Category: Trademarks

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Why you probably can’t send international faxes any more

A couple of weeks ago I had the great honor to visit at WIPO with the heads of some of the PCT processing teams.  These are the people at the International Bureau who interact with callers (applicants and patent practitioners) who have questions and problems relating to PCT.  One of the things that they mentioned to me, that I found puzzling when I first heard it, is that in recent months they have received ever-increasing numbers of complaints from people who call to report that they try to send faxes to the International Bureau and are unable to do so.  Upon reflection I now realize the likely cause of this problem.  And it is definitely not that there is some recent malfunction in WIPO’s fax machines.

Continue reading “Why you probably can’t send international faxes any more”

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Thailand joins Madrid Protocol

(Left to right) Ms. Sunanta Kangvalkulkij, Ambassador, Permanent Representative, Permanent Mission of Thailand to the World Trade Organization; Mr. Thosapone Dansuputra, Director General, Department of Intellectual Property; Ms. Wiboonlasana Ruamraksa, Permanent Secretary, Ministry of Commerce; Mr. Francis Gurry (photo: WIPO/Berrod)

On August 7, 2017, Thailand deposited its instrument of accession to the Madrid Protocol at the International Bureau of the World Intellectual Property Organization.  The Madrid Protocol will thus enter into force for Thailand on November 7, 2017. Continue reading “Thailand joins Madrid Protocol”

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A new reason to consider Madrid Protocol


The reader will be familiar with the many factors to be explained to one’s clients to help them decide whether to use Madrid Protocol on the one hand, or ordinary Paris Convention national filings on the other hand, to accomplish foreign filings.  Now, starting July 1, 2017, there will be one more factor to be taken into account.  Madrid Protocol will have a convenient mechanism by which the holder of an International Registration may request a recording to introduce an indication concerning its legal nature or to change that indication once it has been recorded. Continue reading “A new reason to consider Madrid Protocol”

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Meet the Bloggers XIII was a success

Meet the Bloggers XIII
(click to enlarge)
Meet the Bloggers XIII
(click to enlarge)

Meet the Bloggers XIII was a success!  The reception was on the beach in Barcelona.  The surf crashed on the sand.  Cruise ships and sailboats passed by on the ocean.  Tapas and beverages were consumed.  Over a hundred people attended.

One more event to attend and then you can feel you have accomplished nearly all of your INTA goals.  Yes, the e-Trademarks listserv reception lies ahead, tomorrow (Tuesday) evening.

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The two receptions to attend in Barcelona redux

Hopefully everybody who is in Barcelona for the INTA meeting already has their ribbons to attend the two must-attend receptions:

The weather in Barcelona is delightful just now.  MTB XIII will be at Xup Xup which is a beachfront venue.  The e-Trademarks reception will be at Opera Samfina which is in the middle of La Rambla.

See you there!

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Post-reg is slow

(Updated to include screen shot from USPTO’s dashboard, thanks to Ken Boone.)

The post-registration branch at the USPTO — the group of people whose job it is to look at a six-year renewal or a ten-year renewal — sure is slow sometimes.

We have one where we filed our renewal on March 22, 2017.  The post-reg people accepted it on May 9, 2017 (which is what prompted today’s blog post).  Actually that was only six or seven weeks which was faster than many cases.  We had one recently that took almost five months to get looked at.  We filed the renewal on October 18, 2016 and it did not get looked at until April 4, 2017.

The problem of course is that if post-reg takes five months to look at a renewal, and if post-reg finds some real or imagined flaw in the renewal papers, then there is precious little time to try to straighten things out.  In this case with the delay of almost five months, the post-reg person bounced the renewal because of a flaw that was merely imagined, not real.  We argued with the post-reg person, but we had our backs against the wall because the renewal window was going to expire in just a few days.  Fortunately the post-reg person withdrew the bounce.  But still this forced the client to endure uncertainty for almost five months, for no good reason.

It sure will be good when the USPTO gets the post-reg branch back to normal.

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USPTO provides a nice user feature in EPAS and ETAS

Those who, like me, often record assignments at the USPTO are accustomed to the steps that are required to e-file in EPAS (electronic patent assignment system) and ETAS (electronic trademark assignment system).  The steps include identifying the assignor and the assignee, and then comes the step of entering the properties for which the assignment is being recorded.   I am delighted to be able to report that USPTO has made this very user friendly for an assignment that applies to many properties. Continue reading “USPTO provides a nice user feature in EPAS and ETAS”