T.M.E.P. § 715.03
Request for Reconsideration After Final Action
Executive summary:
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715.03 Request for Reconsideration After Final Action
Under 37 C.F.R. 2.64(b), the applicant may file a request for reconsideration before the deadline for filing an appeal.
However, the filing of a request for reconsideration does not extend the deadline for appeal. 37 C.F.R. 2.64(b); TMEP §715.03(c). Therefore, if an applicant files a request for reconsideration of a final action and wants to preserve the right to appeal if the request is unsuccessful, the applicant must file a notice of appeal (with the fee required by 37 C.F.R. 2.6) before the expiration of the six-month period for response to the final action, or the application will be abandoned. See TMEP §715.04 for information about processing a request for reconsideration filed with a notice of appeal.
The examining attorney should construe any paper filed after final action that contains new amendments, new evidence, or new arguments as a request for reconsideration, and should issue a written action granting or denying the request. See TMEP §715.03(a).
715.03(a) Examining Attorney's Action After Request for Reconsideration
When responding to a request for reconsideration, the examining attorney must issue a written action that advises the applicant of the status of the application.
If the examining attorney determines that no new issues have been raised in the request for reconsideration, the examining attorney should deny the request. The examining attorney should issue a written action acknowledging the request for reconsideration, restating the final refusal, and advising the applicant that the time for appeal runs from the mailing date of the final Office action. The USPTO cannot extend the statutory deadline for filing an appeal. 15 U.S.C. 1062(b); 37 C.F.R. 2.142(a).
An Office action denying a request for reconsideration should not include a six-month response clause (see TMEP §705.08). If the six-month period for response to the final action has expired, and the applicant has not filed a notice of appeal, the examining attorney should state in the Office action that the application is abandoned.
If there is time remaining in the response period, the examining attorney should advise the applicant that the applicant has the remainder of the response period to comply with any outstanding requirement and/or to appeal. See TMEP §715.03(b) regarding the examining attorney's action when the request for reconsideration raises a new issue, and TMEP §715.04 regarding a request for reconsideration filed in conjunction with an appeal.
In an Office action denying the applicant's request for reconsideration, the examining attorney may introduce additional evidence directed to the issue(s) for which reconsideration is sought. TBMP §1207.04.
If the request for reconsideration convinces the examining attorney that a refusal or requirement is not appropriate, the examining attorney may withdraw the refusal or requirement and approve the application for publication or registration, if otherwise in condition for such action. The examining attorney should inform the applicant of any action that renders the appeal moot. This may be done by telephone, with an appropriate note to the file.
If, in a request for reconsideration, the applicant makes a good faith, but incomplete, attempt to comply with all outstanding requirements and to overcome all outstanding refusals, the examining attorney has the discretion under 37 C.F.R. 2.65(b) to give the applicant additional time to resolve the matters that remain outstanding. See TMEP §718.03(b). This should be done only if the record indicates that the applicant can place the application in condition for approval by completing the response. In this situation, if the examining attorney believes that an examiner's amendment (see TMEP §§707 et seq.) will immediately put the application into condition for publication or registration, the examining attorney may issue the examiner's amendment. If the examining attorney grants the applicant additional time to complete a response under 37 C.F.R. 2.65(b), this does not extend the deadline for appeal. 15 U.S.C. 1062(b); 37 C.F.R. 2.142(a).
If the examining attorney denies the request for reconsideration and holds the application abandoned, the applicant may file a petition to the Director under 37 C.F.R. 2.146 to reverse the examining attorney's holding of abandonment. However, the Director will reverse the examining attorney's action on petition only if there is clear error or abuse of discretion. See TMEP §1713. The unintentional delay standard of 37 C.F.R. 2.66 does not apply in this situation. See TMEP §1714.01(f)(ii).
715.03(b) Examining Attorney Must Issue New Nonfinal Action If New Issue Presented in Request for Reconsideration
If the request for reconsideration includes an amendment that presents a new issue, the examining attorney must issue a nonfinal action. For example, in the case of an amendment that asserts a claim of acquired distinctiveness under §2(f) for the first time, or an amendment to the Supplemental Register for the first time, but fails to place the application in condition for approval, a nonfinal action may be appropriate. See TMEP §714.05(a)(i).
When the examining attorney issues a nonfinal action after review of the applicant's request for reconsideration, the Office action should explain that the applicant must respond to all requirements or refusals within six months of the mailing date of the action, but that the applicant should not file an appeal because an appeal would be premature under 15 U.S.C. 1070 and 37 C.F.R. 2.141.
Evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a nonfinal action. In re GTE Education Services, 34 USPQ2d 1478 (Comm'r Pats. 1994) (examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, where the substitute specimens submitted with the request were deficient for the same reason as original specimens).
Submission of new arguments in response to the same refusal or requirement does not raise a new issue that requires the examining attorney to issue a nonfinal action. Generally, if the same refusal or requirement was made before, the examining attorney does not have to issue a new final or nonfinal action.
See TMEP §§714.05 et seq. for further information about delineating new issues that require issuance of a nonfinal action.
When an application has been suspended after final action, and the grounds for refusal remain operative after the application is removed from suspension and no new issues have been raised, the examining attorney must issue a new final action. See TMEP §716.06.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).
715.03(c) Time for Appeal Runs from Mailing Date of Final Action if No New Issue Is Presented and Requirement(s) or Refusal(s) Is Not Withdrawn
Filing a request for reconsideration does not stay the time for responding to a final refusal. 15 U.S.C. 1062(b); 37 C.F.R. 2.142(a). If the examining attorney denies the applicant's request for reconsideration, the deadline for appeal runs from the mailing date of the final action. If this deadline has expired and the applicant has not filed a notice of appeal, the application is abandoned. The applicant may not file a petition to revive under 37 C.F.R. 2.66. See TMEP §1714.01(f)(ii).