TMEP 1902.08(a): USPTO Requirements

October 2017 Edition of the TMEP

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1902.08(a)    USPTO Requirements

The minimum requirements for a date of receipt of a subsequent designation in the USPTO are set forth in 37 C.F.R. §7.21(b), and are reproduced below:

  • The international registration number;
  • The serial number of the U.S. application and/or the registration number of the U.S. registration that formed the basis of the international registration;
  • The name and address of the holder of the international registration;
  • A statement that the holder is entitled to file a subsequent designation through the USPTO, specifying that the holder: (1) is a national of the United States; (2) has a domicile in the United States; or (3) has a real and effective industrial or commercial establishment in the United States.  If a holder’s address is not in the United States, the holder must provide the address of its United States domicile or establishment;
  • A list of goods/services that is identical to or narrower than the goods/services in the international registration;
  • A list of the Contracting Parties designated for an extension of protection;
  • The USPTO transmittal fee;
  • The international fees required by the IB, if the subsequent designation is filed through TEAS; and
  • An e-mail address for receipt of correspondence from the USPTO, if the subsequent designation is filed through TEAS.

See TMEP §1902.08(b) regarding the form for filing a subsequent designation through the USPTO, and TMEP §1902.08(c) regarding the international fees for a subsequent designation.

The USPTO does not certify subsequent designations.  If a subsequent designation meets the requirements set forth in 37 C.F.R. §7.21(b), the USPTO will forward it to the IB. 37 C.F.R. §7.21(c).  If the subsequent designation does not meet these requirements, the USPTO will not forward the subsequent designation, and will notify the holder of the reasons.  The USPTO transmittal fee is nonrefundable. 37 C.F.R. §7.21(d).

If the subsequent designation meets the requirements of Common Reg. 24, the IB will record it and notify both the USPTO and the holder of the recordation.  Common Reg. 24(8).  The subsequent designation will bear the date of receipt in the USPTO, provided that the IB receives it within two months of that date.  If the IB does not receive the subsequent designation within two months of the date of receipt in the USPTO, the subsequent designation will bear the date of receipt in the IB.  Common Reg. 24(6)(b).