The reproductions accompanying an international application must comply with the formal requirements described in the "International procedure". When the reproductions do not comply with these requirements, the International Bureau may treat the international application as irregular (refer to “Irregularities in the international application”).
However, it is important to note that even where these requirements have been complied with to the satisfaction of the International Bureau, the Office of a Contracting Party may find that the reproductions contained in the ensuing international registration are not sufficient to disclose fully the design and, on that basis, issue a refusal of protection (refer to “Refusal of protection”).
The criteria for sufficient disclosure of a design may be different from one jurisdiction to another.
Therefore, Guidance on Preparing and Providing Reproductions in Order to Forestall Possible Refusals on the Ground of Insufficient Disclosure of an Industrial Design by Examining Offices was established in consultation with Contracting Parties, in particular all those that currently have an Examining Office, and several user organizations, and is intended to mitigate the risk of refusals pursuant to Rule 9(4).
It should, however, be noted that the Guidance cannot be considered self-sufficient or exhaustive.
The reproductions of the designs for which registration is sought may be in the form of photographs or other graphic representations of the designs, or of the products which constitute the designs. A single international application may at the same time comprise both photographs and graphic representations, which may be in black and white or in color.
The reproductions accompanying an international application using form DM/1 should be either pasted or printed directly onto a separate sheet of A4 format which is white and opaque. The separate sheet should be used upright and should not contain more than 25 reproductions. The reproductions should be arranged in the orientation in which the applicant wishes them to be published. Where the application is filed using form DM/1 a margin of at least five millimeters should be left around the representation of each design.
Each reproduction should fall within a right-angled quadrilateral containing no other reproduction, or part of another reproduction, and no numbering. The term ‘right angled quadrilateral’ is intended to include both squares and rectangles. The reproductions should not be folded, stapled or marked in any way.
For eHague, any reproduction accompanying an international application shall be in the image formats JPEG or TIFF, its file size shall not exceed 2 megabytes. Any reproduction shall have a resolution of 300 x 300 dots per inch (dpi). A reproduction uploaded with a different resolution is automatically adjusted to have a resolution of 300 x 300 dpi. The interface asks for validation of the adjusted resolution by the applicant. Detailed instructions can be found under “How to submit an international application to the International Bureau: eHague or form DM/1?”.
In principle, the reproductions should represent the design alone, or the product in relation to which the design is to be used, to the exclusion of any other object, accessory, person or animal. Thus, for example, if protection is sought for a bowl, the bowl should be represented without fruit, or a frame for which protection is sought should be represented without a picture (refer to “Disclaimers and matter that does not form part of the claimed design”).
Technical drawings showing articles in section or in plan, particularly with axes and dimensions, are not acceptable. Explanatory text or legends are not acceptable in the representation itself. (Explanatory text or legends indicating the type of view (e.g., “front view”, “top view”, etc.), may be contained in item 10 of form DM/1 form and in the relevant section of the eHague interface (refer to “Numbering of reproductions and legends”).)
If the reproductions consist of photographs, such photographs must be of professional standard and have all their edges cut at right angles. In such case, the design must be shown against a neutral plain background and photographs may not be retouched with ink or correcting fluid.
If the reproductions consist of other graphic representations, they must be of professional standard and produced with drawing instruments or by electronic means and, where the application is filed on paper, must be produced on good quality white, opaque paper, and have all their edges cut at right angles. The representation may comprise shading and hatching to provide relief. Graphic representations executed by electronic means may be shown against a background, provided that it is neutral and plain and has only edges cut at right angles.
Matter which is shown in a reproduction, but for which protection is not claimed, may be indicated in a reproduction by means of dotted or broken lines or coloring, and/or explained in the description (refer to “Item 9: Description”). Accordingly, protection of part of the design may be disclaimed.
Notwithstanding the principle under Section 402(a) (refer to “Representation of the design”), matter which does not form part of the claimed design and for which protection is not sought (“environmental matter”), may be shown in a reproduction if it is indicated by means of dotted or broken lines or coloring (and/or in the description).
There is no limit on the number of reproductions which can be submitted for each design included in an international application. Only a single copy of each reproduction should be submitted (by default, reproductions are published in color). An applicant wishing to obtain the maximum protection for a design should ensure that the design is fully represented, as only aspects visible in the reproduction will be protected. It may be necessary, therefore, to represent a single article from many angles and submit several different views. However, several views shown from different angles may not be included in a single reproduction. Each view must be represented separately.
