37 CFR § 1.1052 — Conversion to a design application (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.1052 Conversion to a design application
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 1.1052, including 21 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
This section details the process for converting international design applications into US design patents through petitions under 37 CFR 1.1052, including required elements and compliance obligations.
What this section covers
- Defines petitions under 37 CFR 1.1052 for converting international design applications to US design patents.
Key obligations
- Filing a petition under 37 CFR 1.1052 to convert an international design application.
- Ensuring the international design application meets all mandatory elements as required by 35 U.S.C. chapter 16.
- Filing the petition prior to publication of the international registration under Article 10(3) of the Hague Agreement.
- Filing the petition prior to publication of the international registration under Article 10(3) of the Hague Agreement.
Practice notes
- Ensure all mandatory elements of the international design application are included in the petition.
- Timely filing and proper documentation are crucial for successful conversion of an international design application.
Official MPEP § 1.1052 — Conversion to a design application
Source: USPTOLast Modified: 10/30/2024 08:50:22
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 § 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 § 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 § 1.17(t) 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 § 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 § 1.53(b) . The application for a design patent resulting from conversion of an international design application must also include the basic filing fee (§ 1.16(b) ), the search fee (§ 1.16(l) ), the examination fee (§ 1.16(p) ), the inventor’s oath or declaration (§ 1.63 or 1.64 ), and a surcharge if required by § 1.16(f) .
- (b) An international design application will be converted to an application for a design patent under § 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 § 1.1045. Otherwise, a decision granting a petition under this section will be effective to convert the international design application to an application for a design patent under § 1.53(b) only for purposes of the designation 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 § 1.1051.
- (d) An international design application converted under this section is subject to the regulations applicable to a design application filed under 35 U.S.C. chapter 16 .
[Added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
- Application Types
- App Types Provisional
- Design Patents
- International Design
- Hague Principles
- Ida Filing
- Ida Requirements
- Ida Contents
- International Bureau
| MPEP Section | Rules |
|---|---|
| MPEP § 1002.02(p) | |
| MPEP § 2913 | |
| MPEP § 2914 |