the statement.
- (c) Where the international registration was amended in a procedure before the Office, the statement shall also contain or indicate all amendments.
- (d) Notwithstanding subparagraph (a), where Rule 18(1)(c)(i) or (ii) applies, as the case may be, or where protection is granted to the industrial designs following amendments in a procedure before the Office, the said Office must send to the International Bureau the statement referred to in subparagraph (a).
- (e) The applicable period referred to in subparagraph (a) shall be the period allowed pursuant to Rule 18(1)(c)(i) or (ii), as the case may be, to produce the effect as a grant of protection under the applicable law, with respect to a designation of a Contracting Party having made a declaration under either of the aforementioned Rules.
- (2) [Statement of Grant of Protection Following a
Refusal]
- (a) An Office which has communicated a notification of refusal and which has decided to either partially or totally withdraw such refusal, may, instead of notifying a withdrawal of refusal in accordance with Rule 18(4)(a), send to the International Bureau a statement to the effect that protection is granted to the industrial designs, or some of the industrial designs, as the case may be, that are the subject of the international registration in the Contracting Party concerned, it being understood that, where Rule 12(3) applies, the grant of protection will be subject to the payment of the second part of the individual designation fee.
- (b) The statement shall indicate
- (i) the Office making the notification,
- (ii) the number of the international registration,
- (iii) where the statement 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,
- (iv) the date on which the international registration produced the effect as a grant of protection under the applicable law, and
- (v) the date of the statement.
- (c) Where the international registration was amended in a procedure before the Office, the statement shall also contain or indicate all amendments.
- (3) [Recording, Information to the Holder and Transmittal of Copies] The International Bureau shall record any statement received under this Rule in the International Register, inform the holder accordingly and, where the statement was communicated, or can be reproduced, in the form of a specific document, transmit a copy of that document to the holder.
37 CFR 1.1068 Statement of grant of protection.
Upon issuance of a patent on an international design application designating the United States, the Office may send to the International Bureau a statement to the effect that protection is granted in the United States to those industrial design or designs that are the subject of the international registration and covered by the patent.
Upon issuance of a patent on a nonprovisional international design application, the Office will send to the International Bureau a statement that protection is granted in the United States to the industrial design or designs that are the subject of the international registration and covered by the patent. See 37 CFR 1.1068. The sending of such a statement is provided for under Hague Agreement Rule 18bis and serves the purpose of providing notice to the public and third parties through publication of the statement by the International Bureau in the International Designs Bulletin that protection for an industrial design has been granted in the United States.