Madrid Protocol Tip: Calculating Office Action Deadlines

Don’t get tripped up when calculating the deadline within which to respond to an Office action issued in connection a Section 66(a) application at the U.S. Patent & Trademark Office. A response to an Office action issued by the USPTO is due within six months of the date on which the USPTO sent the action to the International Bureau (IB), not the date on which the refusal was processed by the IB.

You can find and confirm the date on which the USPTO sent the action to the International Bureau on the USPTO’s TARR database record for the subject application. It will likely look something like this:

2011-05-29 – Non-Final Action Mailed – Refusal Sent To IB

To be clear, the six-month deadline within which to respond to the Office action must be calculated from this date (using our example, from March 29, 2011). Not from the date the Office action was written, which is also typically noted in the TARR Prosecution History, looking like this:

2011-05-28 – Non-Final Action Written

I suppose that it’s not the worst thing in the world to mistakenly rely on the earlier date on which the Office action was written, as submitting a response within that time period will not result in a late filing. Things can get a little more confusing when you receive official notification of the provisional refusal of protection from WIPO. In this notification, you will see the following dates set forth:

Date on which the notification was sent to WIPO (mailing date): 29/05/2011

Date of receipt by WIPO: 29/05/2011

Date of notification by WIPO to the holder: 31/05/2011

This is where a little sloppiness or simple lack of sophisticated knowledge of the intricacies of the Madrid Protocol rules can really cause trouble. If an unsuspecting docketing clerk calculates the response deadline using the “Date of notification by WIPO to the holder” date (which is also the date indicated at the top of the letter on which the notification is sent), then there is a real danger that the applicable deadline will be missed.

In summary, be aware that a response to an Office action issued by the USPTO in connection with a Section 66(a) application is due within six months of the date on which the USPTO sent the action to the International Bureau (IB), not the date on which the refusal was processed by the IB, and not on the date of notification by WIPO to the holder (the applicant).

This entry was posted in Madrid Protocol, Practice Tips, Trademark Prosecution, Trademarks and tagged , , , . Bookmark the permalink.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s