1108.03(a) Processing Extension Request Filed After Statement of Use Has Been Referred to Examining Attorney
Under 37 C.F.R. §2.89(e)(1), an applicant may file a request for an extension of time to file a statement of use after filing a statement of use if: (1) there is time remaining in the existing six-month period in which the statement of use was filed; (2) no extension request was filed together with the statement of use; and (3) granting the extension would not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. See TMEP §1108.03.
When an extension request is filed after the statement of use has been referred to the examining attorney, the request will be referred to the examining attorney. The USPTO will not examine the extension request unless the applicant needs the extension to perfect the statement of use.
If the examining attorney issues a requirement or refusal based on the statement of use, the examining attorney should note in the Office action that the extension request is being referred to the ITU/Divisional Unit for processing of the extension request. The filing of such an extension request is not in itself a proper response to an outstanding Office action, and does not extend the time for responding to an outstanding Office action. See TMEP §1109.16(c), (d). If the examining attorney does not issue a requirement or refusal based on the statement of use, the USPTO will not take formal action on the extension request.
The USPTO will not refund the filing fee for the extension request, even if the extension is not needed to perfect the statement of use.