TEASi to Madrid e-Filing: what changes

For portfolios that use US applications or registrations as the basic mark, the route out to an international registration is changing channel. The USPTO has said that outbound international trademark applications are moving from the Trademark Electronic Application System International (TEASi) to WIPO’s Madrid e-Filing system. This is a filing-channel change rather than a change in rights, but it touches three things in-house teams manage closely: who is authorised to file, where an open file lives, and how the money leaves the business.

What is actually changing for outbound international applications?

The filing platform for outbound international applications where the USPTO is the office of origin moves from TEASi to Madrid e-Filing, with a short window in which both are available.

Until 30 September, outbound applicants using the USPTO as office of origin may file either in TEASi or in Madrid e-Filing. Beginning 1 October, all new outbound international applications must be filed in Madrid e-Filing unless exempted. The same date applies to correspondence generated by the new channel: from 1 October, responses to irregularity notices that follow a Madrid e-Filing application must be filed in Madrid e-Filing. In practical terms, the dual-track period is an opportunity to run one or two live filings through the new system while the fallback still exists, rather than meeting Madrid e-Filing for the first time on a file with a priority date attached to it.

Which files still belong in TEASi?

Anything already filed in TEASi stays in TEASi, and subsequent designations remain a separate question.

International applications already filed in TEASi must be completed in TEASi after 1 October. That single sentence has a practical consequence for anyone with a part-prepared or pending outbound file: the platform is fixed by where the application was filed, not by the date on which the next step falls due. If a matter is sitting half-finished in TEASi, someone has to decide, before the cut-off, whether to complete it there or start again in the new system — and whoever completes it needs continuing TEASi access and the institutional memory of what was entered.

Subsequent designations are treated separately: a subsequent designation can be filed directly with WIPO’s International Bureau or through TEASi for a fee. So the transition does not reduce the outbound toolkit to a single system. It changes where new applications begin, while leaving legacy files and subsequent designations on their existing paths.

What do the people who file need in place before 1 October?

Each person who will file needs a WIPO Account, because a WIPO Account is required to use Madrid e-Filing.

This is the item most likely to be discovered late, and it is not a formality that can be completed in the last hour before a deadline. Treat account provisioning as a named-person task for every attorney and paralegal who might touch an outbound filing, including the people who cover holidays and absences, rather than as a single shared login held by whoever filed last. Do it during the dual-track window, and test each account with a real filing task if you can, so that the first use of the credentials is not also the first time anyone has looked at the interface.

What changes about paying for an international application?

The amounts stay the same, but the payee, the currency and the available payment methods all change.

Applicants filing through Madrid e-Filing pay WIPO directly in Swiss francs instead of paying the USPTO in US dollars. The international trademark application fee amount and the certification fee amount remain unchanged under the transition, so this is not a price increase — it is a treasury and reconciliation change. Paying WIPO directly makes available payment options including a WIPO current account, debit cards, Apple Pay, Google Pay, Samsung Pay, Alipay and PayPal. It also eliminates the Pay.gov system’s daily credit card limit of USD 24,999.99, which matters for anyone who has ever had to split a multi-class, multi-designation filing day across two calendar days to stay under that ceiling.

For an in-house team, the questions that follow are mundane and worth answering in advance: which payment instrument will be used, whether a WIPO current account is preferable to card payment for volume, who is authorised to fund it, and how a Swiss franc debit will be coded and reconciled against a cost estimate that the business may still hold in dollars. Foreign-transaction charges and internal exchange-rate handling are now part of the cost of an outbound filing in a way they were not when the USPTO collected in dollars.

What does Madrid e-Filing do that TEASi did not?

Two features are worth knowing about because they change how you prepare the underlying data.

First, Madrid e-Filing allows USPTO staff to send informal messages about issues that can be corrected in the international application. That creates an informal channel before the formal irregularity route, and it means someone needs to be watching for those messages rather than only monitoring for formal notices.

Second, Madrid e-Filing can automatically carry over information from multiple USPTO trademark applications or registrations into the international application. For portfolios that base an international application on more than one US basic mark, that removes a manual re-keying step — and with it a familiar source of discrepancy between the basic mark and the international application. It also raises the value of keeping the underlying USPTO records clean, since imported data inherits whatever is already there.

Which parts of the system are not yet working properly?

Two known issues affect data import and certification marks, and both currently require manual handling.

In Madrid e-Filing a registration number cannot currently be used to import USPTO filing data, and the application serial number must be used instead. Anyone whose internal records key basic marks by registration number — which is most portfolios, once a mark has registered — needs the serial number to hand before starting the filing. That is a small data-mapping exercise, best done once across the relevant basic marks rather than repeatedly under time pressure.

There is also a known issue with goods and services information for certification marks in US classes A and B, requiring manual entry of the goods and services and manual selection of the correct international class. If you hold certification marks, the automation does not help you, and the classification decision falls back on the person filing.

What does the transition not settle?

It is a change of channel for outbound filings, and nothing more.

It governs outbound international applications where the USPTO is the office of origin. It does not alter Madrid Protocol substantive law, the amount of the international or certification fee, or examination standards, and it says nothing about designating the United States as a target country — inbound work is unaffected. It does not retire TEASi: files already started there must be finished there, and TEASi remains one route for subsequent designations. And the two known defects described above are workarounds rather than settled rules; they are stated as current limitations, so a team that builds a permanent internal procedure around the serial-number workaround should expect to revisit it. Nothing here should be read as guidance on whether an international registration is the right filing strategy for a given mark.

What should a portfolio manager do now?

Work through five items before 1 October, in this order.

First, list every pending or planned outbound international application based on a US basic mark, and mark each one as “already in TEASi” or “not yet filed” — the first group must be completed in TEASi, and the second should go to Madrid e-Filing. Second, create and validate WIPO Accounts for every attorney and paralegal who could be the filer, including cover staff, and use the dual-track window to test them. Third, pull serial numbers for the basic marks you expect to use, given that registration numbers cannot currently drive the import. Fourth, agree the payment route with finance: a WIPO current account or another CHF-capable method, with a decision on who funds it and how Swiss franc debits are coded and reconciled. Fifth, for any file already open in TEASi, decide explicitly whether to finish it there or refile, and record the decision — because after 1 October that choice is no longer available to be made twice. Certification-mark holders should add a sixth item: expect manual entry of goods, services and class.