[Federal Register Volume 68, Number 216 (Friday, November 7, 2003)]
[Rules and Regulations]
[Pages 63019-63021]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-27917]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. 2003-T-030]
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.

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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

[[Page 63020]]

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 [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 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 
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

[[Page 63021]]

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.

    Dated: October 31, 2003.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 03-27917 Filed 11-6-03; 8:45 am]
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