HOW FAST IS THE ACCELERATED EXPERTISE?

The last amendments in the Law for Marks and Geographical Indications (LMGO) introduced a new service, for which the Bulgarian Patent Office (BPO) is supposed to collect fees. This is so called accelerated expertise.

The slightly amended text of Article 4 of LMGI (Suppl.-State Gazette N73/2006) just mentions that BPO will collect fee for “acceleration of the examination as to substance”. According to the Tariff approved by the Council of Ministers N87/17.04.2007 the fee is 200 leva (apr.100 euro). There is no doubt that   BPO’s new service aims to make the procedure for registration of trademarks faster.  Unfortunately, applicants have encountered with the total lack of further regulations of the terms and conditions under which this service can be used.

In order to set some regulations the President of BPO issued Order N250/03.05.2007. It comprises only of 3 points and instead of clarifying the situation it actually makes it more complex. Now we are without clear legal definition, rules, terms and conditions which could help the applicants to apply for the newly introduced service. So, the question comes logically: to what extend the accelerated examination as to substance is faster than the existing one?

What we know and what we do not know for sure?

The opportunity to use the accelerated expertise refers only to the examination as to substance and not to the examination as to form. The Order N250/03.05.2007 explicitly defines that this procedure refers only to Bulgarian applications. According to Article 18 of Decree for Formation, Filling and Examination of Applications for Registration of Marks and Geographical Indications, the application must be checked whether it meets the formal requirements for registration in 2 months. In reality there are applications waiting for examination as to form for up to 10 months.

The procedure for accelerated expertise commences by submitting a special request and paying the fee. We don’t know when this request has to be submitted- in the beginning together with the application (Article 32 (6)) or later- for instance after the publication. What will happen if we pay in the beginning but, because of some deficiencies in the application, the procedure is discontinued and there is neither publication nor examination as to substance? 

The Order N250 states that the received requests for accelerated expertise shall be distributed for examination as to substance in the order that they have been submitted before the BPO. The distribution in question shall take place within one month after the later expiration of one of the two terms- the term set in Article 36b (1) or the 6-month term from the priority data. Article 36b (1) states: “Within two months following the publication date of the application, any person may file an objection against the registration of the mark on the ground of Article 11 and 12.” Therefore the two months period starts from the publication date of the application. The sixth-months term starts from the filing date of the application. This has been introduced to provide that the examination as to substance could encompass also earlier applications with a claim for conventional priority or exhibition priority.  A simple calculation shows that the accelerated examination shall start at least 6 months after the filing date. Following the existing order for registration of marks it is not always necessary to wait 6 months, hence it is theoretically possible that the normal examination as to substance could start before the accelerated one. Moreover, there is no guarantee that the examination as to substance will start immediately after the expiration of the terms in question. The Order N250 just says that within one month after the expiration of the terms the submitted applications will be distributed. But it doesn’t state explicitly that the accelerated expertise will start immediately after the distribution.

According to Article 37(1) any application shall be subjected to examination as to substance within one year following expiry of the term referred to in Art.36b (1), regardless of whether an objection has been filed. Even though in reality this term could be much longer, we have a one year term fixed by the Law. It determines a certain limit for the duration of the examination as to substance. Unfortunately the Law makes no provisions for the duration of the accelerated expertise. In other words, we have no idea about its duration. We have yet to see how much faster in practice is the faster procedure and how much time an applicant would gain by paying 200 leva.

It is obvious that this legislation lacks transparency and clear rules for the newly introduced service; hence, there is no legal guarantee that it will be more efficient and faster in reality. Why should one then pay a fee for something that is theoretically not different than the existing one?