MARCH 2016 SUPPLEMENT PLI PATENT OFFICE EXAM COURSE CHAPTER 2100 (SUPPLEMENT)..1 CHAPTER 2900 (NEW).. 11

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1 MARCH 2016 SUPPLEMENT PLI PATENT OFFICE EXAM COURSE CHAPTER 2100 (SUPPLEMENT)..1 CHAPTER 2900 (NEW).. 11

2 M.P.E.P. CHAPTER 2100 PATENTABILITY SUPPLEMENT Editor s Note: Despite the headlines (and potential ramifications), Mayo, Myriad and Alice, at their broadest levels (the only level that s currently being tested on the Exam), don t vary the basic principles outlined in prior cases (e.g., Bilski). The rules the PTO writes and the subsequent cases, when they are tested, may provide a lot of fodder for future questions. But we re not there yet. Rather than belabor these cases, and perhaps cause you to focus on them out of proportion to their likely testing, we ve chosen here to just reprint the first 10 pages of Chapter 2100, where we ve included those cases in context. If you haven t read Chapter 2100 in the book, read this section of the supplement instead of the first 10 pages of that chapter in the book. If you HAVE already read Chapter 2100 in the study guide, read these 13 pages anyway, or at least search this document for those case names (Alice, Myriad and Mayo). If you see where they fall in context just from that, great. If not, you may want to read the surrounding text to get a better sense of how these new cases fit into the analytical framework. HOW TO PASS COMMENT Chapter 2100 is the synthesis of the law an examiner applies during the examination process at the Patent Office. A skim of the headings of 2100 takes you through the entirety of the law -- i.e., from what is patentable to why it is patentable, to novelty, obviousness and, lastly, to proper forms for claims. All of 35 USC 101, 102, 103 and 112 are covered herein. Chapter 2100 should be on your essential reading list for this Exam! In addition, whenever the PTO publishes Examiner Guidelines in relation to recent S.Ct. or CAFC decisions, this is the MPEP Chapter where those guidelines will eventually show up, albeit in edited form. I. Patentable Subject Matter... 2 A. LIVING SUBJECT MATTER... 3 B. COMPUTER-RELATED INVENTIONS Factors To Be Considered in Deciding Whether a Claim Is an Unpatentable Abstract Idea... 4 a. Whether the Method Involves or Is Executed by a Particular Machine or Apparatus... 4 b. Whether the Machine or Apparatus Implements the Steps of the Method

3 c. Whether its Involvement Is Extrasolution Activity or a Field-of-use (i.e., the extent to which or how the machine or apparatus imposes meaningful limits on the execution of the claimed method steps)... 5 d. Whether Performance of the Claimed Method Results in or Otherwise Involves a Transformation... 6 C. LIMITATIONS ON PATENTABLE SUBJECT MATTER Statutory Subject Matter Nonstatutory Subject Matter Step Two: Judicial Exceptions to the Four Categories Analysis of Subject Matter Eligibility Establish on the Record a Prima Facie Case I. Patentable Subject Matter Congress chose the expansive language of 35 U.S.C. 101 so as to include as patentable anything under the sun that is made by man. 35 U.S.C. 101 has been interpreted as imposing only four requirements. First, whoever invents or discovers an eligible invention may obtain only ONE patent therefor. (This requirement forms the basis for statutory double patenting rejections when two applications claim the same invention, i.e. claim identical subject matter.) Second, the inventor(s) must be the applicant(s) in an application. Third, a claimed invention must fall within one of the four eligible categories of invention, i.e., process, machine, manufacture, or composition of matter, as these categories have been interpreted by the courts. Fourth, a claimed invention must be useful or have a utility that is specific, substantial and credible. Let s do some easy ones first: Note - [A] new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated E=mc 2 ; nor could Newton have patented the law of gravity. Such discoveries are manifestations of nature, free to all men and reserved exclusively to none. 2

