MPEP 2909
Contents of the International Design Application

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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2909    Contents of the International Design Application [R-07.2015]

Hague Article 5

Contents of the International Application

  • (1) [Mandatory Contents of the International Application] The international application shall be in the prescribed language or one of the prescribed languages and shall contain or be accompanied by
    • (i) a request for international registration under this Act;
    • (ii) the prescribed data concerning the applicant;
    • (iii) the prescribed number of copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international application, presented in the prescribed manner; however, where the industrial design is two-dimensional and a request for deferment of publication is made in accordance with paragraph (5), the international application may, instead of containing reproductions, be accompanied by the prescribed number of specimens of the industrial design;
    • (iv) an indication of the product or products which constitute the industrial design or in relation to which the industrial design is to be used, as prescribed;
    • (v) an indication of the designated Contracting Parties;
    • (vi) the prescribed fees;
    • (vii) any other prescribed particulars.
  • (2) [Additional Mandatory Contents of the International Application]
    • (a) Any Contracting Party whose Office is an Examining Office and whose law, at the time it becomes party to this Act, requires that an application for the grant of protection to an industrial design contain any of the elements specified in subparagraph (b) in order for that application to be accorded a filing date under that law may, in a declaration, notify the Director General of those elements.
    • (b) The elements that may be notified pursuant to subparagraph (a) are the following:
      • (i) indications concerning the identity of the creator of the industrial design that is the subject of that application;
      • (ii) a brief description of the reproduction or of the characteristic features of the industrial design that is the subject of that application;
      • (iii) a claim.
    • (c) Where the international application contains the designation of a Contracting Party that has made a notification under subparagraph (a), it shall also contain, in the prescribed manner, any element that was the subject of that notification.
  • (3) [Other Possible Contents of the International Application] The international application may contain or be accompanied by such other elements as are specified in the Regulations.
  • (4) [Several Industrial Designs in the Same International Application] Subject to such conditions as may be prescribed, an international application may include two or more industrial designs.
  • (5) [Request for Deferred Publication] The international application may contain a request for deferment of publication.

Hague Rule 7

Requirements Concerning the International Application

  • (1) [Form and Signature] The international application shall be presented on the official form. The international application shall be signed by the applicant.
  • (2) [Fees] The prescribed fees applicable to the international application shall be paid as provided for in Rules 27 and 28.
  • (3) [Mandatory Contents of the International Application] The international application shall contain or indicate
    • (i) the name of the applicant, given in accordance with the Administrative Instructions;
    • (ii) the address of the applicant, given in accordance with the Administrative Instructions;
    • (iii) the Contracting Party or Parties in respect of which the applicant fulfills the conditions to be the holder of an international registration;
    • (iv) the product or products which constitute the industrial design or in relation to which the industrial design is to be used, with an indication whether the product or products constitute the industrial design or are products in relation to which the industrial design is to be used; the product or products shall preferably be identified by using terms appearing in the list of goods of the International Classification;
    • (v) the number of industrial designs included in the international application, which may not exceed 100, and the number of reproductions or specimens of the industrial designs accompanying the international application in accordance with Rule 9 or 10;
    • (vi) the designated Contracting Parties;
    • (vii) the amount of the fees being paid and the method of payment, or instructions to debit the required amount of fees to an account opened with the International Bureau, and the identification of the party effecting the payment or giving the instructions.
  • (4) [Additional Mandatory Contents of an International Application]
    • (a) With respect to Contracting Parties designated under the 1999 Act in an international application, that application shall contain, in addition to the indications referred to in paragraph (3)(iii), the indication of the applicant’s Contracting Party.
    • (b) Where a Contracting Party designated under the 1999 Act has notified the Director General, in accordance with Article 5(2)(a) of the 1999 Act, that its law requires one or more of the elements referred to in Article 5(2)(b) of the 1999 Act, the international application shall contain such element or elements, as prescribed in Rule 11.
    • (c) Where Rule 8 applies, the international application shall, as applicable, contain the indications referred to in paragraphs (2) or (3) thereof and be accompanied by any relevant statement, document, oath or declaration referred to in that Rule.
  • (5) [Optional Contents of an International Application]
    • (a) An element referred to in item (i) or (ii) of Article 5(2)(b) of the 1999 Act or in Article 8(4)(a) of the 1960 Act may, at the option of the applicant, be included in the international application even where that element is not required in consequence of a notification in accordance with Article 5(2)(a) of the 1999 Act or in consequence of a requirement under Article 8(4)(a) of the 1960 Act.
    • (b) Where the applicant has a representative, the international application shall state the name and address of the representative, given in accordance with the Administrative Instructions.
    • (c) Where the applicant wishes, under Article 4 of the Paris Convention, to take advantage of the priority of an earlier filing, the international application shall contain a declaration claiming the priority of that earlier filing, together with an indication of the name of the Office where such filing was made and of the date and, where available, the number of that filing and, where the priority claim relates to less than all the industrial designs contained in the international application, the indication of those industrial designs to which the priority claim relates or does not relate.
    • (d) Where the applicant wishes to take advantage of Article 11 of the Paris Convention, the international application shall contain a declaration that the product or products which constitute the industrial design or in which the industrial design is incorporated have been shown at an official or officially recognized international exhibition, together with the place where the exhibition was held and the date on which the product or products were first exhibited there and, where less than all the industrial designs contained in the international application are concerned, the indication of those industrial designs to which the declaration relates or does not relate.
    • (e) Where the applicant wishes that publication of the industrial design be deferred, the international application shall contain a request for deferment of publication.
    • (f) The international application may also contain any declaration, statement or other relevant indication as may be specified in the Administrative Instructions.
    • (g) The international application may be accompanied by a statement that identifies information known by the applicant to be material to the eligibility for protection of the industrial design concerned.
  • (6) [No Additional Matter] If the international application contains any matter other than that required or permitted by the 1999 Act, the 1960 Act, these Regulations or the Administrative Instructions, the International Bureau shall delete it ex officio. If the international application is accompanied by any document other than those required or permitted, the International Bureau may dispose of the said document.
  • (7) [All Products to Be in Same Class] All the products which constitute the industrial designs to which an international application relates, or in relation to which the industrial designs are to be used, shall belong to the same class of the International Classification.

