TMEP 1401.09: Implementation of Changes to the Nice Agreement

October 2017 Edition of the TMEP

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1401.09    Implementation of Changes to the Nice Agreement

When a new edition/version of the Nice Agreement is issued, any changes apply only to applications filed on or after the effective date of the change. 37 C.F.R. §2.85(e)(1). In a §1 or §44 application filed before the effective date of the change, the examining attorney may offer the applicant the option of remaining in compliance with the edition/version of the Nice Agreement that was in effect on the application filing date or amending the application to comply with the requirements of the current edition. The applicant may, of its own accord, submit an amendment to its application that brings it into compliance with the current edition/version of the Nice Agreement. However, if an applicant chooses to comply with the current edition/version, the applicant must comply with the current edition/version for all the goods and/or services in the application, and the applicant must pay the fees for any added class(es) resulting from changes in the current edition/version. 37 C.F.R. §2.85(e)(2). An applicant cannot choose to have some goods or services comply with the current edition/version and other goods or services comply with the requirements of a previous edition/version.

In an application filed under §66(a), the IB controls the classification of the goods/services and the edition/version of the Nice Agreement utilized to classify the international registration on which the §66(a) application is based is never changed. Modifications of the classification of goods/services in the international registration will only be issued in the form of a correction by the IB and only in instances of objective error. See TMEP §§1904.02(b) and 1904.02(e)(i).