4 But a nonnaturally occurring manufacture or composition of matter a product of human ingenuity having a distinctive name, character, [and] use is patentable subject matter. Note - [T]he production of articles for use from raw materials prepared by giving to these materials new forms, qualities, properties, or combinations whether by hand labor or by machinery is a patentable manufacture under 35 U.S.C A. LIVING SUBJECT MATTER If the broadest reasonable interpretation of the claimed invention as a whole encompasses a human being, then a rejection under 35 U.S.C. 101 must be made indicating that the claimed invention is directed to nonstatutory subject matter. The AIA revised statute explicitly states that claims directed to or encompassing a human organism (i.e., embryos and fetuses) are not patentable MPEP 2105 However, the decision of the Supreme Court in Diamond v. Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980), held that microorganisms produced by genetic engineering are not excluded from patent protection by 35 U.S.C It is clear from the Supreme Court decision and opinion that the question of whether or not an invention embraces living matter is irrelevant to the issue of patentability. The relevant distinction is not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions. Only human-made inventions are patentable. A more recent judicial decision from the Federal Circuit indicated that discoveries that possess markedly different characteristics from any found in nature, are eligible for patent protection. In re Roslin Institute (Edinburgh), 750 F.3d 1333, 1336, 110 USPQ2d 1668, 1671 (Fed. Cir. 2014), quoting Chakrabarty, 447 U.S. at 310. In Roslin, the claimed invention was a live-born clone of a pre-existing, non-embryonic, donor mammal selected from cattle, sheep, pigs, and goats. An embodiment of the claimed invention was the famous Dolly the Sheep, which the court stated was the first mammal ever cloned from an adult somatic cell. Despite acknowledging that the method used to create the claimed clones constituted a breakthrough in scientific discovery, the court held the claims ineligible because Dolly herself is an exact genetic replica of another sheep and does not possess markedly different characteristics from any [farm animals] found in nature. Roslin, 750 F.3d at 1337, 110 USPQ2d at B. COMPUTER-RELATED INVENTIONS MPEP 2106 Evaluation of a computer-related invention is as follows: determine what the programmed computer does when it performs the processes dictated by the software; determine how the computer is to be configured to provide that functionality; 3

5 and if applicable, determine the relationship of the programmed computer to other subject matter outside the computer that constitutes the invention (e.g., machines, devices, materials, or process steps other than those that are part of or performed by the programmed computer). The Supreme Court in Bilski v. Kappos, 561 U.S. 593, 130 S. Ct. 3218, 95 USPQ2d 1001 (2010), clarified the requirements for a claim to be a patentable process. Not every claimed method qualifies as a patentable process. A process claim, to be patentable under 35 U.S.C. 101, must be limited to a particular practical application. This ensures that the process is not simply claiming an abstract idea, or substantially all practical uses of (preempting) a law of nature, or a physical phenomenon. See MPEP for further guidance regarding eligibility of process claims that involve laws of nature/natural correlations. Consistent with the foregoing, Bilski holds that the following claim is abstract: 1. A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of: (a) (b) (c) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer; identifying market participants for said commodity having a counter-risk position to said consumers; and initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions. Specifically, the Court explains: The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in prior decisions in Benson and Flook. Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea. 1. Factors To Be Considered in Deciding Whether a Claim Is an Unpatentable Abstract Idea a. Whether the Method Involves or Is Executed by a Particular Machine or Apparatus For computer-implemented processes, the machine is often disclosed as a general purpose computer. In these cases, the general purpose computer may be sufficiently particular when programmed to perform the process steps. Such programming creates a new machine because a general purpose computer, in effect, becomes a 4

6 special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software. In re Alappat, 33 F.3d 1526, 1545, 31 USPQ 1545, (Fed. Cir. 1994); see also Ultramercial v. Hulu, 657 F.3d 1323, 1329, 100 USPQ2d 1140, 1145 (Fed. Cir. 2011) (stating a programmed computer contains circuitry unique to that computer ). However, "adding a 'computer-aided' limitation to a claim covering an abstract concept, without more, is insufficient to render [a] patent claim eligible" where the claims "are silent as to how a computer aids the method, the extent to which a computer aids the method, or the significance of a computer to the performance of the method." DealerTrack v. Huber, F.3d,, 101 USPQ2d 1325, (Fed. Cir. 2012). To qualify as a particular machine under the test, the claim must clearly convey that the computer is programmed to perform the steps of the method because such programming, in effect, creates a special purpose computer limited to the use of the particularly claimed combination of elements (i.e., the programmed instructions) performing the particularly claimed combination of functions. If the claim is so abstract and sweeping that performing the process as claimed would cover substantially all practical applications of a judicial exception, such as a mathematical algorithm, the claim would not satisfy the test as the machine would not be sufficiently particular. b. Whether the Machine or Apparatus Implements the Steps of the Method Integral use of a machine or apparatus to achieve performance of the method weighs toward eligibility, as compared to where the machine or apparatus is merely an object on which the method operates, which weighs against eligibility. See Cybersource v. Retail Decisions, 654 F.3d 1366, 99 USPQ2d 1960 (Fed. Cir. 2011) ( We are not persuaded by the appellant's argument that claimed method is tied to a particular machine because it would not be necessary or possible without the Internet.... Regardless of whether the Internet can be viewed as a machine, it is clear that the Internet cannot perform the fraud detection steps of the claimed method ). c. Whether its Involvement Is Extrasolution Activity or a Field-of-use (i.e., the extent to which or how the machine or apparatus imposes meaningful limits on the execution of the claimed method steps) Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility. See Bilski, 138 S. Ct. at 3230 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, (1978)), and Cybersource v. Retail Decisions, 654 F.3d 1366, 99 USPQ2d 1690 (Fed. Cir. 2011) ( while claim 3 requires an infringer to use the Internet to obtain that data... [t]he Internet is merely described as the source of the data. We have held that mere [data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory. " In re Grams, 888 F.2d 835, 840, 12 USPQ2d 1824, (Fed. Cir. 1989) (quoting In re Meyer, 688 F.2d 789, 794, 215 USPQ 193, (CCPA 1982)). 5

