T.M.E.P. § 1110.05
Dividing an Application When Response to Office Action is Due

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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1110.05 Dividing an Application When Response to Office Action is Due

Filing a request to divide is not a proper response to an Office action and does not relieve an applicant of the duty to respond to any outstanding Office action or to take any other required action.

Any outstanding deadline in effect at the time the application is divided applies not only to the original application, but also to each new application created by the division of the application. 37 C.F.R. 2.87(b). Therefore, if a response to an Office action is due, the response is due in each new application created by the division of the application, unless one of the following exceptions applies:

(1) If the Office action pertains to less than all the classes in a multi-class application, and the applicant files a request to divide out the class(es) to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application.

(2) If the Office action pertains to only one basis in a multi-basis application, and the applicant files a request to divide out the basis to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application.

If the applicant files a request to divide goods or services that are subject to a refusal from goods or services that are not subject to a refusal, the Office puts the goods/services that are not subject to refusal in the child application, and retains the goods/services that are subject to refusal in the parent application. More child applications may later be created from the parent file.

When a request to divide is filed together with a response to an Office action, the law office should first enter the response, and then refer the request to divide to the ITU/Divisional Unit. The ITU/Divisional Unit will process the request and then return the application to regular processing.

A request to divide may be made by examiner's amendment in appropriate circumstances. The fee must be paid by credit card or deposit account authorization.