Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 200 - Types and Status of Application; Benefit and Priority (9)
35 U.S.C. 386 establishes the right of priority for international design applications. It addresses two key scenarios:
- National applications claiming priority from international design applications
- International design applications claiming priority from prior foreign applications
The MPEP explains:
“Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”
“Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.”
These provisions apply to applications filed on or after May 13, 2015, and patents issued from such applications.
The Hague Agreement Concerning International Registration of Industrial Designs is an international treaty that allows applicants to file a single international design application to seek protection in multiple countries. The United States became a party to the Hague Agreement on May 13, 2015.
According to 35 U.S.C. 385:
An international design application designating the United States shall have the effect, for all purposes, from its filing date determined in accordance with section 384, of an application for patent filed in the Patent and Trademark Office pursuant to chapter 16.
This means that an international design application that designates the US is treated similarly to a national design patent application. The MPEP clarifies: 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.
For detailed information on international design applications, refer to MPEP Chapter 2900.
For more information on design patents, visit: design patents.
For more information on Hague Agreement, visit: Hague Agreement.
For more information on international design applications, visit: international design applications.
The Patent Law Treaties Implementation Act (PLTIA) of 2012 introduced several significant changes to U.S. patent law and procedures:
- Restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications).
- The ability to file international design applications and claim priority to, and the benefit of, international design applications in nonprovisional applications.
As stated in the MPEP: Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.
(MPEP 210)
These changes were implemented in two phases:
- Title II of the PLTIA became effective on December 18, 2013.
- Title I of the PLTIA became effective on May 13, 2015.
For more information on international design applications, visit: international design applications.
For more information on PLTIA, visit: PLTIA.
For more information on priority restoration, visit: priority restoration.
The requirements for certified copies in international design applications are as follows:
- A certified copy of the foreign application is not required in an international design application.
- The International Bureau obtains priority documents directly from offices participating in the Digital Access Service (DAS) or the Priority Document Exchange (PDX) program.
- For offices not participating in DAS or PDX, the International Bureau will invite the applicant to submit the priority document.
According to MPEP 213.07: A certified copy of the foreign application is not required in an international design application designating the United States.
The MPEP further explains: Where the foreign application was filed in a participating office, the International Bureau will attempt to obtain the priority document from the participating office. For participating offices that are not yet able to provide the priority documents to the International Bureau, the International Bureau will invite the applicant to submit the priority document.
To learn more:
According to MPEP 201.02, there are several types of patent applications:
- National applications
- Provisional applications
- Nonprovisional applications
- International applications
- International design applications
The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.
For more information on continuing applications, visit: continuing applications.
For more information on international applications, visit: international applications.
For more information on international design applications, visit: international design applications.
For more information on nonprovisional applications, visit: nonprovisional applications.
For more information on patent applications, visit: patent applications.
The USPTO handles priority claims in international design applications as follows:
- For international design applications designating the United States, the USPTO acts as an office of indirect filing.
- Priority claims must be made in the international design application when filed with the International Bureau.
- The USPTO will not transmit a priority claim made in a subsequently filed transmittal letter.
- Applicants should review the international registration certificate to ensure their priority claims are properly recorded.
As stated in MPEP 213.07: The United States Patent and Trademark Office (USPTO), in its capacity as an office of indirect filing, will not transmit to the International Bureau a priority claim that is made in a subsequently filed transmittal letter and not in the international design application as filed with the International Bureau.
To learn more:
How does the USPTO handle certified copies for international design applications?
For international design applications, the USPTO has a specific process for handling certified copies. According to the MPEP:
‘For international design applications designating the United States, the certified copy requirement is considered to have been met by the filing of the international design application pursuant to 37 CFR 1.55(m).’
This means that if you file an international design application that designates the United States, you don’t need to separately submit a certified copy of the priority document. The filing of the international design application itself fulfills this requirement.
However, it’s important to note that this only applies to international design applications. For other types of patent applications claiming priority to a foreign application, you would still need to ensure that a certified copy is filed or retrievable through the priority document exchange program within the specified time period.
The Digital Access Service (DAS) plays a significant role in international design applications:
- DAS facilitates the exchange of priority documents between participating offices.
- For applications filed in DAS-participating offices, the International Bureau can retrieve priority documents directly.
- This eliminates the need for applicants to submit certified copies in many cases.
- Applicants should ensure their priority claims are properly recorded in the international registration.
