2024 Issue 4
1. General
Turning Ideas into Assets: Practical Insights for SMEs and Startups
Eureka! – you’ve just had an idea with promising business / income potential – perhaps it is for a new product, an innovative method of manufacture, a paint formulation, an eye-catching product shape, catchy song lyrics, or a distinctive and memorable brand name.
Once you’ve identified an idea with potential, capturing and protecting its value becomes necessary. However, many SMEs and startups often undervalue the significance of intellectual property (IP) management, perceiving it as both expensive and overly complicated. Yet, IP often accounts for a significant portion (in many cases, the majority) of the company’s worth. It is vital for securing competitive advantages and attracting investors.
After developing a great idea or a collection of inter-related ideas, it is important to promptly consider which aspects of those ideas can be protected, and just as importantly, in what ways others could legitimately compete with you.
For the purposes of this article, it will be assumed that the idea is new, inventive, innovative, original, or distinctive. However, it is always wise to verify that assumption before spending time, effort and money developing that idea further. Public disclosure or sale of an invention before filing a patent application can jeopardise the ability to secure patent or design protection. However, some countries offer a grace period for disclosures made shortly before the application is filed. If you believe you have a protectable invention, it is important to consult with a patent attorney as soon as possible for an evaluation.
On the other hand, copyright protection does not depend on novelty and can be secured regardless of prior public disclosure. It requires the work to be original. Similarly, trade marks can be protected if they are distinctive, regardless of how long the product has been sold.
Understanding IP and Managing IP in Your Business
IP can be protected in various ways, each suited to different types of innovations. Main forms of IP protection include patents, trade secrets, registered designs, copyright, trade marks, the tort of passing off, and plant variety rights. For patents, registered designs, trade marks, and plant variety rights, protection is achieved through a formal registration or grant system. In contrast, copyright protection is automatic in New Zealand and does not require registration.
For SMEs and startups, recognising the commercial value of IP is an important step in building a successful business. A strong IP portfolio not only protects your ideas but also becomes a valuable asset that can improve your company's appeal to venture capitalists and investors. These stakeholders often look for businesses with unique and protected innovations, as this can show a competitive edge and long-term growth potential. IP can also serve as a powerful tool in negotiations, whether for securing partnerships, licensing deals, or raising funds. In some cases, it can even be leveraged to secure financing, providing much-needed capital to grow your business.
Licensing strategies offer another key advantage. By licensing your IP to other companies, you can generate a steady revenue stream while avoiding the significant costs and risks associated with manufacturing and distribution. This approach is particularly beneficial for startups with limited resources, allowing them to enter new markets and scale their business more quickly. Additionally, a well-managed IP portfolio can act as a deterrent to competitors, reducing the risk of others copying or infringing upon your innovations. Beyond just protection, IP becomes a strategic asset that supports growth, strengthens market position, and increases the overall value of your business.
Managing IP effectively means taking a thoughtful and proactive approach to make sure your ideas are protected and their value is fully realised. You may want to start by helping your team understand why keeping sensitive information confidential is so important and the risks that come with careless disclosures, whether inside or outside the business. Regularly checking your IP portfolio might help you spot valuable assets that could benefit from further protection, like securing trade marks for your brand or patents for new developments. You may also find it useful to have someone in the business responsible for keeping an eye on IP matters to ensure nothing gets overlooked. Thinking about IP early on can save you a lot of trouble down the line. It lets you protect your ideas before they’re accidentally shared or made public, which might make them harder to protect. Plus, it gives you the chance to figure out which parts of your innovation have the most potential, so you can focus your resources on what really matters and set your business up for long-term success.
A resilient IP strategy must be an integral part of every stage of your business plan. Treating IP as an afterthought can result in missed opportunities and increased risks. By identifying protectable assets early on, conducting regular reviews of your IP portfolio, and exploring options such as registering patents or trade marks, SMEs and startups can protect their innovations and maximise their value. This also allows your business to remain competitive and well-positioned for growth.
