T.M.E.P. § 1606.03
Time for Filing ¤9 Renewal Application

Executive summary:

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1606.03 Time for Filing §9 Renewal Application

The application for renewal must be filed within one year before the expiration of the registration, or within the six-month grace period after the expiration of the registration with an additional grace period surcharge. If no renewal application is filed before the end of the grace period, the registration will expire. 15 U.S.C. 1059(a); 37 C.F.R. 2.182. See TMEP §§1602 et seq. as to the term of a registration.

A renewal application may be filed on the anniversary dates of the statutory period.

Example: For a registration issued on November 5, 1998, an application for renewal may be filed as early as November 5, 2007, and as late as November 5, 2008, before entering the six-month grace period.

Under 37 C.F.R. 2.195(a)(2), a renewal application filed through TEAS is considered to have been filed on the date the USPTO receives the transmission, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. When the renewal application is submitted electronically, the USPTO immediately issues a confirmation of filing via e-mail that includes the date of receipt and a summary of the submission. This confirmation is evidence of filing should any question arise as to the filing date. See TMEP §301 for additional information about electronic filing.

An application for renewal of a registration filed on paper is considered timely if it is mailed or transmitted by the due date with a certificate of mailing or facsimile transmission in accordance with 37 C.F.R. 2.197. See TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.

1606.03(a) Premature Filing of §9 Renewal Application

A renewal application may not be filed before the period specified in §9 of the Act. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984). If an application for renewal is filed more than one year before the expiration date of the registration, the USPTO will advise the registrant: that the renewal application is premature; of the appropriate time period for filing a renewal application; that the fees submitted will be held; and that the registrant may file a new renewal application at the appropriate time or may request a refund at any time. The prematurely filed renewal application will be placed in the record for informational purposes only. A timely renewal application must be filed before the end of the grace period, or the registration will expire and the fees will be refunded. There is no deficiency surcharge for filing a timely substitute renewal application.