(463) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2 and 7
[Docket No. 2003-T-010]
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; suspension of applicability dates.
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
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.
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) is 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 firstname.lastname@example.org.
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
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(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
log=li. 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 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.
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://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=
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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.
October 17, 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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