March 14, 2024
Drier than a desert – the topic of trade mark deadlines
Drier than a desert – the topic of trade mark deadlines

Part of my volunteering and giving back to the trade mark community involves presenting and educating trade mark paralegals and administrators.

These are often the unsung heroes keeping a firm or team running in the background while it’s the attorneys receiving the plaudits with awards and some even being called ‘Stars’ these days.

In many firms, paralegals, administrators and other support staff are hidden away. It’s a bit different here with everyone having their own profile on our website, being rewarded for great work and involved with many of our wonderful clients.

What is often an important part of their job is the monitoring of deadlines. It can hardly be described as a ‘sexy’ part of the work, but it’s highly important and we’re faced with many due dates every day.

As I regularly point out to administrators and paralegals, many decisions revolve around procedural issues and a recent UKIPO decision highlights the important job paralegals and administrators do in monitoring deadlines (or what happens if they don’t).

The UK has some strict deadlines with some deadlines listed in Schedule 1 of the Trade Marks Rules 2008 only available to be extended if, and only if:

(a) the irregularity or prospective irregularity is attributable, wholly or in part, to a default, omission or other error by the registrar, the Office or the International Bureau; and

(b) it appears to the registrar that the irregularity should be rectified.

The monitoring of deadlines naturally requires processes and personnel to be in place. It can be a challenge for inhouse corporate teams to find this resource. The solution is to outsource. This enables an in-house team's time to be freed up to concentrate on more value adding work for their business.

There are a number of different docketing systems out there, but a firm with experience from private practice and industry is likely to have team members who have worked on the most popular ones. If outsourcing, you would also want to maintain the highest standards of confidentiality and security. A regulated UK-based IP business should, of course, provide this.

In short, there are cures out there for the painful pinch points faced by some teams and there is no need to suffer.


Found this article interesting today?
Send us your thoughts: