TMEP 1902.07: Irregularities in International Application

October 2017 Edition of the TMEP

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1902.07    Irregularities in International Application

If an international application is unacceptable, the IB will notify both the applicant and the USPTO of the "irregularity."  Some types of irregularities must be remedied by the USPTO, some must be remedied by the applicant, and some may be remedied by either the applicant or the USPTO. See 37 C.F.R. §7.14 and Common Reg. 11.

The MPU trademark specialists review all incoming notices of irregularities.  If the irregularity is one that must be remedied by the USPTO ( see TMEP §1902.07(a)), the trademark specialist will respond to the notice and send the applicant a copy of the response.

If the irregularity is not one that must be remedied by the USPTO, the USPTO will note receipt of the notice of irregularity in its automated records, but will not take any other action.  The USPTO will not respond to the notice on behalf of the applicant.  The USPTO will not send a copy of the notice to the applicant, because the IB has already notified the applicant of the irregularity. A copy of the notice will be placed in the electronic record of the international application.  The notice can be reviewed using the Trademark Status and Document Retrieval ("TSDR") system on the USPTO website, by entering the control number assigned to the international application by the USPTO.

Applicants must file responses to irregularities in classification and identification of goods/services through the USPTO ( see TMEP §§1902.07(c) et seq.).  Fees for correcting irregularities in international applications must be paid directly to the IB in Swiss currency ( see TMEP §1902.07(b)(i)).  Responses to all other types of irregularities may be filed either directly at the IB or through the USPTO.

To be considered timely, responses to IB notices of irregularities must be received by the IB before the end of the response period set forth in the IB’s notice.  Receipt of the response in the USPTO does not satisfy this requirement.

For responses to IB notices of irregularities that may be submitted through the USPTO, applicants may file the response either through TEAS or on paper.  When correcting irregularities through the USPTO, the applicant should submit the response as soon as possible, and at least one month before the end of the response deadline set forth in the IB’s notice.  The USPTO will not process any response filed after the IB response deadline. 37 C.F.R. §7.14(e).  See TMEP §1902.07(f) regarding responses to notices of irregularity submitted through the USPTO.