35 U.S.C. 383  International design application.

  • In addition to any requirements pursuant to chapter 16, the international design application shall contain—
    • (1) a request for international registration under the treaty;
    • (2) an indication of the designated Contracting Parties;
    • (3) data concerning the applicant as prescribed in the treaty and the Regulations;
    • (4) copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international design application, presented in the number and manner prescribed in the treaty and the Regulations;
    • (5) an indication of the product or products that constitute the industrial design or in relation to which the industrial design is to be used, as prescribed in the treaty and the Regulations;
    • (6) the fees prescribed in the treaty and the Regulations; and
    • (7) any other particulars prescribed in the Regulations.

37 C.F.R. 1.1021  Contents of the international design application.

  • (a) Mandatory contents. The international design application shall be in English, French, or Spanish (Rule 6(1)) and shall contain or be accompanied by:
    • (1) A request for international registration under the Hague Agreement (Article 5(1)(i));
    • (2) The prescribed data concerning the applicant (Article 5(1)(ii) and Rule 7(3)(i) and (ii));
    • (3) The prescribed number of copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international design application, presented in the prescribed manner; however, where the industrial design is two-dimensional and a request for deferment of publication is made in accordance with Article 5(5), the international design application may, instead of containing reproductions, be accompanied by the prescribed number of specimens of the industrial design (Article 5(1)(iii));
    • (4) An indication of the product or products that constitute the industrial design or in relation to which the industrial design is to be used, as prescribed (Article 5(1)(iv) and Rule 7(3)(iv));
    • (5) An indication of the designated Contracting Parties (Article 5(1)(v));
    • (6) The prescribed fees (Article 5(1)(vi) and Rule 12(1));
    • (7) The Contracting Party or Parties in respect of which the applicant fulfills the conditions to be the holder of an international registration (Rule 7(3)(iii));
    • (8) The number of industrial designs included in the international design application, which may not exceed 100, and the number of reproductions or specimens of the industrial designs accompanying the international design application (Rule 7(3)(v));
    • (9) The amount of the fees being paid and the method of payment, or instructions to debit the required amount of fees to an account opened with the International Bureau, and the identification of the party effecting the payment or giving the instructions (Rule 7(3)(vii)); and
    • (10) An indication of applicant’s Contracting Party as required under Rule 7(4)(a).
  • (b) Additional mandatory contents required by certain Contracting Parties.
    • (1) Where the international design application contains the designation of a Contracting Party that requires, pursuant to Article 5(2), any of the following elements, then the international design application shall contain such required element(s):
      • (i) Indications concerning the identity of the creator of the industrial design that is the subject of that application (Rule 11(1));
      • (ii) A brief description of the reproduction or of the characteristic features of the industrial design that is the subject of that application (Rule 11(2));
      • (iii) A claim (Rule 11(3)).
    • (2) Where the international design application contains the designation of a Contracting Party that has made a declaration under Rule 8(1), then the international application shall contain the statement, document, oath or declaration specified in that declaration (Rule 7(4)(c)).
  • (c) Optional contents. The international design application may contain:
    • (1) Two or more industrial designs, subject to the prescribed conditions (Article 5(4) and Rule 7(7));
    • (2) A request for deferment of publication (Article 5(5) and Rule 7(5)(e)) or a request for immediate publication (Rule 17);
    • (3) An element referred to in item (i) or (ii) of Article 5(2)(b) of the Hague Agreement or in Article 8(4)(a) of the 1960 Act even where that element is not required in consequence of a notification in accordance with Article 5(2)(a) of the Hague Agreement or in consequence of a requirement under Article 8(4)(a) of the 1960 Act (Rule 7(5)(a));
    • (4) The name and address of applicant’s representative, as prescribed (Rule 7(5)(b));
    • (5) A claim of priority of one or more earlier filed applications in accordance with Article 6 and Rule 7(5)(c);
