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USPTO Madrid Protocol Seminar on Tips for Filing International Applications and Maintaining International Registrations MPU Review of International Application Felicia Battle, MPU Supervisory Specialist. October 23, 2013. A. MPU Responsibilities.

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USPTO Madrid Protocol Seminar onTips for Filing International Applications and Maintaining International RegistrationsMPU Review of International ApplicationFelicia Battle, MPU Supervisory Specialist

October 23, 2013

a mpu responsibilities
A. MPU Responsibilities
  • Madrid Processing Unit (MPU) consists of 5trained Specialists and 1 Supervisor.
  • MPU Specialists are responsible for the following:
    • International Applications (Office of Origin):
      • Examination of international applications
      • Responses to irregularity notices
      • Subsequent designations
      • Ceasing of effect notices to the IB
      • Any miscellaneous documents
a mpu responsibilities cont d
A. MPU Responsibilities (cont’d)
  • Extension of Protections (as Designated Contracting Party):
    • Provisional refusals (Office actions)
    • Correction notices from the IB
    • Limitation notices from the IB
    • Restriction notices from the IB
    • Final decision notices (confirmation or withdrawal of a provisional refusal) to the IB
    • Requests for transformation from the holder
    • Requests for replacement from the holder
    • Invalidations
a mpu responsibilities cont d1
A. MPU Responsibilities (cont’d)
  • MPU Supervisor is the primary contact for the following:
    • 400 examining attorneys
    • Post Registration Division
    • WIPO/IB
    • Finance Office (USPTO)
    • Finance Office (WIPO)
    • IT staff (USPTO)
    • Applicants, attorneys, representatives, etc.
    • Colleagues from international community
    • Petitions and Policy staff attorneys
    • Law office support staff
c what happens after international application is filed
C. What happens afterInternational Application is filed?
  • MPU examines each international application (IA) and compares the information to each basic application/registration claimed to determine if requirements have been met.
  • MPU will either certify or deny the IA:
    • MPU forwards a certified application to the IB for further examination (either electronically or via Express Mail courier).

OR

    • MPU denies certification of an applications and sends the applicant a letter setting forth the reasons for the denial.
      • Paper IAs are returned to the applicant.
  • MPU does not retain any paper. All documents are scanned into the USPTO database and either forwarded to the IB or returned to the applicant (if denied).

TMEP §1902.03.

d certification of international application
D. Certification of International Application
  • Generally, IAs are examined within 2 business days.
  • In light of strict deadlines, MPU’s decisions are final.
    • A Petition to the Director may be filed for a denied IA.
e petition to review denial of certification
E. Petition to Review Denial of Certification
  • If certification of the IA is denied, applicant cannot:
    • respond to the MPU’s denial or
    • amend the IA
    • Applicant may file a petition to the Director with the Petition’s Office.
    • TEASi electronic petition form is available.
    • MPU has a Staff Attorney liaison.
e petition to review denial of certification cont d
E. Petition to Review Denial of Certification (cont’d)
  • Petitions regarding denials of IAs are handled in an expedited manner in order to comply with requirements of Common Regulations.
  • Once applicant has provided the USPTO with a satisfactory IA, the petition will be granted and certification granted.
e petition to review denial of certification cont d1
E. Petition to Review Denial of Certification (cont’d)
  • A petition is a request to the Director of the USPTO to review the decision made by MPU and exercise supervisory authority to permit the applicant to take action not otherwise permitted.
    • Example: to submit a correction of a typographical error in the name of the applicant of the IA.
e petition to review denial of certification cont d2
E. Petition to Review Denial of Certification (cont’d)

Petition Filing Requirements

  • Verified statement of facts and the relief requested, 37 C.F.R. §2.146(c):
    • Explanation of error i.e. why incorrect information was submitted;
    • Declaration;
    • Petition fee.
  • If IA needs to be corrected, a substitute MM2 form must be attached to the petition.
  • If the IA fees were refunded, include authorization to re-charge fees to a deposit account or email a credit card authorization form to [email protected] and indicate that in the petition.
e petition to review denial of certification cont d3
E. Petition to Review Denial of Certification (cont’d)
  • If denial of certification was due to USPTO error, the petition will be granted and petition fee refunded.
  • In all other cases, whether petition is granted or denied, the petition fee is not refunded, unless petition is withdrawn before a decision issues.
  • The petition should be filed immediately after notification of denial.

TMEP §1902.03(a).

e petition to review denial of certification cont d4
E. Petition to Review Denial of Certification (cont’d)
  • If the IA is not certified within 2 months of the date of receipt of the IA in the USPTO, the date of international registration (IR) will be affected.