7 d. Whether Performance of the Claimed Method Results in or Otherwise Involves a Transformation Transformation of an article means that the article has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. Manufactures and compositions of matter are the result of transforming raw materials into something new with a different function or use. Purely mental processes in which thoughts or human-based actions are changed are not considered an eligible transformation. For data, mere "manipulation of basic mathematical constructs [i.e,] the paradigmatic 'abstract idea'," has not been deemed a transformation. Cybersource v. Retail Decisions, 654 F.3d 1366, 1372 n.2, 99 USPQ2d 1690, 1695 n.2 (Fed. Cir. 2011)(quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360 (Fed. Cir. 1994). However, transformation of electronic data has been found when the nature of the data has been changed such that it has a different function or is suitable for a different use. In re Bilski, 545 F.3d 943, (Fed. Cir. 2009)(aff'd sub nom Bilski v. Kappos, 130 S. Ct (2010)). HOW TO PASS COMMENT Watch out as well for enablement (discussed below) on computer inventions. Some programming and experimentation is okay - undue experimentation is not. Also, be mindful of the Bilski guidelinees for 101. C. LIMITATIONS ON PATENTABLE SUBJECT MATTER The broad phrase anything under the sun that is made by man is limited by the text of 35 U.S.C. 101, meaning that one may only patent something that is a machine, manufacture, composition of matter, or a process. 1. Statutory Subject Matter The examiner uses the following 35 USC 101 patent eligibility analysis: Step 1: Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? The subject matter of the claim must be directed to one of the four subject matter categories. If it is not, the claim is not eligible for patent protection and should be rejected under 35 U.S.C. 101, for at least this reason. A summary of the four categories of invention are: i. Process an act, or a series of acts or steps. See Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972) ("A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing." (emphasis added) (quoting Cochrane v. Deener, 94 U.S. 780, 788, 24 L. Ed. 139, 1877 Dec. Comm'r Pat. 242 (1876))); NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1316, 75 USPQ2d 1763, 1791 (Fed. Cir. 2005) ("[A] process is a series of acts." (quoting Minton v. Natl. Ass n. of Securities Dealers, 336 F.3d 1373, 336 F.3d 6

8 1373, 1378, 67 USPQ2d 1614, 1681 (Fed. Cir. 2003))). See also 35 U.S.C. 100(b); Bilski v. Kappos, 561 U.S. 593, 130 S. Ct. 3218, 95 USPQ2d 1001 (2010). ii. Machine a concrete thing, consisting of parts, or of certain devices and combination of devices. Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570, 17 L. Ed. 650 (1863). This includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. Corning v. Burden, 56 U.S. 252, 267, 14 L. Ed. 683 (1854). iii. Manufacture an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery. Diamond v. Chakrabarty, 447 U.S. 303, 308, 206 USPQ 193, 197 (1980) (emphasis added) (quoting Am. Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11, 51 S. Ct. 328, 75 L. Ed. 801, 1931 (Dec. Comm'r Pat. 711 (1931))). iv. Composition of matter all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids, for example. Chakrabarty, 447 U.S. at 308, 206 USPQ at 197. Example Each applicant presents a claim to the following apparatus: A computer system for determining the three-dimensional structure of a chemical compound comprising: (a) means for determining the three-dimensional structure of a compound; and (b) means for creating and displaying an image representing a three-dimensional perspective of the compound. In addition, each application provides the noted disclosures to support the claims: Applicant A Disclosure: The disclosure described specific software, i.e., specific software code segments, that are to be employed to configure a general-purpose microprocessor to create specific logic circuits. These circuits are indicated to be the means corresponding to the claimed means limitations. Result: Claim defines specific computer; patentability stands independently from process claim. Explanation: Disclosure identifies the specific machine capable of performing the indicated functions. 7