Where there are several designs included in an international application, each design must be identified by an individual number appearing in the margin of each reproduction. The eHague interface automatically proceeds to the numbering of the reproductions filed by the applicant. When the same design is represented from different angles, the numbering must consist of two separate figures, separated by a dot (for example, 1.1, 1.2, 1.3, etc., for the first design, and 2.1, 2.2, 2.3, etc., for the second design, and so on). In such case, the reproductions should be submitted in ascending numerical order.
An applicant may choose to submit different views of the same design (e.g., “front view”, “top view”, etc.), in order either to illustrate all the characteristic features of a three-dimensional design or to comply with the requirement of the law of a designated Contracted Party which has made a declaration whereby it requires certain specified views of the product concerned (refer to “Requirements concerning views”). Legends to indicate a specific view of the product may be indicated in association with the numbering of the reproduction in item 10 of form DM/1 or in the relevant section of the eHague interface. The proposed legends are: 1. Perspective; 2. Front; 3. Back; 4. Top; 5. Bottom; 6. Left; 7. Right; 8. Reference; 9. Unfolded; 10. Exploded; 11. Cross-sectional; 12. Enlarged; 00. Other (limited to 40 characters).
The dimensions of the representation of each design appearing in a photograph or other graphic representation may not exceed 16 x 16 centimeters, and in respect of at least one representation of each design one of those dimensions must be at least 3 centimeters, at a resolution of 300 x 300 dpi.
In respect of eHague, any reproduction shall be in a combination of pixel number and resolution such that, when that reproduction is printed, the dimensions of the reproduction of each design appearing in a photograph or other graphic representation will not exceed 16 x 16 centimeters, and in respect of at least one representation of each design one of those dimensions must be at least 3 centimeters, at a resolution of 300 x 300 dpi.
Under the 1999 Act, any Contracting Party which requires certain specific views of the product in relation to which the design is to be used may, in a declaration, notify the Director General of WIPO accordingly. If those requirements are not met in an international application, the International Bureau will not raise an irregularity but the ensuing international registration might be the subject of a refusal by the Office of that Contracting Party.
China has made a declaration under Rule 9(3) whereby the compliant view(s) of the product shall be submitted if the product which constitutes the design is three-dimensional or the essential features of the design of the product concern a Graphic User Interface (GUI) only. The China National Intellectual Property Administration (CNIPA) has further clarified the required compliant views, as follows:
The Republic of Korea has made a declaration under Rule 9(3) specifying that the following specific views are required, respectively:
Viet Nam has made a declaration under Rule 9(3) requiring, where the product which constitutes the design is three-dimensional, a perspective view of the design.
Reproductions must be of a quality permitting all the details of the design to be clearly distinguished and permitting publication. The reproductions which accompany an international application should be of the highest possible quality, since, in the final analysis, it is upon the content and quality of the reproductions that the scope of protection will depend.
Where an international application is governed exclusively by the 1999 Act, it is permissible in certain limited circumstances to substitute reproductions by specimens. This is possible where the international application:
Where specimens are submitted instead of reproductions, the applicant must furnish one specimen for the International Bureau and one further specimen for each designated national Office that has notified the International Bureau that it wishes to receive copies of international registrations. This requirement aims at enabling Examining Offices to take into account the designs which are the subject of the international registration when carrying out the novelty examination provided for by their domestic legislation (refer to “Grounds for refusal”).
In the case of an international application is governed exclusively or partly by the 1960 Act, the application may be accompanied also by specimens. This means that the filing of specimens is optional but does not exempt the applicant from the requirement to furnish a reproduction of the designs.
All the specimens should be contained in a single package. None of the dimensions of the package should exceed 30 centimeters and the overall weight of the package and its packing should not exceed four kilograms.
The individual specimens may be folded and may not exceed 26.2 centimeters x 17 centimeters in size (unfolded), 50 grams in weight, or 3 millimeters in thickness. The specimens should also be pasted on sheets of A4 format and numbered in ascending numerical order. If, and when, in due course, the reproductions are submitted to the International Bureau, the number assigned to each reproduction should be the same as the number assigned to each corresponding specimen.
Perishable products or products which may be dangerous to store are not accepted by the International Bureau.
If the international application contains any matter other than that required or permitted by the 1999 Act, the 1960 Act, the Common Regulations or the Administrative Instructions, the International Bureau deletes it ex officio. If the international application is accompanied by any document other than those required or permitted, the International Bureau may dispose of such document.