(404) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2 and 7
RIN 0651-AB0045
Modification to Temporary Postponement of
Electronic Filing and Payment Rules for
Certain Madrid Protocol-Related Rules
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule; modification to suspension of applicability dates.
SUMMARY: The United States Patent and Trademark Office
(USPTO) is modifying a temporary postponement of 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. That postponement was announced in a document
published in the Federal Register on October 24, 2003.
The USPTO is also modifying a temporary suspension, announced in the
same Federal Register document, of 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.
The temporary postponements and the temporary suspensions of the Rules
of Practice, as well as the modifications to these postponements and
suspensions that are announced herein, are in effect from November 2,
2003, to January 2, 2004. If it becomes necessary to extend the
suspensions and postponements, and/or the modifications thereto, the
USPTO will issue a notice announcing these extensions at least 10
business days before the extensions commence.
The modifications announced herein are procedural in nature and do not
affect any substantive rights.
DATES: The applicability date for regulations at 37
CFR 2.190(a), 2.198(a)(1), 7.7(a) and (b), 7.11(a) introductory text
and (a)(9), 7.14(e), 7.21(b) introductory text and (b)(7) remains
suspended from November 2, 2003, to January 2, 2004.
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
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international application) be submitted through TEAS; and 37 CFR
7.14(e) requires that where 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.
Madrid Submissions Must Be Prepared Using Paper
On October 24, 2003, the USPTO published a notice in which it
announced that it would 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. The
notice accordingly postponed the applicability of 37 CFR 7.11(a),
7.21(b), and 7.14(e), to the extent that those provisions require
transmission through TEAS. The notice further provided that this
postponement would remain in effect until January 2, 2004, and that if
the postponement was extended beyond January 2, 2004, a notice
announcing such an extension would be published at least ten days
before the extension commenced.
The postponement remains in effect, but is modified. The notice of the
postponement provided that applicants could make their submission
either on paper or through TEAS. However, certain technical
difficulties will delay the deployment of those TEAS forms that will be
used for Madrid submissions until some time after November 2, 2003.
Therefore, the USPTO hereby announces that all Madrid submissions must
be made on paper, until such time as the TEAS forms are posted on the
USPTO web site.
The USPTO will issue a notice announcing the posting of the TEAS forms
at least five days before such posting occurs.
If the TEAS forms are posted while the postponement of the
applicability dates of 37 CFR 7.11(a), 7.21(b), and 7.14(e) is still in
effect, then notwithstanding the modifications to the postponements
that are announced herein, applicants will be able to file
international applications, responses to irregularity notices, and
subsequent designations either on paper or through TEAS. Under any
circumstances, there will be a transition period during which the USPTO
will accept both electronic and paper submissions.
International Fees Must Be Paid Directly to the IB
In addition to requiring that certain submissions that are made
to the USPTO in connection with the Madrid Protocol be transmitted
using TEAS, the Rules of Practice that take effect on November 2, 2003,
also require that international application fees be paid at the time of
submission. However, with respect to Madrid submissions that are to be
made on paper, the notice of October 24, 2003, temporarily suspended
the applicability of those requirements. Thus, the notice suspended 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. Likewise, the notice suspended 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.
The notice of October 24, 2003, further provided that (1) applicants
who file Madrid submissions on paper must pay the USPTO certification
fee at the time of submission, but must pay the international fees
directly to the IB, and that (2) applicants who submit 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.
Additionally, the notice provided that applicants may pay the
international fees to the IB either before or after submission of the
international application or subsequent designation.
All provisions of the notice of October 24, 2003, that pertain to
payment of fees remain in effect. However, the following is noted:
these provisions of the notice of October 24, 2003, apply in cases
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where Madrid submissions are made using paper. Pursuant to the present
notice, all Madrid submissions must be made on paper. Hence, the
provisions of the notice of October 24, 2003, regarding the payment of
fees now apply in all cases where Madrid submissions are made.
If the TEAS forms are posted while the postponement of the effective
dates of 37 CFR 7.11(a)(9) and 7.21(b)(7) remains in effect, then
applicants who elect to use those forms will pay the international fees
(1) at the time of submission, and (2) through the USPTO.
Applicants Should Utilize Madrid Forms Provided by the IB
Applicants making Madrid submissions 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/. Please note that
the IB will not process paper submissions that are not prepared using
IB forms.
Applicants Should Mail Madrid Submissions to a Designated Address
Pursuant to 37 CFR 2.190(a), all trademark-related documents
submitted on paper must be mailed to the USPTO address at 2900 Crystal
Drive, Arlington, Virginia 22202-3514. However, the notice of October
24, 2003, waived that rule with respect to international applications,
subsequent designations, and responses to notices of irregularities
that are filed on paper. The notice further provided that all Madrid
submissions made on paper should be mailed to the following address:
Commissioner for Trademarks, PO Box 16471, Arlington, Virginia
22215-1471, Attn: MPU.
The limited waiver of 37 CFR 2.190(a) remains in effect. However, the
following is noted: pursuant to the notice of October 24, 2003, the
waiver, and the instruction to utilize the above-identified address,
applied to Madrid submissions made on paper. Pursuant to the present
notice, all Madrid submissions must be made on paper. Hence, the
provisions of the notice of October 24, 2003, regarding the USPTO
mailing address apply to all Madrid submissions.
Please note that any trademark-related correspondence other than
international applications, subsequent designations, and responses to
irregularity notices that is sent to the above-identified address will
not be accepted, and will be returned to the sender.
If a submission mailed to the above address pursuant to this notice and
to the Notice of October 24, 2003, 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.
October 31, 2003 JAMES E. ROGAN
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
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