USPTO proposes new rules to implement Madrid Protocol

The US Patent and Trademark Office (PTO) has published its proposed rules to implement the Madrid Protocol in the United States. The PTO is accepting comments on its proposals until May 27 and will be holding a public hearing in Arlington, Virginia on May 30.

The PTO proposes to add a Part 7 to its existing rules of practice. Part 7 would mainly establish which communications relating to international registrations may be handled through the PTO. For example, the original application for an international registration based on a US application or registration would have to be done through the PTO. However, a subsequent designation of additional countries to which the international registration will extend would be done through either the PTO or the World Intellectual Property Organization in Geneva. Part 7 would also regulate the fees payable to the PTO for processing international registrations.

The PTO also proposes to amend Part 2 of its existing practice rules, regulating the requirements for examination and registration, and proceedings before the Trademark Trial and Appeal Board. The PTO hopes to amend this part to bring its rules into compliance with the requirements of the Madrid Protocol. Proposed changes to Part 2 include the following:

  • Opposition to electronic applications (eg, request for extension of an international registration to the United States) would have to be filed electronically.

  • Opposition to all applications would be limited to 120 days.

  • Extension requests would be limited.

  • Petitions to revive applications that have been abandoned unintentionally would have to take place within two months of the notice of abandonment.

  • Pending applications would have to be monitored every six months (instead of the current one-year requirement).

For background information on the accession of the United States to the protocol, see Bush signs off on Madrid Protocol.

Karin Segall, Darby & Darby, New York

Unlock unlimited access to all WTR content