    • (6) A declaration, for purposes of Article 11 of the Paris Convention, that the product or products which constitute the industrial design or in which the industrial design is incorporated have been shown at an official or officially recognized international exhibition, together with the place where the exhibition was held and the date on which the product or products were first exhibited there and, where less than all the industrial designs contained in the international design application are concerned, the indication of those industrial designs to which the declaration relates or does not relate (Rule 7(5)(d));
    • (7) Any declaration, statement or other relevant indication as may be specified in the Administrative Instructions (Rule 7(5)(f));
    • (8) A statement that identifies information known by the applicant to be material to the eligibility for protection of the industrial design concerned (Rule 7(5)(g));
    • (9) A proposed translation of any text matter contained in the international design application for purposes of recording and publication (Rule 6(4)).
  • (d) Required contents where the United States is designated. In addition to the mandatory requirements set forth in paragraph (a) of this section, an international design application that designates the United States shall contain or be accompanied by:
    • (1) A claim (§§ 1.1021(b)(1)(iii) and 1.1025 );
    • (2) Indications concerning the identity of the creator (i.e., the inventor, see § 1.9(d) ) in accordance with Rule 11(1); and
    • (3) The inventor's oath or declaration (§§ 1.63 and 1.64 ). The requirements in §§ 1.63(b) and 1.64(b)(4) to identify each inventor by his or her legal name, mailing address, and residence, if an inventor lives at a location which is different from the mailing address, and the requirement in § 1.64(b)(2) to identify the residence and mailing address of the person signing the substitute statement, will be considered satisfied by the presentation of such information in the international design application prior to international registration

The elements of an international design application fall into three categories: (1) mandatory contents; (2) additional mandatory contents; and (3) optional contents.

I.    MANDATORY CONTENTS

Mandatory contents are those items required in all international design applications. Such contents are set forth in Article 5(1) and Rule 7 of the Hague Agreement and 37 CFR 1.1021(a). Specifically, the international design application must be in English, French, or Spanish, it must be presented on the official form (see MPEP § 2909.01) and signed by the applicant, and it must include: (1) a request for international registration under the Hague Agreement; (2) the prescribed data concerning the applicant; (3) the prescribed number of copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international design application, presented in the prescribed manner (where the industrial design is two-dimensional and a request for deferment of publication is made in accordance with Article 5(5) of the Hague Agreement, the international design application may, instead of containing reproductions, be accompanied by the prescribed number of specimens of the industrial design); (4) an indication of the product or products that constitute the industrial design or in relation to which the industrial design is to be used, as prescribed; (5) an indication of the designated Contracting Parties; (6) the prescribed fees; (7) the Contracting Party or Parties in respect of which the applicant fulfills the conditions to be the holder of an international registration; (8) the number of industrial designs included in the international application, which may not exceed 100, and the number of reproductions or specimens of the industrial designs accompanying the international application; (9) the amount of the fees being paid and the method of payment or instructions to debit the required amount of fees to an account opened with the International Bureau and the identification of the party effecting the payment or giving the instructions; and (10) an indication of applicant’s Contracting Party as required under Rule 7(4)(a).

II.    ADDITIONAL MANDATORY CONTENTS

Additional mandatory contents are elements that are required by certain Contracting Parties and therefore are mandatory in any international design application that designates such Contracting Parties (see Article 5(2) and Rule 7 of the Hague Agreement and 37 CFR 1.1021(b) ). Such additional mandatory contents may consist of, pursuant to Article 5(2) of the Hague Agreement, indications concerning the identity of the creator, a brief description of the reproduction or of the characteristic features of the industrial design, (iii) a claim, and/or, pursuant to Rule 8(1) of the Hague Agreement, a statement, document, oath, or declaration.

