[Federal Register Volume 68, Number 206 (Friday, October 24, 2003)]
[Rules and Regulations]
[Pages 60850-60851]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-26772]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. 2003-T-010]
RIN 0651-AB45


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.

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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.

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 [email protected].

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 
that

[[Page 60851]]

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

0
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.
[FR Doc. 03-26772 Filed 10-23-03; 8:45 am]
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