By taking a proactive and strategic approach to IP management, SMEs and startups can unlock the full value of their innovations, protect their competitive edge, and secure a strong foundation for long-term success.
Are You Comfortable with the Patent Bargain?
“It is mine, I tell you. My own. My precious. Yes, my precious.” - Gollum in The Fellowship of the Ring by JRR Tolkien
If your idea is looking like a good candidate for patent protection in most instances that protection is usually worth pursuing. Trade secrets can maintain a competitive advantage indefinitely, provided confidentiality is preserved. Unless it is nearly impossible for someone to reproduce your invention through reverse engineering, patent protection may offer greater security than relying on trade secrets.
However, obtaining a patent involves the 'patent bargain', which requires you to disclose your invention in exchange for up to 20 years of protection in most countries.
Are you there yet?
Timing is important. For example, filing a patent application too early, without sufficient technical details, may result in a patent that does not meet the basic requirements for validity. It is important to assess whether you’ve sufficient technical information to justify seeking formal patent protection. Filing too early, without enough experimental results or sufficient disclosure, can leave your claims vulnerable to challenges, as they may appear to be based on wishful thinking rather than concrete innovation.
On the other hand, waiting too long increases the risk of public disclosures or missed opportunities. Delaying the filing could lead result in public disclosures, whether intentional or accidental, that might compromise your IP rights. Worse still, if someone else files a similar patent first, their application could take priority even if you had the idea earlier.
Often, the most valuable aspects of an idea evolve during later stages of development. Consulting a patent attorney on time can help you navigate these complexities, ensuring your invention meets the necessary standards for patentability while protecting ongoing refinements. They can advise on the best timing for filing, help refine the scope of your patent claims, and ensure that early disclosures do not undermine your ability to protect future refinements.
Might Third Parties Be Involved in Developing or Testing Your Idea?
Experience teaches us that turning ideas into reality are easier said than done! Chances are proving or testing your concept will involve third parties. If so, you must decide whether to secure some provisional protection before disclosing (at least part of) your idea , or rely on confidentiality or non-disclosure agreements (NDAs). Again, consulting a patent attorney at this stage is invaluable. They can advise on whether there is enough substance to your idea for the purposes of provisional patent protection and how to manage IP when third parties are involved.
Conclusion:
Protecting intellectual property is not an optional extra but an essential step for SMEs and startups aiming to stand out in competitive markets. From patents and trade secrets to trade marks and copyright, choosing the right mix of protections ensures your ideas are secure and positioned as valuable, long-term business assets. IP protection isn’t just about ticking legal boxes, it’s about creating opportunities for growth, attracting investors, and building a strong foundation for future success.
By consulting a patent attorney as early as possible, you may be able to protect your innovations from being copied or misused, giving you an edge over competitors. Robust IP protection helps you to establish credibility, whether with potential partners, customers, or financial backers. For startups especially, a solid IP strategy can open doors to licensing opportunities, collaborations, and even higher valuations. Investing in IP protection isn’t just safeguarding what you’ve created, it’s about maximising the potential of your ideas to drive your business forward.
2. Patents
IPONZ and CNIPA launch Patent Prosecution Highway Programme
IPONZ has announced that it has entered a bilateral Patent Prosecution Highway (PPH) agreement with the China National Intellectual Property Administration (CNIPA) with effect from 1st November 2024.
Currently IPONZ is part of the Global Patent Prosecution Highway (GPPH) network. The GPPH network currently has 28 members, and allows for expedited examination to be requested where another patent office of the GPPH network has accepted claims on a corresponding patent application. As previously noted IPONZ joined the GPPH network in July 2017, and requires that the application from the Office of Earlier Examination (OEE) and the application for which IPONZ has been requested to examine under the terms of the GPPH have the same earliest date. Further, all claims presented for examination under the GPPH must sufficiently correspond to one or more of the claims found allowable by the OEE.
The CNIPA is not part of the GPPH, but has bilateral PPH agreements with numerous countries. As with IPONZ’s requirements under the GPPH, the PPH between IPONZ and the CNIPA will require the applications to have the same earliest date and sufficiently correspond to one or more of the claims found allowable.
