[Federal Register: December 24, 2003 (Volume 68, Number 247)]
[Rules and Regulations]
[Page 74479-74481]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr24de03-14]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 2 and 7
[Docket No. 2003-T-030]
RIN 0651-AB45
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.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
extending, until November 2, 2004, 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. The
postponement was announced most recently in a document published in the
Federal Register on November 7, 2003.
The USPTO is also extending 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 extensions and postponements announced herein are procedural in
nature and do not affect any substantive rights.
Applicability Dates: January 2, 2004, until November 2, 2004. The
applicability dates for certain rules in 37 CFR parts 2 and 7,
published September 26, 2003, and thereafter suspended until January 4,
2004, are hereby further suspended until November 2, 2004.
DATES: The applicability date for regulations at 37 CFR 2.190(a),
[[Page 74480]]
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) is suspended until
November 2, 2004.
FOR FURTHER INFORMATION CONTACT: Ari Leifman, Office of the
Commissioner for Trademarks, by telephone at (703) 308-8910, extension
155, or by e-mail to ari.leifman@uspto.gov.
SUPPLEMENTARY INFORMATION:
Background
As set forth below, the USPTO is extending the postponement of the
applicability date of those regulations that require use of electronic
forms in connection with certain Madrid Protocol submissions until
November 2, 2004. Additionally, the USPTO is likewise extending to
November 2, 2004, the postponement of the applicability date of those
regulations that require that international fees be paid concurrently
with Madrid filings, and that these fees be paid through the USPTO.
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 took 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
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 document 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
document 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 document further provided that this
postponement would remain in effect until January 2, 2004.
Thereafter, on November 7, 2003, the USPTO published a second
document in which it announced that the postponement remained in effect
but was modified. The original postponement had provided that
applicants could make their submission either on paper or through TEAS.
However, the document of November 7, 2003, provided that all Madrid
submissions must be made on paper. That modification was necessary,
because technical difficulties had prevented the deployment of TEAS.
Some of these difficulties have not yet been resolved, and the TEAS
forms cannot yet be posted. Therefore, the postponement of the
applicability date of 37 CFR 7.11(a), 7.21(b), and 7.14(e) is hereby
extended to November 2, 2004.
If the TEAS forms are posted while the extended postponement of the
applicability dates of 37 CFR 7.11(a), 7.21(b), and 7.14(e) is still in
effect, then 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. This additional period will give
applicants the flexibility and the opportunity to become comfortable
with the electronic system when it becomes available.
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 took effect on November 2, 2003, also
require that international application fees be paid at the time of
submission. However, the document of November 7, 2003, temporarily
suspended the applicability of those requirements, until January 4,
2004. Thus, the document 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 document 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 document of November 7, 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.
These provisions of the document of November 7, 2003, are hereby
extended to November 2, 2004.
If the TEAS forms are posted while the postponement of the
applicability 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 a designated USPTO address.
However, the document of November 7, 2003, waived that rule with
respect to international applications, subsequent designations, and
responses to notices of irregularities that are filed on paper. The
document further provided that all Madrid submissions made on paper
should be mailed to the following address: Commissioner for Trademarks,
P.O. Box 16471, Arlington, Virginia 22215-1471, Attn: MPU.
[[Page 74481]]
The Limited Waiver of 37 CFR 2.190(a) Is Hereby Extended to November 2,
2004
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
document and to the document of November 7, 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.
Please note that the USPTO is not suspending those rules that
require electronic filing of extensions of time to oppose and notices
of opposition with the Trademark Trial and Appeal Board, namely 37 CFR
2.101(b)2 and 37 CFR 2.102(a)2.
Dated: December 18, 2003.
Jon W. Dudas,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office.
[FR Doc. 03-31698 Filed 12-23-03; 8:45 am]
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