Notification of Withdrawal of Refusal and Statement of Grant of Protection

Notification of withdrawal of refusal

An Office which has issued a notification of refusal may withdraw the said notification, following, in particular, the lodging of an appeal by the holder.  The notification of withdrawal of refusal must relate to only one international registration, but may relate only to one or some of the industrial designs in the international registration to which the refusal applied.  It must also be dated and signed by the Office concerned.

99 Article 12(4)Rule 18(4)(a)

A notification of withdrawal of refusal must contain the following information and indications:

  • the Office making the notification;
  • the number of the international registration;
  • if the withdrawal does not concern all the industrial designs that are the subject of the refusal, those to which it does, or does not, relate;
  • the date on which the international registration produced the effect as a grant of protection under the applicable law;
  • the date on which the refusal was withdrawn.

Rule 18(4)(b)

Where the international registration was amended in a procedure before the Office, the notification shall also contain or indicate either all the amended elements or the whole information concerning the industrial designs as amended, at the discretion of the Office.  This information could be provided in the language in which the Office detained it, even if it were a language other than the working language used for the notification of withdrawal of refusal.

Rule 18(4)(c)

Where a designated Contracting Party has made a declaration under Article 7(2) of the 1999 Act, concerning the individual designation fee to be paid in two parts, the effect as grant of protection is subject to the payment of the second part of the individual designation fee (refer to "Individual designation fee payable in two parts (applicable to the designation of the United States of America only)"). Accordingly, a notification of withdrawal of refusal will be sent once the second part of the individual designation fee is paid.

99 Article 7(2)

Statement of grant of protection following a refusal

A withdrawal of refusal by an Office that has communicated a notification of refusal may also take the form of a statement to the effect that the Office concerned has decided to grant protection to the industrial designs, or some of the industrial designs, as the case may be, that are the subject of the international registration.

Rule 18bis(2)

A statement of grant of protection following a refusal must contain the following information and indications:

  • the Office making the notification;
  • the number of the international registration;
  • where the statement does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate;
  • the date on which the international registration produced the effect as a grant of protection under the applicable law;
  • the date of the statement;
  • where the international registration was amended in a procedure before the Office, the statement shall also contain or indicate all amendments (refer to Notification of withdrawal of refusal”).

Rule 18bis(2)(b) and (c)

Where a designated Contracting Party has made a declaration under Article 7(2) of the 1999 Act, concerning the individual designation fee to be paid in two parts, the effect as grant of protection is subject to the payment of the second part of the individual designation fee (refer to "Individual designation fee payable in two parts (applicable to the designation of the United States of America only)"). Accordingly, a statement of grant of protection will be sent once the second part of the individual designation fee is paid.

99 Article 7(2)

Statement of grant of protection in the absence of a prior notification of refusal

The Office of a designated Contracting Party which has not communicated a notification of refusal may, within the applicable refusal period, send to the International Bureau a statement to the effect that protection is granted to the industrial designs or some of the industrial designs, as the case may be, that are the subject of the international registration in the Contracting Party concerned.

Rule 18bis(1)(a)

Where a designated Contracting Party has made a declaration under Article 7(2) of the 1999 Act, concerning the individual designation fee to be paid in two parts, the effect as grant of protection is subject to the payment of the second part of the individual designation fee (refer to "Individual designation fee payable in two parts (applicable to the designation of the United States of America only)"). Accordingly, a statement of grant of protection will be sent once the second part of the individual designation fee is paid.

99 Article 7(2)

In general, no legal consequences result from the fact that such a statement of grant of protection has not been sent by an Office.  It remains the case that the industrial designs that are the subject of the international registration are protected if no notification of refusal has been sent within the applicable refusal period.

However, where a Contracting Party has made a declaration under Rule 18(1)(b) covering situations under Rule 18(1)(c)(i) or (ii), and either of them applies, and where protection is granted following amendments in the procedure before an Office, the sending of a statement of grant of protection is mandatory (refer to Extension of period for notification of refusal (Rule 18(1)(b))”).

Rule 18bis(1)(d) and (e)

A statement of grant of protection where no notification of refusal has been communicated must contain the following information and indications:

  • the Office making the statement;
  • the number of the international registration;
  • where the statement does not relate to all the industrial designs that are the subject of the international registration, those to which it relates;
  • the date on which the international registration produced or shall produce the effect as a grant of protection under the applicable law;
  • the date of the statement;
  • where the international registration was amended in a procedure before the Office, the statement shall also contain or indicate all amendments (refer to “Notification of withdrawal of refusal”).

Rule 18bis(1)(b)

The International Bureau records any withdrawal of refusal or statement of grant of protection in the International Register, informs the holder accordingly and, where the withdrawal or statement was communicated, or can be reproduced, in the form of a specific document, transmits a copy of that document to the holder. The recording of any withdrawal or statement is published in the Bulletin and a pdf copy of the document is made publicly available in the Bulletin alongside the publication.

Rules 18(5), (6) and 18bis(3)