9 Applicant B Disclosure: The disclosure states that it would be a matter of routine skill to select an appropriate conventional computer system and implement the claimed process on that computer system. The disclosure does not have specific disclosure that corresponds to the two means limitations recited in the claim (i.e., no specific software or logic circuit). The disclosure does have an explanation of how to solve the wavefunction equations of a chemical compound, and indicates that the solutions of those wavefunction equations can be employed to determine the physical structure of the corresponding compound. Result: Claim encompasses any computer embodiment of process claim; patentability stands or falls with process claim. Explanation: Disclosure does not provide any information to distinguish the implementation of the process on a computer from the factors that will govern the patentability determination of the process per se. As such, the patentability of this apparatus claim will stand or fall with that of the process claim. 2. Nonstatutory Subject Matter And, now, the fall-out from step 1: Courts have found the following examples of 101 ineligible subject matter: i. transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se), In re Nuijten, 500 F.3d 1346, 1357, 84 USPQ2d 1495, 1503 (Fed. Cir. 2007); ii. a human per se, The Leahy-Smith America Invents Act (AIA), Public Law , sec. 33, 125 Stat. 284 (September 16, 2011); iii. a legal contractual agreement between two parties, see In re Ferguson, 558 F.3d 1359, 1364, 90 USPQ2d 1035, (Fed. Cir. 2009) (cert. denied); iv. a computer program per se, Gottschalk v. Benson, 409 U.S. at 72, 175 USPQ at ; v. a company, Ferguson, 558 F.3d at 1366, 90 USPQ at 1040; vi. a mere arrangement of printed matter, In re Miller, 418 F.2d 1392, 1396, 164 USPQ 46, 49 (CCPA 1969); and vii. data per se, Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1720 (Fed. Cir. 2014). Note: A claim that covers both statutory and non-statutory embodiments (under the broadest reasonable interpretation of the claim when read in light of the specification and in view of one skilled in the art) embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. Such claim should be rejected under 35 U.S.C. 101, for at least this reason. 8

10 For example, machine readable media can encompass non-statutory transitory forms of signal transmission, such as, a propagating electrical or electromagnetic signal per se. See In re Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007). When the broadest reasonable interpretation of machine-readable media in light of the specification as it would be interpreted by one of ordinary skill in the art encompasses transitory forms of signal transmission, a rejection under 35 U.S.C. 101 as failing to claim statutory subject matter would be appropriate. Thus, a claim to a computer-readable medium that can be a compact disc or a carrier wave covers a non-statutory embodiment and therefore should be rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. Straight forwardly: If the claimed invention is clearly not within one of the four categories, then a rejection under 35 U.S.C. 101 must be made indicating that the claimed invention is directed to non-statutory subject matter. However, when the claim fails under Step 1 and it appears from applicant s disclosure that the claim could nonetheless be amended to be directed to a statutory category, Step 2 below should still be conducted. 3. Step Two: Judicial Exceptions to the Four Categories Does the claim wholly embrace a judicially recognized exception, which includes laws of nature, natural phenomena, and abstract ideas? Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 2354, 110 USPQ2d 1976, 1980 (2014) (citing Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. _, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972, 1979 (2013)). See also Bilski v. Kappos, 561 U.S.593, 601, 130 S. Ct. 3218, 3225, 95 USPQ2d 1001, (2010) (stating The Court's precedents provide three specific exceptions to 101's broad patent-eligibility principles: laws of nature, physical phenomena, and abstract ideas. ) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 309, 206 USPQ 193, 197 (1980)). Determining that a claim falls within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C. 101 (i.e., process, machine, manufacture, or composition of matter) does not end the eligibility analysis because claims directed to nothing more than abstract ideas (such as mathematical algorithms), natural phenomena, and laws of nature are not eligible for patent protection. Diamond v. Diehr, 450 U.S. 175, 185, 209 USPQ 1, 7 (1981); accord, e.g., Chakrabarty, 447 U.S. at 309, 206 USPQ at 197; Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978); Benson, 409 U.S. at 67-68, 175 USPQ at 675. In addition to the terms "laws of nature," "natural phenomena," and "abstract ideas," judicially recognized exceptions have been described using various other terms, including "physical phenomena," "scientific principles," "systems that depend on human intelligence alone," "disembodied concepts," "mental processes" and "disembodied mathematical algorithms and formulas," for example. The exceptions reflect the courts view that the basic tools of scientific and technological work are not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175 (1852). Instead, such manifestations of laws of nature are part of the storehouse of knowledge, free 9