Article 3(4); Common Reg. 15.

f transmitting information to and from the ib
F. Transmitting Information To and From the IB
  • USPTO sends transactions to the IB every day in a batch file (not individually).
    • USPTO sends fees to the IB once a week.
  • USPTO receives transactions from the IB once week (every Thursday).
    • USPTO receives fees from the IB once a month.
g did you know
G. Did You Know?
  • TMEP Ch. 1900 is about the Madrid Protocol:
    • Section 1902 is for filing IAs
    • Section 1904 is for requests for extension of protection to the US
  • Separate rules for USPTO and for IB:
    • 37 C.F.R. §7.11 through §7.14 govern MPU actions as they relate to IAs.
    • Chapter II of the Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol relates to the international procedure.
  • Basic applications/registrations should be reviewed via TSDR for accuracy before submitting an IA.
h irregularities issued by the ib
H. Irregularities Issued by the IB
  • Upon examination of the IA, the IB may issue an irregularity if there are any deficiencies.
    • Certain irregularities are corrected by the USPTO. TMEP §1902.07(a).
    • Others are corrected by the applicant. TMEP §1902.07(b).
i irregularities that must be remedied by uspto
I. Irregularities That Must BeRemedied by USPTO
  • Receipt date at the USPTO not provided
  • Application not signed by USPTO
  • Certification by USPTO is defective
  • Omission of date and number of basic application or registration
  • Insufficient identification of applicant
  • Irregularities relating to the entitlement of the applicant to file an IA
i irregularities that must be remedied by applicant
I. Irregularities That Must BeRemedied by Applicant
  • Goods/services are indefinite or too vague
  • Classification of goods/services
  • Insufficient information about the applicant’s representative
  • Missing transliteration
  • Insufficient information about a priority claim
  • Unclear reproduction of the mark
  • Insufficient fees
  • Slide updated 10/24/13.
i irregularities that must be remedied by applicant cont d
I. Irregularities That Must BeRemedied by Applicant (cont’d)
  • Classification of goods/services:
    • Goods/services not in the appropriate classes or not classified (Rule 12).
  • Indication of goods/services too vague for the purposes of classification or is incomprehensible or is linguistically incorrect (Rule 13).
  • Slide updated 10/24/13.
j applicant s response to irregularity
J. Applicant’s Response to Irregularity
  • Applicant may file response with the USPTO and the USPTO will forward to the IB before the IB’s response deadline. 37 C.F.R. §7.14(e).
  • Response may be filed electronically or on paper:
    • Strongly recommend using TEASi form. IB does not have a form.
  • Receipt of response in the USPTO does not meet the requirement that the response be received by the IB before the response deadline.
  • Applicant should file response with the USPTO as soon as possible, and at least 1 month before the end of the response period.
    • USPTO will not process a response received after the response deadline.

TMEP §1902.07(f).

j applicant s response to irregularity cont d
J. Applicant’s Response to Irregularity (cont’d)
  • MPU will review applicant’s response to ensure that the goods/services identified in the response are within the scope of the basic goods/services at the time the response is filed.
  • If basic goods/services were amended since the date the IA was filed, the goods/services in the response must be within the scope of the amended goods/services.
  • If the goods/services in the response exceed the scope of the basic goods/services as amended, MPU will notify applicant that the proposed amendment does not conform to the basic goods/services and that the response will not be forwarded to the IB.
j applicant s response to irregularity cont d1
J. Applicant’s Response to Irregularity (cont’d)
  • If time remains in the IB’s response period, applicant may submit a corrected response.
    • If the goods/services in the corrected response do not exceed the scope of the basic goods/services as amended, and the IB’s response period has not expired, MPU will forward the response to the IB.
j applicant s response to irregularity cont d2
J. Applicant’s Response to Irregularity (cont’d)
  • If no proposal acceptable to the IB for remedying the irregularity is made within 3 months, and all other requirements have been met, the IB will either:
    • include the term in the IR with an indication that the IB considers the term to be unacceptable, provided that the class of the vague term was specified in the application; or
    • if the class was not specified, delete the term and notify both the USPTO and the applicant accordingly.

Common Reg. 13(2)(b).

k international registration date
K. International Registration Date
  • If the IB receives the IA within 2 months of the date of receipt by the USPTO, the IR date is the date of receipt at the USPTO.
  • If priority is claimed in an IA and the IA is certified within 2 months, the IB will honor the priority claim.
    • Example: If the IA is filed on the last day of the priority period, the USPTO will have 2 months to forward the IA to the IB.

TMEP §§1902.04 and 1902.05.

l withdrawal of international application
L. Withdrawal of International Application
  • Before certification:
    • Email MPU with request signed by a person with authority to bind the applicant.
    • Certification fees will not be refunded. All international fees will be refunded.
  • If pending at the IB:
    • Email MPU with request signed by a person with authority to bind the applicant. MPU will forward request to the IB.
    • The IB will partially refund their fee. All international fees will be refunded.
m mpu contact information
M. MPU Contact Information

MPU Office Hours: 8:30 am – 5:00 pm EST

A MPU Specialist is on duty to answer your calls.

MPU Email Address: [email protected]

MPU Supervisory Specialist: Felicia [email protected](571) 272-9559

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