USPTO urged to relax its Madrid Protocol implementation rules

The US Patent and Trademark Office (PTO) has posted the comments to its proposed regulations for implementing the Madrid Protocol, due to come into force in the United States in November. The comments came from trade organizations such as the American Bar Association, the International Trademark Association, the Intellectual Property Owners Association and the American Intellectual Property Lawyers Association, as well as practitioners in law firms and in corporate legal departments.

The most commonly cited comment concerns (i) proposed Rule 2.146(c)(i) on how often an application or registration must be monitored in order to satisfy the requirement of due diligence, and (ii) related proposed Rule 2.66(a) on the timing for reviving an abandoned application. As proposed, applicants would have to monitor applications every six months and file petitions to revive abandoned applications within two months of the notice of abandonment. With few exceptions, commenters complained that this would cause injustice where the notice of abandonment is lost and thus, the applicant does not learn of the abandonment within the set time frame. The commenters urged the PTO to consider other options, such as applying the stricter due diligence period only to requests for extension of protection under the Madrid Protocol and not to basic applications filed directly with the PTO.

Another common complaint concerns proposed Rule 2.102, which would shorten the opposition period to a maximum of 120 days. Most commenters recognized that the Madrid Protocol's requirements that the World Intellectual Property Organization (WIPO) be notified of oppositions within a certain time necessitated a change to the current practice of allowing potentially unlimited opposition periods. Commenters suggested that 150 to 180 days would still serve the protocol's requirements while affording parties ample time to settle disputes prior to filing an opposition. One organization suggested that the limitation on the opposition period should apply only to requests for extension under the protocol and not to basic applications filed directly with the PTO.

Other noteworthy comments pointed to rules that would prevent PTO certification of an application for an international registration due to minor discrepancies and deficiencies (proposed Rules 7.11 and 7.13). Commenters suggested that applicants be afforded the opportunity to amend their applications, rather than forfeit them. Commenters also suggested that requests for extensions of protection include a means for designating US counsel so as to avoid the delay that would result from sending Office Actions (such as non-final registration refusals) only to WIPO and the applicant.

Given the near unanimity of some of the comments, some changes to the proposed rules seem likely.

For background information on the proposed PTO rules, see USPTO proposes new rules to implement Madrid Protocol.

Karin Segall, Darby & Darby, New York

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