T.M.E.P. § 718.03
Incomplete Response

Executive summary:

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718.03 Incomplete Response

Extract from 37 C.F.R. 2.65.

(a) If an applicant fails to respond, or to respond completely, within six months after the date an action is mailed, the application shall be deemed abandoned unless the refusal or requirement is expressly limited to only certain goods and/or services. If the refusal or requirement is expressly limited to only certain goods and/or services, the application will be abandoned only as to those particular goods and/or services. A timely petition to the Director pursuant to §§2.63(b) and 2.146, if appropriate, is a response that avoids abandonment of an application.

(b) When action by the applicant filed within the six-month response period is a bona fide attempt to advance the examination of the application and is substantially a complete response to the examiner's action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, opportunity to explain and supply the omission may be given before the question of abandonment is considered.

Under 15 U.S.C. 1062(b) and 37 C.F.R. 2.65(a), an applicant must respond completely to each issue raised in the examining attorney's Office action to avoid abandonment. A response is incomplete if it: (1) does not address one or more of the requirements or refusals made in the Office action; (2) is unsigned; or (3) is signed by an unauthorized person.

Unsigned Responses. If a response is unsigned, the examining attorney must obtain a properly signed copy, or a ratification of the unsigned response, before acting on the merits of the response, regardless of whether the Office action was final or nonfinal. The examining attorney should issue an Office action granting the applicant additional time to perfect the response, pursuant to 37 C.F.R. 2.65(b). See TMEP §718.03(b). The applicant must ratify the response through an examiner's amendment, or submit a properly signed copy of the response. See TMEP §712.02. If the applicant fails to ratify the response or submit a properly signed response within the time granted under 37 C.F.R. 2.65(b), the examining attorney should hold the application abandoned for failure to file a complete response. See TMEP §718.03(a).

Responses Signed by Unauthorized Persons. If a response is signed by an unauthorized party (e.g., a foreign attorney who is not licensed to practice before the USPTO, or a corporate employee who does not have legal authority to bind the applicant), the examining attorney must obtain a properly signed copy before acting on the merits of the response, regardless of whether the Office action was final or nonfinal. The examining attorney should issue an Office action granting the applicant additional time to perfect the response, pursuant to 37 C.F.R. 2.65(b) (see TMEP §718.03(b)) , and send the Office action directly to the applicant. The applicant must submit a response signed by someone with legal authority to bind the applicant (see TMEP §712.01) , or by an attorney who is qualified to practice under 37 C.F.R. 10.14 (see TMEP §602). Where a response was signed by an unauthorized party, it is not acceptable for the applicant to ratify the response through an examiner's amendment. See TMEP §712.03. If the applicant fails to submit a properly signed response within the time granted under 37 C.F.R. 2.65(b), the examining attorney should hold the application abandoned for failure to file a complete response. See TMEP §718.03(a).

Properly Signed but Incomplete Responses to Nonfinal Actions. When an applicant files an incomplete response to a non-final action (i.e., does not address one or more of the requirements or refusals made in the Office action), the examining attorney should not hold the application abandoned. Instead, the examining attorney has the discretion to (1) issue a final action, if the application is in condition for final action, or (2) grant the applicant additional time to complete the response, if the response meets the requirements of 37 C.F.R. 2.65(b) (see TMEP §718.03(b)). If the application is not in condition for final action, and the response does not meet the requirements of 37 C.F.R. 2.65(b), the examining attorney should issue another nonfinal action, explaining why the response was incomplete, and continuing all outstanding refusals and requirements.

A written disagreement with the examining attorney's refusal or requirement may be a complete response to a nonfinal action with respect to that refusal or requirement.

Properly Signed but Incomplete Responses to Final Actions. When an applicant files an incomplete response to a final action, the examining attorney has the discretion to (1) hold the application abandoned for failure to respond completely (see TMEP §718.03(a)) , or (2) to grant the applicant additional time to perfect the response if the applicant meets the requirements of 37 C.F.R. 2.65(b) (see TMEP §718.03(b)). See TMEP §715.01 regarding a proper response to a final refusal, and TMEP §715.03(a) regarding the examining attorney's response to an applicant's request for reconsideration of a final Office action.

Non-Responsive Communications. An inquiry, a request to extend the response period, or a communication on a matter unrelated to the preceding Office action, should be treated as a non-responsive communication, not as an incomplete response. See TMEP §719 for further information.