The following documents along with English copies or translations are required as part of a CNIPA PPH request:
- A copy of the work product(s) issued by the CNIPA which expressly identify the patentable claims.
- A copy of the claims that the CNIPA examination has found to be patentable.
- A claim correspondence table which sets out the patentable claim(s) of the CNIPA application and identifies the "sufficiently corresponding" claim(s) to be examined by IPONZ. In instances where the claims to be examined are identical to those found patentable, a statement to this effect is also acceptable.
- A complete specification document that includes the claims which “sufficiently correspond” to those found patentable by the CNIPA.
IPONZ may request a verified English translation if the translation of the accepted Chinese claims does not align with the claims IPONZ has been requested to examine in order to determine if these claims sufficiently correspond.
Further details can be found on the CNIPA PPH page on the IPONZ website.
Patent Prosecution Highway Between New Zealand and European Patent Office Now in Effect
The Intellectual Property Office of New Zealand (IPONZ) and the European Patent Office (EPO) have entered into a 3-year trial Patent Prosecution Highway (PPH) agreement with effect from 1st December 2024.
PPH agreement Terms:
IPONZ’s PPH agreement with the EPO is on much the same terms as applies for its recently announced PPH agreement with the China National Intellectual Property Administration (CNIPA). Namely, the application from the Office of Earlier Examination (OEE) and the application for which the Office of Later Examination (OLE) has been requested to expedite examination are required to have the same earliest date and sufficiently correspond to one or more of the claims found to be patentable by the OEE. Use of the PPH arrangement is not limited to applications filed on or after the effective date. Both accepted applications and granted patents (or EPO mentions of grant) in an OEE can be used for expediting examination in the OLE, whether or not the OEE created that work product before or after the effective date.
Second Medical Use Claims:
As the EPO and IPONZ have different allowable second medical use claim formats, there is an asymmetrical relationship when considering whether the second medical use claims found to be patentable by the OEE will be considered to sufficiently correspond to the allowable second medical use claim format in the OLE. IPONZ requires second medical use claims to have Swiss-type claims of the form ‘Use of [known substance or composition] in the preparation of a medicament for use in [new therapeutic use]’ – being a purpose limited process or method of manufacture claim. By contrast the EPO requires second medical use claims to have the form ‘[Known substance or composition] for use in [new therapeutic use]’ – being a purpose limited product claim. As previously noted, since October 2019 IPONZ has been exercising more leniency in its application of the ‘sufficiently correspond’ criterion. In particular, IPONZ allows (and requires) other formats of second medical use claims allowed overseas to be converted into Swiss-type claims. As purpose limited product claims generally have wider scope than a purpose limited process claim, arguably a purpose limited product claim can be converted into a purpose limited process claim, but not vice versa. Indeed, as noted at II.B(3) of the EPO’s announcement of the trial PPH:
“a claim in the EP application which introduces a new/different category of claims than those indicated to be patentable/allowable by the OEE is not considered to sufficiently correspond. For example, where the OEE claims only contain claims to a process of manufacturing a product, then the claims in the EP application are not considered to sufficiently correspond if the EP claims introduce product claims that are dependent on the corresponding process claims.”
Consequently, a Swiss-type claim found to be patentable by IPONZ cannot be used for the purposes of expediting examination of a second medical use claim before the EPO.
Expediting Patent Examination:
Like the CNIPA, the EPO is not part of the Global Patent Prosecution Highway (GPPH). By entering into bilateral PPH agreements with those two offices New Zealand applicants now have options to expedite examination in the most frequently filed locations for their patent applications. Conversely, the work products of those offices can be used to expedite examination in New Zealand. Notably, the relevant work products of those offices will include Written Opinions or International Preliminary Reports on Patentability that are issued by the CNIPA or the EPO as the International Search Authority or International Examination Authority of a PCT International Phase application.
