TMEP 1501.06: Amendment After Decision on Appeal

October 2017 Edition of the TMEP

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1501.06    Amendment After Decision on Appeal

An examining attorney may not take action in an application after the Board has rendered a decision on appeal, because the examining attorney does not have jurisdiction over the application. See In re U.S. Catheter & Instrument Corp., 158 USPQ 54, 55 n.3 (TTAB 1968).  After a decision on appeal, the applicant may petition the Director under 37 C.F.R. §2.142(g) to reopen prosecution of the application.  If the petition is granted, jurisdiction is restored to the examining attorney to take the specified action.

A petition to reopen prosecution of the application could be granted if the appeal involved the applicant’s compliance with a requirement rather than a refusal based on the nature of the mark. See In re Hickory Mfg. Co., 183 USPQ 789 (Comm’r Pats. 1974).  However, the Director will deny a petition to reopen prosecution if granting the petition would require further examination (e.g., to consider a claim of acquired distinctiveness under 15 U.S.C. §1052(f) or an amendment to the Supplemental Register). See In re Petite Suites Inc., 21 USPQ2d 1708 (Comm’r Pats. 1991); In re Vycom Elecs. Ltd., 21 USPQ2d 1799 (Comm’r Pats. 1986); In re Mack Trucks, Inc., 189 USPQ 642 (Comm’r Pats. 1976); see also TBMP §1218 (and cases cited therein).