11 to all men and reserved exclusively to none. Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 76 USPQ 280, 281 (1948). 4. Analysis of Subject Matter Eligibility While abstract ideas, natural phenomena, and laws of nature are not eligible for patenting, methods and products employing abstract ideas, natural phenomena, and laws of nature to perform a real-world function may well be. Thus, if a claim is directed to a judicial exception, it must be analyzed to determine whether the elements of the claim, considered both individually and as an ordered combination, are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself - this has been termed a search for an inventive concept. Alice Corp., 134 S. Ct. at 2357, 110 USPQ2d at This analysis considers whether the claim as a whole is for a particular application of an abstract idea, natural phenomenon, or law of nature, as opposed to the abstract idea, natural phenomenon, or law of nature itself. Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. _, 132 S. Ct. 1289, , 101 USPQ2d 1961, (2012) (citing Diehr, 450 U.S. at 187, 209 USPQ at 7). For a detailed discussion of the analysis required to determine whether a claim is directed to patent-eligible subject matter, see the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg (December 16, 2014). 5. Establish on the Record a Prima Facie Case USPTO personnel should review the totality of the evidence (e.g., the specification, claims, relevant prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter. USPTO personnel must reach a conclusion as to whether it is more likely than not that the claimed invention as a whole either falls outside of one of the enumerated statutory classes or within one of the exceptions to statutory subject matter. The examiner bears the initial burden of presenting a prima facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If the record as a whole suggests that it is more likely than not that the claimed invention would be considered significantly more than an abstract idea, natural phenomenon, or law of nature, then USPTO personnel should not reject the claim. After USPTO personnel identify and explain in the record the reasons why a claim is for an abstract idea, natural phenomenon, or law of nature without significantly more, then the burden shifts to the applicant to either amend the claim or make a showing of why the claim is eligible for patent protection. See, e.g., In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995). Computer programs are often recited as part of a claim. In such a case, the claim remains statutory irrespective of the fact that a computer program is included in the claim. 10

12 M.P.E.P. CHAPTER 2900 INTERNATIONAL DESIGN APPLICATIONS I. Overview II. Basic Flow Under the Hague Agreement III. A. FILING B. FORMAL EXAMINATION BY THE INTERNATIONAL BUREAU C. REGISTRATION AND PUBLICATION D. EXAMINATION BY THE OFFICES OF THE DESIGNATED CONTRACTING PARTIES How the Hague Agreement Is Implemented vis-à-vis the United States IV. Who May File and Where A. APPLICATION FILED IN ANOTHER COUNTRY B. USPTO AS AN OFFICE OF INDIRECT FILING C. APPLICANT D. APPLICANT S CONTRACTING PARTY E. PROCEDURES FOR TRANSMITTAL TO THE INTERNATIONAL BUREAU V. Filing Date A. FILED AT INTERNATIONAL BUREAU (DIRECT FILING).. 17 B. FILED THROUGH AN OFFICE (INDIRECT FILING) VI. International Registration A. FILING DATE IN THE UNITED STATES VII. Contents VIII. Official Form for the Application IX. Drawings X. Fees XI. Representation XII. Correspondence in Respect of International Design Applications Filed With the USPTO as an Office of Indirect Filing XIII. Relief from Prescribed Time Limits

13 XIV. XV. Conversion of an International Design Application to a US Design Application National Processing of International Design Applications Designating the United States A. CORRECTING INVENTORSHIP B. APPLICANT C. CORRESPONDENCE ADDRESS D. ELEMENTS OF A NONPROVISIONAL INTERNATIONAL DESIGN APPLICATION E. EXAMINATION Notification of Refusal One Independent and Distinct Design Considerations Under 35 U.S.C Foreign Priority Benefit Claims Under 35 U.S.C. 386(c) IDS in an Application Designating the United States F. ALLOWANCE XVI. Corrections and Other Changes in the International Register XVII. Statement of Grant of Protection XVIII. Term of Design Patent I. Overview The Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, July 2, 1999 (hereinafter Hague Agreement ) is an international agreement that enables an applicant to file a single international design application which may have the effect of an application for protection for the design(s) in countries and/or intergovernmental organizations that are parties to the Hague Agreement (the Contracting Parties ) designated in the application. The United States is a Contracting Party to the Hague Agreement, which took effect with respect to the United States on May 13, The Hague Agreement is administered by the International Bureau of the World Intellectual Property Organization ( the International Bureau ). 12