Given that the EPO and CNIPA have significant examination backlogs, the PCT related work products are most likely to be what is relied upon for expediting examination in New Zealand. Although not as long, IPONZ also has significant examination backlogs. It may be prudent for the applicant of a New Zealand patent application who wants to expedite examination before the EPO or CNIPA (or GPPH member office) to seek expedited examination of the New Zealand application. Regulation 77 of the Patents Regulations 2014 allows applications to have examination expedited where there are ‘good and substantial reasons’. IPONZ gives the following guidance on what qualifies as good and substantial reasons:
- where your enforceable rights are likely to be breached or infringed if the allowance of your claims in New Zealand is delayed;
- where you are likely to suffer financial losses if the allowance of your claims in New Zealand is delayed;
- where you will be commercially disadvantaged if the allowance of your claims in New Zealand is delayed;
- where there is a likely threat that your invention will be stolen and/or remodelled by a competitor;
- where an early allowance of your claims in New Zealand would facilitate an improvement of people's lives by providing therapeutic treatment of a disease or condition;
- where there is an immediate commercial need, e.g. a signed licencing agreement that requires a granted New Zealand patent.
Given that every application for a patent is for the potential purpose of commercialising the invention, IPONZ does not consider the following examples as “good and substantial reasons”:
- a statement that you want to commercialise the disclosed product;
- a statement that expedited examination would assist in the commercialisation of the invention;
- a statement that you are concerned about a possible infringement threat that might exist;
- a statement that a number of your claims in your patent application were found to be allowable by an overseas IP office;
- a potential or possible commercial reason, or a reason that applies to the majority of applications e.g. conjectured plans for licensing to a New Zealand company, or to ensure certainty for investors;
- a statement that you wish to obtain feedback from an examiner on the merits of the application, before a deadline to enter national phase or otherwise file in other jurisdictions.
Developments in PPH Agreements and Global Networks:
Notably IP Australia entered a trial PPH agreement with the EPO in July 2016 and that arrangement became permanent in July 2022. However, as yet, IP Australia has not entered into a PPH agreement with the CNIPA. This latter fact gives cause for prospective applicants from Australia or New Zealand who are interested in subsequently extending their patent rights into China to file early in New Zealand.
In addition to the 22 IPOs (including one intergovernmental organisation) that were members of the GPPH when New Zealand joined, the GPPH has since been supplemented by the IPOs of Brazil, Chile, Columbia, Peru and the Visegrad Patent Institute. The latter is an intergovernmental organization for cooperation in the field of patents established by the four Visegrad countries: the Czech Republic, Hungary, Poland and the Slovak Republic, which can be selected as an ISA and IPEA for PCT International Phase applications from those countries as well as Lithuania.
Concluding Remarks:
The PPH agreements offer valuable opportunities for expediting patent applications. However, the complexities of claim formats, examination backlogs, and eligibility criteria may require careful consideration. To fully leverage these benefits and protect your intellectual property effectively, you may wish to consult a qualified patent attorney in respective jurisdictions for expert guidance. At Pipers, our highly experienced team can help you navigate these complexities, assess your eligibility, and make the most of the strategic advantages offered by the PPH agreement for your IP.
Uruguay Joining PCT in 2025
From 7th January 2025 Uruguay (UY) will be bound by the PCT. Hence, international applications filed on or after 7th January 2025 will automatically designate Uruguay.
Reservation Elected:
Uruguay has elected under Article 64(1)(a) of the PCT not to be bound by Chapter II of the PCT, and will be the only Contracting State with that election. The consequence of the Article 64(1)(a) election is that where either the sole applicant is or all the applicants are a resident or national of Uruguay they will not be eligible to request international preliminary examination of their international application. Under Article 31(2)(a) a demand for international preliminary examination can only be made by an applicant who is a resident or national of a Contracting State bound by Chapter II, and whose international application has been filed with the Receiving Office of or acting for such State.
Article 31(2)(b) provides a possible exception to Article 31(2)(a), but it requires the PCT Assembly of Contracting States to decide to allow persons entitled to file international applications to make a demand for international preliminary examination even if they are residents or nationals of a State not bound by Chapter II. Currently there is no indication that the PCT Assembly will activate Article 31(2)(b) in this regard.
