What is "one-click" filing?

Summary: the USPTO is planning to make it extremely easy for MP filers who want to file an application that is identical to the basic application. The USPTO's efforts will let such filers do a "one-click" filing that will pre-populate the MP application. Such a filing will be "certified" in an automatic way by the USPTO and passed immediately to the International Bureau. The result will be a time savings for the applicant (it will get published in the Register sooner and passed to designated countries sooner) and will nearly eliminate the risk of a refusal to certify.

To file a Madrid Protocol ("MP") international trademark application in the US, it is necessary that the would-be applicant have previously filed in the US a so-called "basic application" that is still pending or that has matured into a so-called "basic registration" in the US. The MP application is then "based on" the basic application or registration.

After an MP application has been filed, the Madrid Protocol requires the Office of Origin (e.g. the USPTO) to study each MP application filed therein to determine whether it can "certify" the application and pass it along to WIPO. This study includes checking to see whether:

• the applicant named in the MP application is the same as the applicant named in the basic application or registration;
• the mark in the MP application is the same as in the basic application or registration;
• any indications (e.g. color, sound) in the MP application are the same as in the basic application or registration;
• the goods and services in the MP application are "covered by" the goods and servies in the basic application or registration.

If the Office of Origin finds these conditions to be satisfied, it "certifies" the application and passes it along to WIPO. If, however, the Office of Origin finds the MP application to be defective in any of these respects, it cannot "certify" the application and cannot pass it along to WIPO. The applicant, who will have paid $100 or $150 per class for this certification study, will lose those fees as the USPTO deems them non-refundable.

What can an applicant do to avoid the risk of flunking the "certification" study? Of course the smart thing to do would be to make absolutely sure that the text that is entered into the MP application is identical to the text that is already in the records of the Trademark Office (the TARR server). What comes to mind is the idea of painstakingly copying and pasting each field from the TARR record of the basic application or registration into the corresponding fields in the online MP application. In that way the applicant would be able to reduce to a minimum the risk of flunking the "certification" study.

The US Patent and Trademark Office (PTO) has responded to this situation by providing three different filing paths for MP applications. These paths are:

1. Using a "free-text" form in which the applicant can hand-type all of the fields of the form;
2. Using a "pre-populated" form in which the applicant specifies a single basic application or basic registration which is used to pre-populate some of the fields, and in which the user changes one or more of the pre-populated fields; or
3. Using a "pre-populated" form in which the applicant specifies a single basic application or basic registration which is used to pre-populate some of the fields, and in which the user refrains from changing any of the pre-populated fields.

With paths 1 and 2, the PTO must perform an independent review, by human beings, to determine whether to certify the application to the International Bureau. From the applicant's point of view a drawback of these paths is that the human review takes time. Yet another drawback of these paths is that the outcome is not certain -- there is always the possibility, however small, that the applicant may have made some mistake that will lead to a refusal to certify the application. Such a refusal puts the applicant in the position of having to file the MP application all over again, and having to pay the certification fees all over again.

But with path 3, the PTO does not need to do a human review. Instead, the PTO can simply program its computer system so that if the pre-populated fields remain unchanged, the PTO can certify the application in an automatic way and can submit the application electronically directly to the International Bureau. From the applicant's point of view this offers the benefit that there is no delay between the filing of the MP application with the PTO and the receipt of the certified application by the International Bureau. It offers a further benefit that there is no risk of the PTO refusing to certify the application.

You can see an actual mockup of the form selection page that the PTO is planning to offer on the eTeas web site.

What would remain to be provided by the applicant in a one-click application after the fields have been pre-populated? The applicant would need to be able to provide:

• an "applicant's reference," the WIPO identification code, and representative information.
• the "entitlement to file" information, namely the US nationality or domicile or the real and effective industrial or commercial establishment in the US.
• if applicable, a transliteration of the mark, a translation into English and French, and an indication that the words contained in the mark have no meaning.
• a selection of designated contracting parties.

The PTO's decision to provide such a "one-click" filing will work greatly to advantage of many filers.