14 II. Basic Flow Under the Hague Agreement A. FILING An international design application may be filed by an applicant indirectly through the US Patent and Trademark Office ( USPTO ) or directly with the International Bureau. If the application is filed through the USPTO, the Office will confirm that the required transmittal fee has been paid, perform a national security review, and check that the required indications demonstrating applicant s entitlement to file the application through the USPTO are present in the application. If the transmittal fee is paid and the application clears security review and contains the indications establishing applicant s entitlement to file the application through the USPTO, the application will be transmitted to the International Bureau and the applicant will be notified of the transmittal. The USPTO will also notify the applicant and the International Bureau of the receipt date of the application. B. FORMAL EXAMINATION BY THE INTERNATIONAL BUREAU Regardless of whether the application is filed indirectly through a Contracting Party or directly with the International Bureau, the International Bureau examines the application to determine whether the applicable formal requirements under the Hague Agreement and Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement have been satisfied. If the applicable requirements have been satisfied, the International Bureau will accord the application a filing date and register the industrial design in the International Register. If the International Bureau finds that the international design application does not satisfy the applicable requirements, it will invite the applicant to make the required corrections within a prescribed time limit. The failure to timely respond to the invitation may result in abandonment of the application or removal of the designation of a Contracting Party. C. REGISTRATION AND PUBLICATION If the international design application satisfies all applicable requirements, the International Bureau will register the international design application in the International Register and accord a date of international registration. The international registration date will be either the filing date of the international design application or the date of receipt of any additional mandatory content item required, if such date is later than the filing date. The international registration includes all the data contained in the international design application (including any priority claim where the earlier filing is not more than six months prior to the international filing date), the reproduction(s) of the design, the registration number and registration date, and the class of the International Classification determined by the International Bureau. The international registration is published by the International Bureau. The applicant may request that publication occur immediately after registration or that publication 13

15 be deferred for up to 30 months from the filing date (or priority date, if applicable). Deferment of publication is not possible if a Contracting Party is designated that does not permit deferred publication. (The US does not permit deferred publication.) Absent a request for immediate publication or deferment, the registration will be published approximately six months after the date of international registration. The publication includes the data from the international registration and the reproductions of the industrial design. D. EXAMINATION BY THE OFFICES OF THE DESIGNATED CONTRACTING PARTIES Following publication of the international registration by the International Bureau, the offices of the designated Contracting Parties proceed with examination if required under their respective laws. [Note: the United States is such a country.] As a result of that examination, the office (USPTO) may notify the International Bureau of a refusal of protection for its territory. A refusal of protection, if any, must be sent to the International Bureau within six months from the date of publication of the international registration. However, any Contracting Party whose office is an examining office, or whose law provides for the possibility of opposition to the grant of protection, may declare that the refusal period of six months is extended to 12 months. Pursuant to 35 U.S.C. 389, the USPTO will examine international design applications designating the United States based on the published international registration received from the International Bureau. Where it appears that the applicant is not entitled to a patent under the law of the United States with respect to the design, the Office will send a notification of refusal to the International Bureau, normally within 12 months from the publication of the international registration. The applicant may reply to such refusal directly to the USPTO. Any further Office action, such as a subsequent non-final rejection, a final rejection, or an allowance, will be sent directly to the applicant. III. How the Hague Agreement Is Implemented vis-à-vis the United States An international design application designating the United States must contain a claim. The specific wording of the claim must be in formal terms to the ornamental design for the article as shown, or as shown and described. See 37 CFR (d) and MPEP 2909, subsection IV. Additionally, an international design application designating the United States must also contain an oath or declaration of the creator and indications concerning the identity of the creator. Where the United States is designated in an international design application, it is not possible for an applicant to request the deferment of publication of the ensuing international registration. As for the United States, only one independent and distinct design may be claimed in a single application. See MPEP (b) and

16 The United States is extending the time period within which to provide a refusal (to 12 months) from the date of international publication. The United States provides industrial design rights exclusively through USPTO issuance of a U.S. design patent. See U.S.C and 389 and MPEP (a) and As to the United States: the prescribed designation fee to designate the US (also referred to as an individual designation fee) is payable in a first part at the filing of the international design application, and a second part payable upon allowance of the application in the United States. See MPEP 2910 and The amounts of the first and second individual designation fees are subject to future changes. The United States will use a period of (up to) six months for the security clearance required under United States law (i.e., same as current foreign filing license protocol). Changes in ownership recorded by the International Bureau must also be recorded with the USPTO through submission of documentation supporting that change in ownership to have effect. See 35 U.S.C. 261 and MPEP The maximum duration of protection for designs is 15 years from grant. (This term is also effective in all US design applications filed on or after May 13, 2015). 35 U.S.C IV. Who May File and Where An international design application may be filed through the USPTO only if the applicant, or at least one applicant if there is more than one applicant, is a national of the United States or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States; this would make the United States the applicant s Contracting Party (i.e. the applicant is a citizen or permanent resident of the U.S.). A. APPLICATION FILED IN ANOTHER COUNTRY An international design application made in this country shall be considered to constitute the filing of an application in a foreign country if the international design application is filed 1. in a country other than the United States; 2. at the International Bureau; or 3. with an intergovernmental organization. B. USPTO AS AN OFFICE OF INDIRECT FILING The United States Patent and Trademark Office, as an office of indirect filing, accepts international design applications where the applicant s Contracting Party is the United States. As an office of indirect filing, the USPTO will 15