Consequently, if an applicant from Uruguay wants their international application to undergo international preliminary examination, it will require that they are a co-applicant of an international application filed with a Receiving Office of, or acting for, a Contracting State other than Uruguay, where at least one of the other applicants is a resident or national of that Contracting State. Currently residents or nationals of Uruguay can be a co-applicant of an international application provided that at least one of the other co-applicants is a resident or national of a Contracting State bound by Chapter II where the international application has been filed with the Receiving Office of, or acting for, that Contracting State. Hence, for residents or nationals of Uruguay, the main change is that they will be able to be applicants of international applications in their own right.
Why Consider Designating Uruguay?:
Spanish is the official language, and there are high levels of literacy and educational attainment amongst its population of around 3.5 million, all of whom have access to electricity and clean water. About 95% of the population is urban and there is a well-developed telecommunications infrastructure and very high levels of internet use. Uruguay has a land area of just over 175,000 sq kms, over 85% of which is agricultural land, with about 75% of that being in pasture, 10% being arable land and 10% in forestry. Uruguay has a 3-tier judicial system and is amongst the top Latin American countries for real GDP per capita and exports exceed imports.
Remarkable Growth of PCT Membership: The Patent Co-Operation Treaty began in 1978 and has had one of the most successful uptakes of membership of any IP Treaty. From just a dozen members in January 1978, it currently has 157 members and this will be 158 when Uruguay becomes bound on 7th January 2025.
Please check out Pipers interactive PCT map at https://piperpat.com/page/map. To see how quickly countries joined the PCT bandwagon you can either click on the 'next year' button to progress through the years up to the current year or you can click the 'animate map' button.
3. Trade Marks
Comparison of Trade Mark Protection Measures Provided by Online Marketplace Platforms
Over the last couple of decades increasing amounts of consumer spending has occurred through online marketplace platforms. While online marketplace platforms have provided many benefits for brand owners, the platforms have also been embraced by counterfeiters.
While counterfeiters use online marketplaces to infringe upon a range of intellectual property rights, this article focuses on the measures available for trade mark owners on online marketplace platforms that are likely to affect the sales and brand reputation of Australian and New Zealand trade mark rights holders.
There is some variation across these platforms in the measures they make available for brand owners to make it hard for counterfeiters to harm their sales and brand reputation. However, online platforms will generally require that take-down requests alleging counterfeit goods be made either by the registered trade mark owner or their agent.
Along with providing proof of the registered trade mark the platform will likely require a statement that clearly specifies where the infringing material is in the listing. Namely, whether the product contains the infringing mark, or whether the infringing mark is on the product packaging, or if it is contained in the product description. Sellers cannot evade a take-down request by stating that their products are fakes, imitations or replicas.
While the ability to request take-downs of listings without having to resort to legal actions is beneficial, it is also important that online marketplaces balance that with measures that minimise the chance of the take-down facility being abused. This will likely involve one or more of the following:
- allowing the party who had a take-down request against their listing to explain why the listing does not breach the platform’s intellectual property policy;
- allowing the party who had their listing removed to explain why the listing does not breach the platform’s intellectual property policy;
- having policies deterring repeated unfounded allegations of infringement or breach of intellectual property rights.
Below is a table of some popular online shopping platforms used by online shoppers from Australia and New Zealand that links to their IP policy and details on whether the platform requires a registered trade mark for the IP policy to be put into effect. This is followed by further details of the processes and tools available on each of these platforms.
Platform / Registered TM / Application for
/ Required? / TM Sufficient?
