MPEP 2920.05(f)
Information Disclosure Statement in an International Design Application Designating the United States

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

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2920.05(f)    Information Disclosure Statement in an International Design Application Designating the United States [R-07.2015]

An extensive discussion of Information Disclosure Statement (IDS) practice is set forth in MPEP § 609. Although not specifically stated therein, the duty to disclose information material to patentability as defined in 37 CFR 1.56 is placed on individuals associated with the filing and prosecution of an international design application designating the United States in the same manner as for a domestic national application. An international design application designating the United States has the effect of a U.S. patent application and thus is subject to 37 CFR 1.56. See 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."). See also 35 U.S.C. 389(b) ("All questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16.").

Pursuant to 37 CFR 1.56(c), individuals associated with the filing or prosecution of a patent application for purposes of 37 CFR 1.56 are: "(1) Each inventor named in the application; (2) Each attorney or agent who prepares or prosecutes the application; and (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application." For example, individuals who are neither inventors nor practitioners but who are substantively involved in the preparation or prosecution of an international design application designating the United States and who are associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application, have a duty of disclosure under 37 CFR 1.56. In addition, the requirement under 37 CFR 1.63(c) and 1.64(c) that a person may not execute the inventor’s oath or declaration for an application unless that person is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in 37 CFR 1.56 is applicable to the inventor’s oath or declaration filed in an international design application designating the United States. See 37 CFR 1.1021(d).

Applicant must adhere to the requirements set forth in 37 CFR 1.97 and 1.98 to ensure consideration of an IDS by the examiner. When filing an international design application, an applicant may submit an IDS as an annex to the international design application. See MPEP § 2909.03. The International Bureau will send the annex to the USPTO when the published international registration is sent to the Office pursuant to Hague Agreement Article 10(3). However, the Office would prefer to receive the IDS from the applicant after publication of the international registration. Pursuant to 37 CFR 1.97(b)(5), the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3). The Office may also consider an IDS filed after this three month period as provided in 37 CFR 1.97. See MPEP § 609 for further information.