17 1. Receive and accord a receipt date to international design applications; 2. Collect and, when required, transmit fees due for processing international design applications; 3. Determine compliance with applicable requirements; and 4. Transmit an international design application to the International Bureau, unless national security prevents the application from being transmitted. International design applications may be filed through the USPTO as an office of indirect filing via EFS-Web, mail, or hand delivery to the Customer Service Window at the USPTO s Alexandria headquarters. Note: the filing of an international design application is excluded from the Certificate of Mailing or Transmission procedures under 37 CFR 1.8. Facsimile transmission may not be used for the filing of an international design application or the filing of color drawings under 37 CFR See 37 CFR 1.6(d)(3) and (4), 37 CFR 1.8(a)(2)(i)(K). See MPEP 502 for more information on depositing correspondence with the USPTO. C. APPLICANT Only persons who are nationals of the United States or who have a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the territory of the United States may file international design applications through the USPTO. Although the United States Patent and Trademark Office will accept international design applications filed by any person referred to above, an international design application designating the United States may be refused by the Office as a designated office if the applicant is not a person qualified under US law to be an applicant. D. APPLICANT S CONTRACTING PARTY In order to file an international design application through the USPTO, the United States must be applicant s Contracting Party. That is, the person or entity doing the filing is, in fact, a US citizen, permanently domiciled, etc. and the U.S. is the appropriate place for them to do an indirect filing. The official form for presenting the international design application, Application for International Registration (form DM/1), includes boxes to indicate both applicant s entitlement to file the international design application and applicant s Contracting Party. See MPEP E. PROCEDURES FOR TRANSMITTAL TO THE INTERNATIONAL BUREAU The international design application is transmitted to the International Bureau once the national security review is done and the transmittal fee is paid. The international design application will not be transmitted to the International 16

18 Bureau if the transmittal fee has not been paid or the necessary national security clearance has not been obtained. See 37 CFR At the same time, the Office will also notify the International Bureau of the date on which it received the application. The Office must also notify the applicant of the date on which it received the application and of the transmittal of the international design application to the International Bureau. Once the international design application has been transmitted, all further correspondence concerning the application should be sent directly to the International Bureau, except for matters properly before the USPTO as an office of indirect filing or as a designated office. The USPTO will generally not forward communications to the International Bureau received after transmittal of the application to the International Bureau. Any reply to an invitation sent to the applicant by the International Bureau must be filed directly with the International Bureau, and not with the Office, to avoid abandonment or other loss of rights. Upon receipt of an international design application, the USPTO will review the application for the required indications establishing each applicant s entitlement to file the international design application through the USPTO, payment of the transmittal fee, and national security. If the indications are not sufficient to establish each applicant s entitlement to file the international design application through the USPTO, the transmittal fee has not been paid, or the necessary national security clearance has not been obtained, the Office will notify the applicant accordingly via Form PTO-2320, Notification Of Receipt And Transmittal Of The International Design Application To The IB And Invitation To Pay Fee. Form PTO-2320 does not set a time period to cure the deficiency but instead warns the applicant that an international design application that is not received by the International Bureau within six months from receipt of the application by the USPTO will receive a filing date as of the date on which the International Bureau receives the application, rather than the USPTO receipt date. V. Filing Date A. FILED AT INTERNATIONAL BUREAU (DIRECT FILING) Where the international application is filed directly with the International Bureau, the filing date is, in most cases, the date on which the International Bureau receives the complete international application. But, if the international application has an irregularity listed below, the filing date will be the date on which the correction of such irregularity is received by the International Bureau. Those irregularities are: 1. the international application is not in one of the required languages (English, French or Spanish, Hague Rule 6); 2. any of the following elements is missing from the international application: a. an express or implicit indication that international registration under the 1999 Act or the 1960 Act is sought; 17

19 b. indications allowing the identity of the applicant to be established; c. indications sufficient to enable the applicant or its representative, if any, to be contacted; d. a reproduction or specimen of each industrial design that is the subject of the international application; e. the designation of at least one Contracting Party. If the International Bureau finds any other mistakes in the application, a filing date is still accorded, but the Bureau invites the applicant to make the required corrections within three months. If the defect is not remedied within three months, the international application is considered abandoned and the International Bureau will refund any fees paid in respect of that application, after deduction of an amount corresponding to the basic fee. B. FILED THROUGH AN OFFICE (INDIRECT FILING) The filing date of an international application filed through an Office is the date on which the international application was received by that Office, provided that it is received by the International Bureau generally within one month of that date. But, a Contracting Party whose law requires security clearance may, in a declaration, notify the Director General that the period of one month can be extended up to a period of six months. The US has done so. MPEP Otherwise, the filing date is the date on which the International Bureau receives the international application. Failure to timely remedy a defect(s) will result in the international design application being deemed not to contain the designation of the Contracting Party concerned. See MPEP VI. International Registration The International Registration occurs upon receipt of the application in Geneva, whether publication is deferred or not, if the application is complete. If there is something that needs to be amended or corrected, then the international registration date is the date those corrections were completed. The basic application includes: 1) identification of the inventor; 2) a brief description of the design (drawings and brief description); and 3) a claim. The content of the international registration includes: 1) all data associated with the design that has been submitted (inventor, owner, priority filing, etc.); 2) any 18

