How should an applicant reply to a Notification of Refusal?

This page is an FAQ based on guidance 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.

When replying to a Notification of Refusal for an international design application, applicants should keep the following points in mind:

• The reply must be filed directly with the USPTO, not through the International Bureau. As stated in 37 CFR 1.1063(b), “Any reply to the notification of refusal must be filed directly with the Office and not through the International Bureau.”
• The reply is subject to the requirements of 37 CFR 1.111.
• The reply must be signed either by a registered patent practitioner or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner.
• The time period for reply will be set in the Notification of Refusal, typically in the Office Action Summary (Form PTOL-326).

The MPEP notes: “The Hague system does not require any submission from the applicant to the USPTO to initiate examination of a nonprovisional international design application. In many cases the applicant will not have retained the services of an attorney or agent registered to practice before the USPTO (‘patent practitioner’) prior to receipt of the notification of refusal.”