Alibaba / Yes / No
Amazon / No / Yes
eBay AU / Yes / No
Temu (AU) / Yes / No
Temu (NZ) / Yes / No
TradeMe / Yes / No
Alibaba
Alibaba’s Intellectual Property Protection Platform (IPP Platform) allows rights holders and their representatives to file take-down requests on allegedly infringing product listings. Alibaba’s IPP Platform covers the following Alibaba E-Commerce platforms: Alibaba.com, Aliexpress.com, Lazada.co.ph and Miravia.es. Prior to submitting a take-down request rights holders need to upload documents establishing their identity and copies of their registered trade marks so that Alibaba can authenticate them. When a registered trade mark is renewed it will need to be authenticated again. Once authenticated, the rights holder can then submit hyperlinks to the offending listings and provide reasons and any additional material supporting the alleged infringements. Each time a rights holder reports a listing on the IPP Platform the IPP Platform improves its ability to proactively identify and remove subsequent infringing listings. Once a takedown request has been processed, the affected merchants may submit counter-notices disputing the allegation of infringement.
As with the other platform providers, Alibaba’s IPP Platform material does not discuss the jurisdictional nature of trade mark registrations. The jurisdictional scope of a rights holder’s registrations is particularly relevant for the Alibaba.com and Aliexpress.com platforms, given that they are directed towards multiple jurisdictions. It is not clear whether a party having a trade mark registration in a particular jurisdiction has sufficient grounds for having a listing completely removed from the Alibaba.com and Aliexpress.com platforms or whether the listing would only be geo-blocked or disabled for the relevant jurisdiction.
Amazon
Amazon’s Project Zero program seeks to discourage the sale of pirated or counterfeit goods on its website through the combined effect of its three independent elements.
The first element is Amazon’s Brand Registry, which is an automated tool that utilizes the power of Amazon’s machine learning technology to scan for and remove listings of suspected counterfeit goods on a daily basis. To make use of this feature a participating rights owner needs to upload their registered or pending brand data, which is limited to textual marks or device marks containing textual elements, and these need to match those on the product or its packaging. This feature has resulted in a dramatic decrease in the amount of counterfeit listings. In order to qualify the registration needs to have been issued by at least one of the government trade mark offices in the following countries / regions: the United States, Australia, Benelux, Brazil, Canada, Egypt, the European Union, France, Germany, India, Italy, Japan, Mexico, Poland, Saudi Arabia, Singapore, Spain, Sweden, Turkey the United Arab Emirates, or the United Kingdom. Owners also need to have an Amazon account. Only owners can enrol their brands in the Amazon Brand Registry, but the owners can then authorise agents to be representatives in relation to some or all of those brands.
The second and potentially controversial element gives rights holders the power to remove listings that they consider to be for counterfeit goods. Such removals also feed into and inform the algorithms for the automated removal tool. As a guard against abuse of this facility Amazon requires a very high percentage of the removed counterfeit listings to have been correctly identified as such, failing which a rights owner will be removed from the Project Zero program.
The third element is Amazon’s Transparency service. To make use of this service each unit of a seller’s product needs to be assigned a unique code. Whether fulfilled by Amazon or shipped directly by selling partners, products utilizing this service cannot be listed on Amazon or shipped without valid Transparency codes. The optional product serialization service is offered for a volume weighted per unit charge.
eBay AU
eBay’s Verified Rights Owner (VeRO) Program allows owners of intellectual property rights and their authorized representatives to report eBay listings that may infringe on those rights. Rights owners can submit a Notice of Claimed Infringement along with details of their trade mark rights and the offending listings. If eBay AU removes a listing they notify the affected merchant and provide them with the rights owner’s email address so that they can raise any questions or concerns directly with the rights owner. Rights owners participating in the VeRO Program can optionally have a profile page detailing their claimed IP rights and enforcement policies and/or contact details.
Temu AU & NZ
Temu’s IP Portal allows intellectual property rights owners and their authorized representatives to report alleged infringing listings to Temu for investigation. Details of the registered trade mark rights relied upon are required along with statements of why the listings in question infringe those rights. Temu also allows rights owners to upload their registration certificates and details into its Brand Registry, thereby making it easier to lodge further reports of alleged infringement.
TradeMe
TradeMe allows both rights holders as well as any registered users to report listings that are suspected of infringing an IP right for TradeMe to investigate further. Rights holders can submit their requests here, along with proof of their New Zealand trade mark registration, while registered users can submit via the ‘Report this listing’ feature at the base of each listing page.