20 reproduction of the design; 3) the date of registration; 4) the number of the registration; and 5) the relevant international class designations. A. FILING DATE IN THE UNITED STATES The filing date of an international design application in the United States is not necessarily the same date as the filing date accorded by the International Bureau. See MPEP The filing date accorded by the International Bureau is referred to as the international filing date. The filing date as to the United States is the international registration date, i.e., the date a complete application was received in Geneva. VII. Contents An International Design Application must include: 1. a request for international design registration; 2. identification of the applicant; 3. an indication of what the design is (i.e., drawings or specimens); 4. a description in terms of its industrial design classification; 5. designation of the contracting party(s) where design protection is desired (i.e, the United States); 6. the fee. If the US is designated, then, in addition: 1) a claim; 2) the identity of the inventor; and 3) an oath, must also be present. VIII. Official Form for the Application The official form can be paper but most likely would include an electronic interface. IX. Drawings The drawings must be sufficient to see every detail of the design and permit reproduction thereof. Generally all six sides of the design, if 3D, will be sufficient. Black and white or color paper drawings, and/or photographs are permitted. For 2D designs, specimens may also be furnished. 19

21 X. Fees The fees include a basic fee, a fee relating to a standard designation (for countries that register but do not examine), a fee relating to a specific designation (for countries that register, but only after examination, e.g., the US), and a publication fee. XI. Representation An applicant may be represented by an agent or attorney registered to practice at the USPTO. XII. Correspondence in Respect of International Design Applications Filed With the USPTO as an Office of Indirect Filing Applicant, or their representative, may specify a correspondence address where the International Bureau can send correspondence. This is for use by the USPTO as an office of indirect filing or by the International Bureau. XIII. Relief from Prescribed Time Limits If the application is filed and abandoned unintentionally, the application may be revived in accord with 37 CFR (very similar to 37 CFR 1.137). The revival needs: 1) a copy of the last correspondence from the international bureau; 2) the required reply; 3) the fee; 4) a certified copy of the original design application; 5) a statement that the entire delay was unintentional; and 6) a terminal disclaimer (so the 15-year term is not extended). XIV. Conversion of an International Design Application to a US Design Application An international application filed with the USPTO as an office of indirect filing may be converted to a US filing under 37 CFR 1.53(b) if a petition and fee are filed requesting such conversion. Any such petition must be filed before publication of the international application. XV. National Processing of International Design Applications Designating the United States An international design application designating the US and having the fees paid, inventor identified, etc., will be treated as a US design application once it is forwarded to the US for examination following international publication. Initially, the applicant is sent a US filing receipt, identifying serial number, filing date, etc. 20

22 From there, the USPTO sends out a first office action or notice of allowance. Regular prosecution then ensues. A. CORRECTING INVENTORSHIP If necessary, any corrections can be made under Rule 48. An oath or substitute statement is required like any other inventorship correction. B. APPLICANT The applicant may be, as for any other US application, the inventor or owner. Rules will apply. Typically, however, the applicant will be the inventor, and the owner will be separately identified. C. CORRESPONDENCE ADDRESS This address will be as for the international application. Usually, it will be the applicant s representative s address (the registered agent or attorney). D. ELEMENTS OF A NONPROVISIONAL INTERNATIONAL DESIGN APPLICATION Specification/Drawings/Oath: This would be the same as for any other design application and must, as such, comply with all the same corresponding requirements of any other US design filing. Amendments and replacements may be necessary. A title may not yet be present from the international application, but all the other elements: spec/claim/drawing/oath/fee, will already be present. The USPTO may establish a title. E. EXAMINATION Again, the same examination as for any other US design case. 35 USC 101, 102, 103, 112, will all be applied as per usual. 1. Notification of Refusal This is also known as an official action. The only difference is a copy is also sent to the International Bureau for forwarding to the holder of the international design. Upon issuance of a design patent in the US, after prosecution is concluded and an issue fee has been paid, a statement of protection is sent to the international bureau stating what is protected as for the international design in the United States. 2. One Independent and Distinct Design Restriction is possible here, just as it is in other design cases. 3. Considerations Under 35 U.S.C. 112 Dotted lines show the context or the environment of the design and form no part of the design themselves. 21