MPEP 213.07 states: Where the foreign application was filed in a participating office, the International Bureau will attempt to obtain the priority document from the participating office.
This streamlined process through DAS enhances efficiency in handling priority documents for international design applications.
To learn more:
To claim benefit of an international design application designating the United States, the following requirements must be met:
- The claim must be made in a nonprovisional application, international application, or international design application filed on or after May 13, 2015
- The international design application must be entitled to a filing date in accordance with 37 CFR 1.1023
- The claim must meet the conditions and requirements of 35 U.S.C. 120
MPEP 211.01(d) states: Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States.
It’s important to note that this benefit can only be claimed in applications or patents filed on or after May 13, 2015, as specified in 37 CFR 1.78(j).
To learn more:
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (5)
The Hague Agreement Concerning International Registration of Industrial Designs is an international treaty that allows applicants to file a single international design application with effect in multiple countries. Key points about the Hague Agreement and international design applications include:
- The United States became a Contracting Party to the Hague Agreement on May 13, 2015.
- An international design application designating the United States has the effect of a regularly filed application for patent under 35 U.S.C. 385.
- The Hague Agreement is administered by the International Bureau of the World Intellectual Property Organization (WIPO).
- 37 CFR 1.9(n) defines an international design application as “an application for international registration of a design filed under the Hague Agreement.”
For detailed information on international design applications, refer to MPEP Chapter 2900.
To learn more:
According to 37 CFR 1.9(a)(1), a national application is defined as:
- A U.S. application for patent filed in the USPTO 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
- An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10
This definition encompasses various types of patent applications that are treated as national applications by the USPTO.
The time periods for filing a priority claim depend on the type of application:
- For original applications filed under 35 U.S.C. 111(a) (other than design applications), the claim must be filed during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1).
- For applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) and MPEP § 213.06.
- In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).
The MPEP 201.01 mentions several special types of national applications:
1. Provisional applications (35 U.S.C. 111(b))
2. Reissue applications (35 U.S.C. 251)
3. Design applications (35 U.S.C. 171)
4. Plant applications (35 U.S.C. 161)
These applications have specific requirements and purposes. For example, provisional applications provide a way to establish an early effective filing date, while reissue applications allow for the correction of errors in issued patents. Design applications protect ornamental designs, and plant applications are for new varieties of plants.
For more details on these special application types, refer to the following MPEP sections:
– MPEP 201.04 – Provisional Application
– MPEP 1400 – Reissue
– MPEP 1500 – Design Patents
– MPEP 1600 – Plant Patents
The Patent Law Treaties Implementation Act (PLTIA) made several changes to priority and benefit claims, including:
- Restoration of the right of priority to a foreign application or benefit of a provisional application within two months of the deadline
- Ability to file international design applications
- Claiming priority to and benefit of international design applications
The MPEP notes: “Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.” (MPEP 210)
MPEP 201 - Types of Applications (5)
The Hague Agreement Concerning International Registration of Industrial Designs is an international treaty that allows applicants to file a single international design application to seek protection in multiple countries. The United States became a party to the Hague Agreement on May 13, 2015.
According to 35 U.S.C. 385:
An international design application designating the United States shall have the effect, for all purposes, from its filing date determined in accordance with section 384, of an application for patent filed in the Patent and Trademark Office pursuant to chapter 16.
This means that an international design application that designates the US is treated similarly to a national design patent application. The MPEP clarifies: 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.
For detailed information on international design applications, refer to MPEP Chapter 2900.
For more information on design patents, visit: design patents.
For more information on Hague Agreement, visit: Hague Agreement.
For more information on international design applications, visit: international design applications.
The Hague Agreement Concerning International Registration of Industrial Designs is an international treaty that allows applicants to file a single international design application with effect in multiple countries. Key points about the Hague Agreement and international design applications include:
- The United States became a Contracting Party to the Hague Agreement on May 13, 2015.
- An international design application designating the United States has the effect of a regularly filed application for patent under 35 U.S.C. 385.
- The Hague Agreement is administered by the International Bureau of the World Intellectual Property Organization (WIPO).
- 37 CFR 1.9(n) defines an international design application as “an application for international registration of a design filed under the Hague Agreement.”
For detailed information on international design applications, refer to MPEP Chapter 2900.
To learn more:
According to 37 CFR 1.9(a)(1), a national application is defined as:
- A U.S. application for patent filed in the USPTO 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
- An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10
This definition encompasses various types of patent applications that are treated as national applications by the USPTO.
