T.M.E.P. § 706
New Matter Raised by Examining Attorney After First Action
Executive summary:
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706 New Matter Raised by Examining Attorney After First Action
If in the first Office action the examining attorney inadvertently failed to refuse registration on a clearly applicable ground or to make a necessary requirement, the examining attorney must take appropriate action to correct the inadvertent error in a subsequent action. Examining attorneys should exercise great care to avoid these situations, and should take this step only when absolutely necessary. After the first action, supervisors (e.g., supervisors reviewing the quality of the examining attorney's work) should not introduce any new reason for refusal that is not clearly justified under the Act or rules.
Since it is unusual to make a new refusal or requirement that could have been raised in the first action, an examining attorney who does make a new refusal or requirement should clearly explain why the refusal or requirement is necessary, and apologize for the delay in raising the issue, if appropriate. See TMEP §711.02 regarding supplemental Office actions.
Sometimes the examining attorney must issue a new refusal or requirement because the applicant submits information that raises a new issue.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).
See TMEP §1109.08 regarding application of the "clear-error" standard in the examination of statements of use under §1(d) of the Act.