TMEP 1106.03: Cancellation of Notice of Allowance

This is the October 2015 Edition of the TMEP

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1106.03    Cancellation of Notice of Allowance

If the USPTO cancels the notice of allowance before the filing or examination of the statement of use, the USPTO will refund any fees paid in conjunction with a statement of use or request(s) for extension(s) of time to file a statement of use, except where: (1) the applicant files a request to delete the §1(b) basis from a multiple-basis application (see TMEP §806.04(a)); or (2) the notice of allowance is cancelled as a result of an amendment to the filing basis after publication, pursuant to a petition to the Director (see TMEP §806.03(j)(ii)).

Cancellation of the notice of allowance is done by the ITU/Divisional Unit of the USPTO. To request that a notice of allowance be cancelled, a USPTO employee must send an e-mail request to the ITU/Divisional Unit’s internal mailbox with a clear statement of the reason why the notice of allowance is being cancelled. The ITU staff will enter an appropriate Note to the File in the record, stating who requested the cancellation and why. When the notice of allowance is cancelled, the examining attorney must inform the applicant that this has been done.

When the notice of allowance is cancelled and reexamination is required, the application is returned to the examining attorney. The examining attorney does not have to request jurisdiction to issue an Office action. If an Office action issues and the applicant subsequently overcomes all refusals and complies with any requirements made in the Office action, the examining attorney must approve the mark for republication.

If the application is returned to initial examination, any statement of use previously submitted will remain in the record but will not be examined unless it is resubmitted with the required fee as an amendment to allege use or statement of use at the appropriate time.

If the applicant files a statement of use or request for an extension of time to file a statement of use after the notice of allowance has been cancelled, the ITU/Divisional Unit will inform the applicant in writing that the statement of use or extension request is untimely, and will refund the filing fee.