The MPEP 201.01 mentions several special types of national applications:
1. Provisional applications (35 U.S.C. 111(b))
2. Reissue applications (35 U.S.C. 251)
3. Design applications (35 U.S.C. 171)
4. Plant applications (35 U.S.C. 161)
These applications have specific requirements and purposes. For example, provisional applications provide a way to establish an early effective filing date, while reissue applications allow for the correction of errors in issued patents. Design applications protect ornamental designs, and plant applications are for new varieties of plants.
For more details on these special application types, refer to the following MPEP sections:
– MPEP 201.04 – Provisional Application
– MPEP 1400 – Reissue
– MPEP 1500 – Design Patents
– MPEP 1600 – Plant Patents
According to MPEP 201.02, there are several types of patent applications:
- National applications
- Provisional applications
- Nonprovisional applications
- International applications
- International design applications
The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.
For more information on continuing applications, visit: continuing applications.
For more information on international applications, visit: international applications.
For more information on international design applications, visit: international design applications.
For more information on nonprovisional applications, visit: nonprovisional applications.
For more information on patent applications, visit: patent applications.
MPEP 213-Right of Priority of Foreign Application (1)
35 U.S.C. 386 establishes the right of priority for international design applications. It addresses two key scenarios:
- National applications claiming priority from international design applications
- International design applications claiming priority from prior foreign applications
The MPEP explains:
“Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”
“Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.”
These provisions apply to applications filed on or after May 13, 2015, and patents issued from such applications.
MPEP 214-Formal Requirements of Claim for Foreign Priority (1)
The time periods for filing a priority claim depend on the type of application:
- For original applications filed under 35 U.S.C. 111(a) (other than design applications), the claim must be filed during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1).
- For applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) and MPEP § 213.06.
- In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).
MPEP 215-Certified Copy of Foreign Application (1)
How does the USPTO handle certified copies for international design applications?
For international design applications, the USPTO has a specific process for handling certified copies. According to the MPEP:
‘For international design applications designating the United States, the certified copy requirement is considered to have been met by the filing of the international design application pursuant to 37 CFR 1.55(m).’
This means that if you file an international design application that designates the United States, you don’t need to separately submit a certified copy of the priority document. The filing of the international design application itself fulfills this requirement.
However, it’s important to note that this only applies to international design applications. For other types of patent applications claiming priority to a foreign application, you would still need to ensure that a certified copy is filed or retrievable through the priority document exchange program within the specified time period.
MPEP 400 - Representative of Applicant or Owner (1)
Limited recognition in international patent applications is addressed in 37 CFR 11.9(c), which states:
An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1bis and 90.1.
This means that unregistered individuals may represent applicants in certain phases of international patent applications under specific conditions. For more detailed information:
- See MPEP § 1807 for representation in international applications (PCT)
- See MPEP § 2911 for representation in international design applications
To learn more:
Patent Law (15)
35 U.S.C. 386 establishes the right of priority for international design applications. It addresses two key scenarios:
- National applications claiming priority from international design applications
- International design applications claiming priority from prior foreign applications
The MPEP explains:
“Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”
“Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.”
These provisions apply to applications filed on or after May 13, 2015, and patents issued from such applications.
The Hague Agreement Concerning International Registration of Industrial Designs is an international treaty that allows applicants to file a single international design application to seek protection in multiple countries. The United States became a party to the Hague Agreement on May 13, 2015.
According to 35 U.S.C. 385:
An international design application designating the United States shall have the effect, for all purposes, from its filing date determined in accordance with section 384, of an application for patent filed in the Patent and Trademark Office pursuant to chapter 16.
This means that an international design application that designates the US is treated similarly to a national design patent application. The MPEP clarifies: 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.
For detailed information on international design applications, refer to MPEP Chapter 2900.
For more information on design patents, visit: design patents.
For more information on Hague Agreement, visit: Hague Agreement.
For more information on international design applications, visit: international design applications.
The Hague Agreement Concerning International Registration of Industrial Designs is an international treaty that allows applicants to file a single international design application with effect in multiple countries. Key points about the Hague Agreement and international design applications include:
- The United States became a Contracting Party to the Hague Agreement on May 13, 2015.
- An international design application designating the United States has the effect of a regularly filed application for patent under 35 U.S.C. 385.
- The Hague Agreement is administered by the International Bureau of the World Intellectual Property Organization (WIPO).
- 37 CFR 1.9(n) defines an international design application as “an application for international registration of a design filed under the Hague Agreement.”
