After we certify your international application, we forward it to the International Bureau. At this stage, the International Bureau reviews it for administrative requirements.
If the International Bureau finds problems with your international application, they notify both you and the USPTO of the irregularity. Depending on the issue, you may need to act quickly to keep your international application on track.
Instructions for responding
Many notices of irregularity require a response that you must file through the USPTO using the Response to a Notice of Irregularity form. In some cases, you don't need to file a response through the USPTO but must pay fees directly to WIPO before the deadline in the notice.
We can’t advise you on how to respond to specific irregularities. You can contact WIPO Madrid Customer Service with questions about requirements in your notice of irregularity, including questions about fee amounts. The notice of irregularity will tell you if you need to resolve the issues raised in the notice with the International Bureau directly or if you can file a response through the USPTO.
The deadline listed on your notice of irregularity is the last day the International Bureau will accept your response. If you must file your response through the USPTO, we strongly encourage you to submit your response at least one month before this deadline. In most cases, we must review your response for errors. If we find any, you must correct them before we can forward your response to the International Bureau. This will add time to the process.
Meeting the International Bureau’s deadline preserves any priority filing date claims in your international application. We won't review or forward your response if we receive it after the International Bureau’s deadline, nor do we have the authority to waive or extend their deadlines.
How to respond to common issues
Some common irregularities are with:
- Classification of goods and services
- Indication of goods and services
- Insufficient fees
We review your response to the notice of irregularity before forwarding it to the International Bureau if it involves the identification of goods and services. If the irregularity is about something else, we forward your response to the International Bureau without reviewing.
Classification of goods and services
If the International Bureau determines your goods and services aren't in the appropriate international classes, they propose changes and notify both you and the USPTO. If the proposal requires you to add a class to the international application, you must pay additional fees directly to WIPO by the deadline or your international application will be abandoned.
If no additional fees are required and you agree with the International Bureau’s classification proposal, you don’t need to respond to the notice of irregularity. The International Bureau will register your trademark with their proposed classification.
Responding to this irregularity
If you disagree with the International Bureau’s proposal or want to resolve the irregularity differently, you must submit a response through the USPTO.
For example, if the proposal requires you to add a new class, you can instead withdraw one or more of the goods and services that need to be reclassified, or you could revise the description of the goods and services to clarify that they belong in the class you designated. This allows you to avoid adding a new class and paying an additional fee.
Your response can’t exceed the current scope of the goods and services in your basic application or registration as listed on the date of our review, not the date you filed it. If the identification of goods and services has been restricted, or classes of goods and services have been deleted from your basic application or registration, you can’t later include them in your proposed response to the irregularity.
We’ll review your response to make sure the new listing of goods and services is still covered by the goods and services in your basic application or registration and, if it’s acceptable, forward it to the International Bureau. If your response lists goods and services not covered by your basic application or registration, we'll notify you about what you must correct.
Submit your corrected response to us promptly so that we have time to review it and transmit it to the International Bureau before your deadline. The International Bureau will review your response and notify you of its decision and whether you need to take further action.
Indication of goods and services
During examination of your international application, the International Bureau might decide a term in your list of goods and services is unacceptable because it’s:
- Too vague for the purpose of classification
- Incomprehensible, hard to understand
- Linguistically incorrect, has spelling or grammar errors
The International Bureau will suggest a substitution or deletion, but you should review it carefully, because sometimes the suggestion exceeds the scope of your international application.
Responding to this irregularity
You must submit your response through the USPTO. In your response, you can either accept the International Bureau's suggestion, or correct the list of goods and services. In either case, your corrected list of goods and services must be accurate and inside the scope of your basic application or registration. We’ll review your response and, if it’s acceptable, forward it to the International Bureau.
If fees are required, you must pay them directly to WIPO by the deadline or your application will be abandoned. If you don’t respond to this type of irregularity but pay any required fees within the response deadline, the International Bureau will include the questionable term in the international registration as listed in your application with a notation. Each designated country will receive this notation in the request for extension of protection they receive from the International Bureau.
Your notice may require you to pay additional fees, or you may need to pay fees based on what you change in your response. If this happens, you must pay the additional fees directly to WIPO or your application will be abandoned in its entirety. You can't pay these fees through the USPTO. The notice of irregularity will provide information about how to submit your payment.