[Federal Register Volume 68, Number 247 (Wednesday, December 24, 2003)]
[Rules and Regulations]
[Pages 74479-74481]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-31698]


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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 [email protected].

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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