For detailed information on international design applications, refer to MPEP Chapter 2900.
To learn more:
According to 37 CFR 1.9(a)(1), a national application is defined as:
- A U.S. application for patent filed in the USPTO 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
- An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10
This definition encompasses various types of patent applications that are treated as national applications by the USPTO.
The Patent Law Treaties Implementation Act (PLTIA) of 2012 introduced several significant changes to U.S. patent law and procedures:
- Restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications).
- The ability to file international design applications and claim priority to, and the benefit of, international design applications in nonprovisional applications.
As stated in the MPEP: Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.
(MPEP 210)
These changes were implemented in two phases:
- Title II of the PLTIA became effective on December 18, 2013.
- Title I of the PLTIA became effective on May 13, 2015.
For more information on international design applications, visit: international design applications.
For more information on PLTIA, visit: PLTIA.
For more information on priority restoration, visit: priority restoration.
The time periods for filing a priority claim depend on the type of application:
- For original applications filed under 35 U.S.C. 111(a) (other than design applications), the claim must be filed during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1).
- For applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) and MPEP § 213.06.
- In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).
The MPEP 201.01 mentions several special types of national applications:
1. Provisional applications (35 U.S.C. 111(b))
2. Reissue applications (35 U.S.C. 251)
3. Design applications (35 U.S.C. 171)
4. Plant applications (35 U.S.C. 161)
These applications have specific requirements and purposes. For example, provisional applications provide a way to establish an early effective filing date, while reissue applications allow for the correction of errors in issued patents. Design applications protect ornamental designs, and plant applications are for new varieties of plants.
For more details on these special application types, refer to the following MPEP sections:
– MPEP 201.04 – Provisional Application
– MPEP 1400 – Reissue
– MPEP 1500 – Design Patents
– MPEP 1600 – Plant Patents
The requirements for certified copies in international design applications are as follows:
- A certified copy of the foreign application is not required in an international design application.
- The International Bureau obtains priority documents directly from offices participating in the Digital Access Service (DAS) or the Priority Document Exchange (PDX) program.
- For offices not participating in DAS or PDX, the International Bureau will invite the applicant to submit the priority document.
According to MPEP 213.07: A certified copy of the foreign application is not required in an international design application designating the United States.
The MPEP further explains: Where the foreign application was filed in a participating office, the International Bureau will attempt to obtain the priority document from the participating office. For participating offices that are not yet able to provide the priority documents to the International Bureau, the International Bureau will invite the applicant to submit the priority document.
To learn more:
According to MPEP 201.02, there are several types of patent applications:
- National applications
- Provisional applications
- Nonprovisional applications
- International applications
- International design applications
The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.
For more information on continuing applications, visit: continuing applications.
For more information on international applications, visit: international applications.
For more information on international design applications, visit: international design applications.
For more information on nonprovisional applications, visit: nonprovisional applications.
For more information on patent applications, visit: patent applications.
The Patent Law Treaties Implementation Act (PLTIA) made several changes to priority and benefit claims, including:
- Restoration of the right of priority to a foreign application or benefit of a provisional application within two months of the deadline
- Ability to file international design applications
- Claiming priority to and benefit of international design applications
The MPEP notes: “Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.” (MPEP 210)
The USPTO handles priority claims in international design applications as follows:
- For international design applications designating the United States, the USPTO acts as an office of indirect filing.
- Priority claims must be made in the international design application when filed with the International Bureau.
- The USPTO will not transmit a priority claim made in a subsequently filed transmittal letter.
- Applicants should review the international registration certificate to ensure their priority claims are properly recorded.
As stated in MPEP 213.07: The United States Patent and Trademark Office (USPTO), in its capacity as an office of indirect filing, will not transmit to the International Bureau a priority claim that is made in a subsequently filed transmittal letter and not in the international design application as filed with the International Bureau.
To learn more:
How does the USPTO handle certified copies for international design applications?
For international design applications, the USPTO has a specific process for handling certified copies. According to the MPEP:
‘For international design applications designating the United States, the certified copy requirement is considered to have been met by the filing of the international design application pursuant to 37 CFR 1.55(m).’
This means that if you file an international design application that designates the United States, you don’t need to separately submit a certified copy of the priority document. The filing of the international design application itself fulfills this requirement.
However, it’s important to note that this only applies to international design applications. For other types of patent applications claiming priority to a foreign application, you would still need to ensure that a certified copy is filed or retrievable through the priority document exchange program within the specified time period.
