T.M.E.P. § 1110.08
Dividing a ¤66(a) Application After Change of Ownership With Respect to Some But Not All of the Good

Executive summary:

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1110.08 Dividing a §66(a) Application After Change of Ownership With Respect to Some But Not All of the Goods

When ownership of an international registration changes with respect to some but not all of the goods/services for all designated Contracting Parties, the International Bureau of the World Intellectual Property Organization ("IB") will create a separate new international registration for the goods/services that have been transferred, and notify the USPTO accordingly. See the IB's Guide to International Registration, Para. B.II.65.01 (2004).

To obtain a certificate of registration in the name of the new owner for those goods/services that have been divided out, the new owner(s) must:

(1) File a request to divide with the USPTO pursuant to 37 C.F.R. 2.87, and

(2) Pay the required fee(s). A request to divide out one or more entire classes from the application must be accompanied by a fee for dividing the application, based on the number of new applications created by the division. No application filing fee is required when an entire class is divided out. A request to divide out some, but not all, of the goods or services in a class must be accompanied by the fee for dividing the application, based on the number of new applications created, and by an application filing fee for each new separate application created by the division. 37 C.F.R. §§2.6(a)(1), 2.6(a)(19), 2.87(a) and 2.87(b). See TMEP §1110.02.

When the IB notifies the USPTO of the division of an international registration resulting from a change of ownership with respect to some but not all of the goods or services, the USPTO will record the partial change of ownership in the Assignment Services Division, and divide out the assigned goods/services from the original (parent) application.

The USPTO will create a new (child) application serial number, and enter the information about the new application in its automated records. An Office action will issue in the child application requiring the applicant to file a request to divide and pay the required fee. If the owner of the child application fails to respond, the child application will be abandoned. The USPTO will not approve the child application for publication or registration until the assignee files a request to divide under 37 C.F.R. 2.87, and pays the required fee.

The USPTO will not divide a §66(a) application unless the IB notifies the USPTO that the international registration has been divided.

See TMEP §1615.02 regarding division of registered extensions of protection of international registrations, and TMEP §501.07 regarding assignment of extensions of protection.