See TMEP §717.02 regarding the procedure for handling an applicant's claim that the applicant did not receive the Office action.

718.03(a) Holding of Abandonment for Failure to Respond Completely

The examining attorney should not hold an application abandoned when an applicant files an incomplete response to a nonfinal action. See TMEP §718.03. However, the examining attorney may hold an application abandoned if the applicant files an incomplete response to a final action, and the time for responding to that action has expired. In such cases, the examining attorney should issue a written action, without a six-month response clause (see TMEP §705.08) , stating that the application is abandoned, and explaining why. After mailing the action, the examining attorney should abandon the application for failure to file a complete response. See TMEP §718.03(c) regarding an applicant's request for reconsideration of an examining attorney's holding of abandonment for failure to file a complete response, and TMEP §1713 regarding a petition to the Director for review of the examining attorney's holding of abandonment for failure to file a complete response.

If the examining attorney acts on an incomplete response to a final action before the response period has expired, the examining attorney cannot abandon the application. Instead, the examining attorney should issue a written action, without a six-month response clause, explaining why the response is incomplete, and advising the applicant that to avoid abandonment, a proper response must be filed within the period for response to the previous Office action. If there are less than 30 days remaining in the response period, and the response meets the requirements of 37 C.F.R. 2.65(b), the examining attorney has discretion to give the applicant an additional 30 days to perfect the response. See TMEP §718.03(b).

718.03(b) Granting Additional Time to Perfect Response

Under 37 C.F.R. 2.65(b), the examining attorney has discretion to give an applicant additional time to perfect the response if:

(1) a response was filed within the six-month period;

(2) the response was a bona fide attempt to advance the examination;

(3) the response was a substantially complete response to the examining attorney's action; and

(4) consideration of some matter or compliance with some requirement was inadvertently omitted.

If the examining attorney decides that the response meets all four criteria, he or she should write an action explaining why the response is incomplete and granting the applicant 30 days, or to the end of the response period set forth in the action, whichever is longer, to complete the response. The examining attorney should not include a six-month response clause in the action.

If the examining attorney grants the applicant additional time to complete a response under 37 C.F.R. 2.65(b), the time for filing an appeal to the Trademark Trial and Appeal Board (or a petition to the Director under 37 C.F.R. 2.63(b)) is not extended. The applicant must file a notice of appeal (or petition) within six months of the mailing date of the final action. 15 U.S.C. 1062(b); 37 C.F.R. 2.142(a).

If the applicant fails to complete the response within the time granted under 37 C.F.R. 2.65(b), the examining attorney should hold the application abandoned for failure to file a complete response. See TMEP §718.03(a). In this situation, the applicant cannot file a petition to revive under 37 C.F.R. 2.66. The applicant's recourse is to file a petition under 37 C.F.R. 2.146 to reverse the examining attorney's holding of abandonment. See TMEP §1713.

If an applicant does not receive an action granting additional time to complete a response, or if the applicant is unable to respond to the action due to some other extraordinary circumstance, the applicant may file a petition to the Director . If the petition is granted, the action will be remailed and the applicant will have 30 days from the date of the remailed action to perfect the response. This does not extend the time for appeal. 15 U.S.C. 1062(b); 37 C.F.R. 2.142(a).

718.03(c) Reconsideration of Holding of Abandonment

If an examining attorney holds an application abandoned for failure to file a complete response, the applicant may file a request for reconsideration of the examining attorney's holding, arguing that the response was not incomplete. While the examining attorney has no authority to act on an application if no response was filed, the examining attorney does have the authority to reverse his or her holding as to whether or not a response received during the statutory period was a complete response. If the examining attorney reverses his or her holding of abandonment for failure to file a complete response, the TRAM System must be updated to withdraw the abandonment and show the correct status of the application.

The applicant may also contact the managing attorney or senior attorney and request review of the examining attorney's action. If the managing attorney or senior attorney believes that the holding of abandonment was improper, he or she will direct the examining attorney to reverse the holding of abandonment.

If the examining attorney does not reverse the holding of abandonment, the applicant may petition the Director to reverse the holding. A petition to reverse a holding of abandonment is not the same as a petition to revive an abandoned application. The Director will reverse the examining attorney's holding of abandonment only if there is clear error or abuse of discretion. The "unintentional delay" standard does not apply. See TMEP §1713.