The Digital Access Service (DAS) plays a significant role in international design applications:
- DAS facilitates the exchange of priority documents between participating offices.
- For applications filed in DAS-participating offices, the International Bureau can retrieve priority documents directly.
- This eliminates the need for applicants to submit certified copies in many cases.
- Applicants should ensure their priority claims are properly recorded in the international registration.
MPEP 213.07 states: Where the foreign application was filed in a participating office, the International Bureau will attempt to obtain the priority document from the participating office.
This streamlined process through DAS enhances efficiency in handling priority documents for international design applications.
To learn more:
Limited recognition in international patent applications is addressed in 37 CFR 11.9(c), which states:
An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1bis and 90.1.
This means that unregistered individuals may represent applicants in certain phases of international patent applications under specific conditions. For more detailed information:
- See MPEP § 1807 for representation in international applications (PCT)
- See MPEP § 2911 for representation in international design applications
To learn more:
To claim benefit of an international design application designating the United States, the following requirements must be met:
- The claim must be made in a nonprovisional application, international application, or international design application filed on or after May 13, 2015
- The international design application must be entitled to a filing date in accordance with 37 CFR 1.1023
- The claim must meet the conditions and requirements of 35 U.S.C. 120
MPEP 211.01(d) states: Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States.
It’s important to note that this benefit can only be claimed in applications or patents filed on or after May 13, 2015, as specified in 37 CFR 1.78(j).
To learn more:
Patent Procedure (15)
35 U.S.C. 386 establishes the right of priority for international design applications. It addresses two key scenarios:
- National applications claiming priority from international design applications
- International design applications claiming priority from prior foreign applications
The MPEP explains:
“Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”
“Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.”
These provisions apply to applications filed on or after May 13, 2015, and patents issued from such applications.
The Hague Agreement Concerning International Registration of Industrial Designs is an international treaty that allows applicants to file a single international design application to seek protection in multiple countries. The United States became a party to the Hague Agreement on May 13, 2015.
According to 35 U.S.C. 385:
An international design application designating the United States shall have the effect, for all purposes, from its filing date determined in accordance with section 384, of an application for patent filed in the Patent and Trademark Office pursuant to chapter 16.
This means that an international design application that designates the US is treated similarly to a national design patent application. The MPEP clarifies: 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.
For detailed information on international design applications, refer to MPEP Chapter 2900.
For more information on design patents, visit: design patents.
For more information on Hague Agreement, visit: Hague Agreement.
For more information on international design applications, visit: international design applications.
The Hague Agreement Concerning International Registration of Industrial Designs is an international treaty that allows applicants to file a single international design application with effect in multiple countries. Key points about the Hague Agreement and international design applications include:
- The United States became a Contracting Party to the Hague Agreement on May 13, 2015.
- An international design application designating the United States has the effect of a regularly filed application for patent under 35 U.S.C. 385.
- The Hague Agreement is administered by the International Bureau of the World Intellectual Property Organization (WIPO).
- 37 CFR 1.9(n) defines an international design application as “an application for international registration of a design filed under the Hague Agreement.”
For detailed information on international design applications, refer to MPEP Chapter 2900.
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According to 37 CFR 1.9(a)(1), a national application is defined as:
- A U.S. application for patent filed in the USPTO 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
- An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10
This definition encompasses various types of patent applications that are treated as national applications by the USPTO.
The Patent Law Treaties Implementation Act (PLTIA) of 2012 introduced several significant changes to U.S. patent law and procedures:
- Restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications).
- The ability to file international design applications and claim priority to, and the benefit of, international design applications in nonprovisional applications.
As stated in the MPEP: Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.
(MPEP 210)
These changes were implemented in two phases:
- Title II of the PLTIA became effective on December 18, 2013.
- Title I of the PLTIA became effective on May 13, 2015.
For more information on international design applications, visit: international design applications.
For more information on PLTIA, visit: PLTIA.
For more information on priority restoration, visit: priority restoration.
The time periods for filing a priority claim depend on the type of application:
- For original applications filed under 35 U.S.C. 111(a) (other than design applications), the claim must be filed during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1).
- For applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) and MPEP § 213.06.
- In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).
The MPEP 201.01 mentions several special types of national applications:
1. Provisional applications (35 U.S.C. 111(b))
2. Reissue applications (35 U.S.C. 251)
3. Design applications (35 U.S.C. 171)
4. Plant applications (35 U.S.C. 161)
These applications have specific requirements and purposes. For example, provisional applications provide a way to establish an early effective filing date, while reissue applications allow for the correction of errors in issued patents. Design applications protect ornamental designs, and plant applications are for new varieties of plants.