Concluding Remarks
This review shows that there is some variation across popular online shopping platforms in the required processes and tools available for removing listings suspected of infringing registered trade mark rights. Some of the larger online shopping platforms are already using AI to proactively assist in removing infringing listings and this is likely to be more widely adopted. As such technology becomes more readily available for implementation there may be scope for future judicial decisions and/or legislative changes that raise the bar on the minimum measures online shopping platforms need to make available for removing suspected infringing listings. There will still need to be mechanisms in place that enable sellers who have had legitimate listings removed to have them reinstated as well as sanctions for rights holders who persist in seeking to remove legitimate listings.
USPTO Trademark Fee Changes Effective in Early 2025
In early 2025 the USPTO will apply 28 fee changes to its fee schedule, including 7 new fees and removing 4 current fees. There will be two commencement dates for the new schedule, with changes to direct fees being effective from 18th January 2025 and changes to relevant Madrid Protocol fees being effective from 18th February 2025.
Notable Fee Changes
As detailed in the table below a number of official fees will increase, which notably includes the core application, post-registration and use declaration fees.
Currently applications filed directly with the USPTO (including foreign convention and non-convention applications) are made via the Trademark Electronic Application System (TEAS) and applications are charged according to whether the specification only uses pre-approved goods and services (TEAS Plus) or whether pre-approved wording is not used in at least one class (TEAS Standard). From 18th January 2025 all direct electronic applications will have the same base application fee, but new surcharges based on the complexity and completeness of their application can be charged on a per class basis. All surcharges will be calculated prior to the application being submitted with options to amend the application prior to submission so as to avoid any or all of the surcharges. However, surcharges can also be charged during examination if the examiner determines that information was missing at filing.
Using free-form text will incur an extra $200 per class. Each free-form class specification having more than 1,000 characters will be charged an extra $200 for each additional group of 1,000 characters beyond the first 1,000. To avoid this surcharge applicants will either need to stay below 1,000 characters per class or have long specifications that only use identifications of goods and/or services selected directly from the ID Manual. The surcharge fee for incomplete information will be $100 per class (not per missing item) and applies to applications missing information necessary for filing, such as the applicant’s name or address, a translation and transliteration of the mark, or description of the mark, etc. Later amendment of the translation and transliteration fields will not be charged unless the originally entered terms were clearly inappropriate. It will also apply to any previously filed TEAS applications that remain pending on or after 18th January 2025 if the application still fails to satisfy the completeness requirement.
The USPTO acknowledges that the goods and services options in the ID Manual are insufficient or too inaccurate for some industries. It allows suggestions for additions to the ID Manual to be made with responses given within a couple of working days and approved additions included in the weekly updates to the ID Manual.
For Madrid applications from 18th February 2025 the USPTO will apply a single fee as WIPO cannot currently collect filing surcharges. The fee will be set at a level that averages out what Madrid applicants would expect to pay if filing directly under the base application and surcharge system. A consequence of this is that where foreign applicants are happy to use only pre-approved terms the official fees will be cheaper if filed directly with the USPTO.
Fee Description | Current fee | New fee
TEAS Standard application, per class | $350 | n/a
TEAS Plus application, per class | $250 | n/a
Base application (direct), per class | n/a | $350
US designation fee filed with WIPO (Madrid), per class | $500 | $600
Subsequent designation fee filed with WIPO (Madrid), | $500 | $600
per class | |
Insufficient information (direct), per class | n/a | $100
Using the free-form text box instead of pre-approved | n/a | $200
goods and services, per class | |
Each additional group of 1,000 characters in the free-form | n/a | $200
text box beyond the first 1,000 (direct), per class | |
Section 9 registration renewal application, per class | $300 | $325
Section 8 declaration, per class | $225 | $325
Section 15 declaration, per class | $200 | $250
Section 71 declaration, per class | $225 | $325
Renewal fee filed at WIPO, per class | $300 | $325
Amendment to allege use (AAU), per class | $100 | $150
Statement of use (SOU), per class | $100 | $150