Temporary Postponement of Electronic Filing and Payment Rules for Certain Madrid Protocol-Related Rules

Summary:

The United States Patent and Trademark Office (USPTO) is temporarily postponing those provisions of the Trademark Rules of Practice that require electronic transmission to the USPTO of applications for international registration, responses to irregularity notices, and subsequent designations submitted pursuant to the Madrid Protocol.

In conjunction with the postponement of the requirement for electronic submission of international applications, subsequent designations and responses to irregularity notices, the USPTO is also temporarily suspending those provisions of the Rules of Practice that allow payment of fees charged by the International Bureau of the World Intellectual Property Organization (IB) to be submitted through the USPTO, and those provisions of the Trademark Rules of Practice that require that all fees for international trademark applications and subsequent designations be paid at the time of filing.

Finally, as explained below, the USPTO is temporarily waiving the requirement that all trademark-related documents submitted on paper must be mailed to 2900 Crystal Drive, Arlington, Virginia 22202-3514. Pursuant to that waiver, international applications, subsequent designations and responses to irregularity notices should be mailed to an alternative address, provided below. This waiver applies solely to Madrid-related submissions. Any other trademark-related correspondence that is sent to the alternative address will not be accepted, and will be returned to the sender.

The applicability dates for certain rules in 37 CFR parts 2 and 7, published September 26, 2003, are suspended from November 2, 2003, to January 2, 2004. If this postponement is required to be extended, the USPTO will issue a notice announcing these extensions at least 10 business days before the extensions commence.

The postponement and waivers are procedural in nature and do not affect any substantive rights.

For further information contact:

Ari Leifman, Office of the Commissioner for Trademarks, by telephone at (703) 308-8910, ext. 155, or by e-mail to ari.leifman@uspto.gov.

Supplementary information:

Background

The Madrid Protocol provides a system for obtaining an international trademark registration. The Madrid Protocol Implementation Act of 2002, Pub. L. 107-273, 116 Stat. 1758, 1913-1921 (MPIA) amends the Trademark Act of 1946 to implement the provisions of the Madrid Protocol in the United States.

On September 26, 2003, the USPTO published new regulations to implement the MPIA. 68 FR 55748, posted on the USPTO Web site at http://www.uspto.gov/web/offices/com/sol/notices/68fr55748.pdf. These regulations take effect on November 2, 2003. The regulations require that certain submissions that are made to the USPTO in connection with the Madrid Protocol be transmitted using the Trademark Electronic Application System (TEAS). Specifically, 37 CFR 7.11(a) requires that an international application be submitted through TEAS; 37 CFR 7.21(b) requires that a subsequent designation (a request that protection be extended to countries not identified in the original international application) be submitted through TEAS; and 37 CFR 7.14(e) requires thatwhere the International Bureau of the World Intellectual Property Organization (IB) has issued a notice of irregularity to an international applicant, and the international applicant submits a response to that notice through the USPTO, the response must be transmitted through TEAS.

The USPTO is fully confident in its electronic systems. Nevertheless, to be prudent and to ensure that applicants do not lose important priority rights if newly developed USPTO systems undergo significant “downtime” after they are first deployed, the USPTO will permit international applications, responses to irregularity notices and subsequent designations to be submitted on paper rather than through TEAS for a temporary period of time. Additionally, the USPTO believes that offering a paper-filing alternative will allow the public to build confidence in the electronic system, knowing that a paper backup system exists. This postponement of the effective date of portions of the regulation does not affect any substantive rights. The postponement of the effective date of portions of the regulation merely adds the alternative for paper filing during this initial transition period.

Postponement of Applicability Date of Specific Rules

Accordingly, the USPTO hereby suspends the requirement to comply with 37 CFR 7.11(a), 7.21(b), and 7.14(e), to the extent that they require transmission through TEAS. If there is a USPTO fee associated with a Madrid document that an applicant submits on paper, the applicant must include that fee together with the submission. However, if there is an international fee associated with that submission, the applicant may not pay that fee through the USPTO. Instead, the applicant should send that fee directly to the IB. Accordingly, the USPTO hereby temporarily suspends 37 CFR 7.7(a) and (b), to the extent that they allow an applicant to submit a fee charged by the IB through the USPTO.

The USPTO also temporarily suspends the applicability of 37 CFR 7.11(a)(9), to the extent that it requires that international application fees for all classes and the fees for all designated Contracting Parties identified in an international application be paid at the time of submission, and 37 CFR 7.21(b)(7), to the extent that it requires that all international fees for a subsequent designation be paid at the time of submission. A party submitting an international application on paper must pay the USPTO certification fee at the time of submission, but must pay the international fees directly to the IB. A party submitting a subsequent designation on paper must pay the USPTO transmittal fee at the time of submission, but must pay the international fees directly to the IB. That party may pay the international fees to the IB either before or after submission of the international application or subsequent designation.

Applicants wishing to make Madrid submissions on paper should use forms provided by the IB for that purpose. These forms may be downloaded from the IB Web site, http://www.wipo.int/madrid/en/.

Finally, with respect solely to international applications, subsequent designations, and responses to notices of irregularities, the USPTO hereby temporarily waives the requirement of 37 CFR 2.190(a) that all trademark-related documents submitted on paper must be mailed to the USPTO address at 2900 Crystal Drive, Arlington, Virginia 22202-3514. Instead, the USPTO hereby announces that until the termination of this waiver of the rules, Madrid submissions should be mailed to the following address: Commissioner for Trademarks, PO Box 16471, Arlington, Virginia 22215-1471, Attn: MPU.

Please note that any trademark-related correspondence other than international applications, subsequent designations, and responses to irregularity notices that is sent to this address will not be accepted, and will be returned to the sender.

If a submission mailed to the above address pursuant to this notice is delivered by the Express Mail service of the United States Postal Service, the USPTO will deem that the date of receipt of the submission in the USPTO is the date the submission was deposited as Express Mail, provided that the submitter complies with the requirements set forth in 37 CFR 2.198. As a result, the USPTO temporarily waives the exceptions set forth in 37 CFR 2.198(a)(1) to the extent that their application is inconsistent with this Notice.

Please note that all waivers and suspensions announced herein apply only to Madrid-related documents submitted on paper. The waivers and suspensions will be ended on January 2, 2004. A notice announcing any extension of the postponement to the effective date of these provisions will be issued at least ten days before the extension commences.

Dated: October 17, 2003. James E. Rogan,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

References

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