Marcus Ateva of the International Trade Mark Law and Practice Team shares an update on WIPO’s performance and pendency times for six key trade mark matters:
One of the challenges that all users of the Madrid System encounter is WIPO’s performance and pendency times in trade mark matters. WIPO regularly tracks its own performance in six key examination requests.
Historically, the processing times have been long, and for some of the key examination requests it has been tremendously lengthy to get a certain request handled by the International Bureau.
Lately, the processing times have been reduced but the users still wonder what level of service they should be able to demand from WIPO.
Pendency times published
WIPO publishes the statistics of the its pendency times on a monthly basis, for six key examination requests, namely for International applications, Renewals, Subsequent designations, Decisions, Modifications and Corrections (available here). The processing times are presented both as a monthly rolling average for the last 12 months and also for the last 10 years.
The International Trade Mark Law and Practice (ITMLP) Team has monitored WIPO’s performance for some time and has been quite concerned that the processing times for trade mark matters need to improve to properly serve the users of the Madrid System.
In August 2019, WIPO’s monthly average for handling a correction request is down to 36 days (compared to a historical average between 2011 and 2018 of about 176 days). One could ask if a pendency rate of 36 days is acceptable or not? It of course depends on what you compare to. For example in the autumn of 2017, the monthly average was 242 days. Also, if we look at the statistics for 2014, the yearly average for corrections requests was an astounding 270 days. So, in comparison with the worst performances from the last 10 years, the current processing time for corrections is indeed a huge improvement.
Reducing pendency times
||Monthly average (days)
||Historical average 2008-18 (approx days)
||WIPO target (days)
From what the ITMLP has learned from contacts with WIPO officials, the reason for the last couple of years’ reductions in the processing times is the result of a special task force that was set up with the sole objective of drastically reducing pendency times. This initiative seems to have paid off.
The chart shows the monthly average processing times as of 31 August 2019, for the six key requests, sorted by the fastest (Decisions) to the slowest (Renewals).
WIPO has also set some ambitious goals for each key request, which are presented below. Decisions, Modifications, International applications, Corrections and Renewals are more or less on a par with WIPO’s goals while Subsequent designations take considerably less time to process. A subsequent designation now takes 14 days compared to WIPO’s target of 30 days.
What we can see in the table is that for all key requests the pendency times are lower than the historical average (marked in green). For Corrections (36 compared to 176), the monthly average is considerably lower.
On the right track
In summary, WIPO seems to be on the right track in reducing its pendency times and in setting ambitious goals of keeping them to a minimum. Despite the improvements, the ITMLP Team still believes that the pendency rates must be supervised regularly.
This is particularly important as the number of contracting parties to the Madrid System and the number of International trademark applications and associated matters are likely to continue to increase, which in turn will increase the burdens on the International Bureau.
Marcus Ateva is Head of the IP Group at Advokatfirman MarLaw AB in Sweden and a member of the ITMLP Team