For the next week, an extra hour available for WIPO filings

dstExperienced filers in the Patent Cooperation Treaty, Madrid Protocol, and Hague Agreement systems (utility patents, trademarks, and industrial designs) know that it is important to keep always in mind when midnight will arrive in Geneva, where WIPO is located.

For a PCT filer, this matters because to get a same-day filing date, a PCT application being filed in RO/IB will need to be filed by 4 PM Mountain Time.  The same is true for filing an Article 19 amendment.  The same is true if you are using ePCT to file a Demand and Article 34 amendment.

For a Madrid filer, this matters among other things for the payment of decade renewal fees.

For a Hague filer, this matters for the the filing of an international design application at the IB.

The point of today’s post is that starting today, and for the next week, you get an extra hour to get a same-day filing date.  The reason is that Europe and the US carry out their daylight saving time transitions on different days that are a week apart.

This means that you could file as late as 5 PM Mountain Time (instead of the usual 4 PM) and still get a same-day filing date.

Things will return to normal a week from now, on November 6, 2016.

Brunei joins Madrid Protocol

bruneiBrunei has joined Madrid Protocol.

Brunei deposited its instrument of accession today, October 6, 2016.

The Protocol will enter into force for the purposes of Brunei on January 6, 2017.

This brings the number of members of the Madrid system to 98.

The two-letter code for Brunei is BN.

Algeria joins Madrid Protocol

This is a very important milestone for the Madrid Protocol.

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Defective TEAS form — section 71 and 15

The TEAS system offers an online form called “Combined declaration of use & incontestability under Sections 71 & 15“.  It turns out the form is defective — it sometimes forces the user to pay a grace period fee even if the would-be filing is not within the grace period.  There are two possible workarounds. Continue reading

Amending a US application that Is the basis of an IR?

A member of the E-Trademarks listserv asked this:

I have never filed via the Madrid Protocol, but I am considering filing one based on a recently filed US application. If the listing of goods in the US application are amended, are the IR and the subsequent designations automatically amended so that the goods are always the same? It would seem weird to have an IR and national designations with a different listing of goods.

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How Madrid ten-year trademark renewals work

US trademark practitioners are just now starting to get asked by foreign clients to do a kimadrid-ren-4nd of filing that never existed before about September of 2014.  The filing is a ten-year Statement of Use for a US Madrid registration.  This blog article tries to explain such filings and how they are similar to and different from other US trademark maintenance and renewal filings.  If you already understand everything about the figure at right, you can skip reading this blog article!

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The two receptions that you need to attend in San Diego in May

Will you be in San Diego at the time of the INTA annual meeting?  If so, there are two receptions that you won’t want to miss.

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Clever associate’s trademark advocacy secret weapon revealed

It’s a few months ago that I looked at one of our trademark cases — a Madrid Protocol case that had come in from foreign counsel on behalf of a foreign applicant — and pronounced to anyone who would listen that the case was never going to be approved for publication.  I was convinced that the Examining Attorney’s grounds for refusal were impossible to overcome.   I figured it was only a matter of time before it would go abandoned.  I figured the sole remaining necessary lawyering skill would be communicating a gentle let-down to foreign counsel — an exercise in expectations management.

One of my associates was handling the case.  The other day I was astonished to learn that my associate had completely overcome the refusal.  I asked her how she accomplished this seemingly impossible result.  She smiled and explained what had happened.

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The importance of warning clients about unscrupulous fee requests

We all need to redouble our efforts to warn clients about unscrupulous fee requests.  Four recent examples reminded me how insidious these fee requests can be.  The first one asks me to wire $2322.30 to a bank in Slovakia.  The second one asks me to wire $2738 to a bank in Czech Republic.  The third one asks me to wire $2548.25 (where do they get these amounts?) to a bank in Slovakia.  And the fourth asks me to wire $2327 to a bank in Czech Republic.

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