For more details on these special application types, refer to the following MPEP sections:
– MPEP 201.04 – Provisional Application
– MPEP 1400 – Reissue
– MPEP 1500 – Design Patents
– MPEP 1600 – Plant Patents
The requirements for certified copies in international design applications are as follows:
- A certified copy of the foreign application is not required in an international design application.
- The International Bureau obtains priority documents directly from offices participating in the Digital Access Service (DAS) or the Priority Document Exchange (PDX) program.
- For offices not participating in DAS or PDX, the International Bureau will invite the applicant to submit the priority document.
According to MPEP 213.07: A certified copy of the foreign application is not required in an international design application designating the United States.
The MPEP further explains: Where the foreign application was filed in a participating office, the International Bureau will attempt to obtain the priority document from the participating office. For participating offices that are not yet able to provide the priority documents to the International Bureau, the International Bureau will invite the applicant to submit the priority document.
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According to MPEP 201.02, there are several types of patent applications:
- National applications
- Provisional applications
- Nonprovisional applications
- International applications
- International design applications
The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.
For more information on continuing applications, visit: continuing applications.
For more information on international applications, visit: international applications.
For more information on international design applications, visit: international design applications.
For more information on nonprovisional applications, visit: nonprovisional applications.
For more information on patent applications, visit: patent applications.
The Patent Law Treaties Implementation Act (PLTIA) made several changes to priority and benefit claims, including:
- Restoration of the right of priority to a foreign application or benefit of a provisional application within two months of the deadline
- Ability to file international design applications
- Claiming priority to and benefit of international design applications
The MPEP notes: “Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.” (MPEP 210)
The USPTO handles priority claims in international design applications as follows:
- For international design applications designating the United States, the USPTO acts as an office of indirect filing.
- Priority claims must be made in the international design application when filed with the International Bureau.
- The USPTO will not transmit a priority claim made in a subsequently filed transmittal letter.
- Applicants should review the international registration certificate to ensure their priority claims are properly recorded.
As stated in MPEP 213.07: The United States Patent and Trademark Office (USPTO), in its capacity as an office of indirect filing, will not transmit to the International Bureau a priority claim that is made in a subsequently filed transmittal letter and not in the international design application as filed with the International Bureau.
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How does the USPTO handle certified copies for international design applications?
For international design applications, the USPTO has a specific process for handling certified copies. According to the MPEP:
‘For international design applications designating the United States, the certified copy requirement is considered to have been met by the filing of the international design application pursuant to 37 CFR 1.55(m).’
This means that if you file an international design application that designates the United States, you don’t need to separately submit a certified copy of the priority document. The filing of the international design application itself fulfills this requirement.
However, it’s important to note that this only applies to international design applications. For other types of patent applications claiming priority to a foreign application, you would still need to ensure that a certified copy is filed or retrievable through the priority document exchange program within the specified time period.
The Digital Access Service (DAS) plays a significant role in international design applications:
- DAS facilitates the exchange of priority documents between participating offices.
- For applications filed in DAS-participating offices, the International Bureau can retrieve priority documents directly.
- This eliminates the need for applicants to submit certified copies in many cases.
- Applicants should ensure their priority claims are properly recorded in the international registration.
MPEP 213.07 states: Where the foreign application was filed in a participating office, the International Bureau will attempt to obtain the priority document from the participating office.
This streamlined process through DAS enhances efficiency in handling priority documents for international design applications.
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Limited recognition in international patent applications is addressed in 37 CFR 11.9(c), which states:
An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1bis and 90.1.
This means that unregistered individuals may represent applicants in certain phases of international patent applications under specific conditions. For more detailed information:
- See MPEP § 1807 for representation in international applications (PCT)
- See MPEP § 2911 for representation in international design applications
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To claim benefit of an international design application designating the United States, the following requirements must be met:
- The claim must be made in a nonprovisional application, international application, or international design application filed on or after May 13, 2015
- The international design application must be entitled to a filing date in accordance with 37 CFR 1.1023
- The claim must meet the conditions and requirements of 35 U.S.C. 120
MPEP 211.01(d) states: Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States.
It’s important to note that this benefit can only be claimed in applications or patents filed on or after May 13, 2015, as specified in 37 CFR 1.78(j).
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