III.    OPTIONAL CONTENTS

Optional contents are items that may be included in an international design application. Optional contents are addressed in Rule 7(5) of the Hague Agreement and 37 CFR 1.1021(c) and may include: (1) two or more industrial designs, subject to the prescribed conditions; (2) a request for deferment of publication or a request for immediate publication; (3) any of the additional mandatory elements discussed above, even if such elements are not required by any Contracting Party designated in the international design application; (4) the name and address of applicant’s representative, as prescribed; (5) a claim of priority of one or more earlier filed applications; (6) a declaration, for purposes of Article 11 of the Paris Convention, that the product or products that constitute the industrial design, or in which the industrial design is incorporated, have been shown at an official or officially recognized international exhibition, together with the place where the exhibition was held and the date on which the product or products were first exhibited there and, where less than all the industrial designs contained in the international application are concerned, the indication of those industrial designs to which the declaration relates or does not relate; (7) any declaration, statement, or other relevant indication as may be specified in the Administrative Instructions; (8) a statement that identifies information known by the applicant to be material to the eligibility for protection of the industrial design concerned; and (9) a proposed translation of any text matter contained in the international application for purposes of recording and publication.

IV.    REQUIRED CONTENTS WHERE THE UNITED STATES IS DESIGNATED

As set forth in 37 CFR 1.1021(d), in addition to the mandatory requirements otherwise required for international design applications, an international design application designating the United States must also include: (1) a claim (37 CFR 1.1021(b)(1)(iii) and 37 CFR 1.1025 ); (2) indications concerning the identity of the creator (i.e., the inventor, see 37 CFR 1.9(d) ) in accordance with Rule 11(1); and (3) the inventor’s oath or declaration (37 CFR 1.63 and 1.64 ).

A claim is a filing date requirement for design applications in the United States. See 35 U.S.C. 171. The United States has declared, pursuant to Article 5(2), that an international design application designating the United States must contain a claim. See MPEP § 2903. Consequently, an international design application designating the United States that does not contain a claim will not be registered by the International Bureau in the international register and thus will not be entitled to a filing date in the United States. See MPEP §§ 2907 and 2908. In such case, the International Bureau will invite the applicant to submit the claim within a prescribed time limit and will accord a date of international registration as of the date of receipt of the claim (assuming there are no other defects). Failure to timely submit the claim in response to the invitation by the International Bureau will result in the application being deemed not to contain the designation of the United States. See Article 8(2)(b).

Pursuant to Rule 8(1), the United States has declared that an international design application designating the United States must contain an oath or declaration of the creator and indications concerning the identity of the creator. See MPEP § 2903. The requirements for the inventor’s oath or declaration are set forth in 37 CFR 1.63 and 1.64. 37 CFR 1.1021(d) further provides that the requirements in 37 CFR 1.63(b) and 1.64(b)(4) to identify each inventor by his or her legal name, mailing address, and residence, if an inventor lives at a location which is different from the mailing address, and the requirement in 37 CFR 1.64(b)(2) to identify the residence and mailing address of the person signing the substitute statement will be considered satisfied by the presentation of such information in the international design application prior to international registration. If the inventor’s oath or declaration has not been filed, the International Bureau will invite the applicant to submit the inventor’s oath or declaration within a prescribed time limit. Failure to timely submit the inventor’s oath or declaration in response to the invitation by the International Bureau will result in the application being deemed not to contain the designation of the United States. See Article 8(2)(b).

An international design application designating the United States must include a specification as prescribed by 35 U.S.C. 112 and preferably include a brief description of the reproductions pursuant to Rule 7(5)(a) describing the view or views of the reproductions. See 37 CFR 1.1024. The Office encourages applicants filing international design applications that designate the United States to include a brief description in the application describing the views of the reproductions, as such description is helpful for examination and may, in some cases, help avoid issues concerning the scope of the claimed design or sufficiency of disclosure. Furthermore, a description of the view or views of the reproductions may be required by the Office in a nonprovisional international design application, as defined by 37 CFR 1.9(a)(3), pursuant to 37 CFR 1.1067. See MPEP § 2920.04(a), subsection II.

An international design application designating the United States may not contain a request for deferment of publication. See 37 CFR 1.1028. In addition, specimens are not permitted in international design applications designating the United States. See 37 CFR 1.1027.