1714.01(a)(ii) Response to Final Office Action
The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’s final Office action are listed in 37 C.F.R. §2.66(b). The petition must include all of the following:
- (1) The petition fee required by 37 C.F.R. §2.6;
- (2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the response on or before the due date was unintentional. The statement does not have to be verified; and
- (3) A properly signed response to the Office action or a statement that the applicant did not receive the Office action or the notification that an Office action issued.
- (4) If the applicant does not assert non-receipt of the Office action or notification, the response is treated as a request for reconsideration under 37 C.F.R. §2.66(b)(3) and the applicant must also file: (a) a notice of appeal to the Trademark Trial and Appeal Board under §2.141 or a petition to the Director under §2.146, if permitted by 37 C.F.R §2.63(b)(2)(iii) or (b) a statement that no appeal or petition is being filed from the final refusal(s) or requirement(s).
In some cases, an amendment requesting registration on the Supplemental Register or registration under 15 U.S.C. §1052(f) may also be an appropriate response to a final refusal of registration on the Principal Register. See TMEP §§714.05(a)(i), 816.04, 1212.02(h)
Generally, if the petition does not include the requirements set out in 37 C.F.R §2.66(b), the petition will be treated as incomplete. The applicant will be given an opportunity to perfect the petition by submitting the required items or claim of non-receipt. If the applicant does not submit a proper response or claim of non-receipt within the time allowed, the petition will be denied. However, if the applicant previously filed a timely request for reconsideration that did not overcome all outstanding refusals and satisfy all outstanding requirements, a late appeal will not be accepted on petition. That is because the filing of a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. §2.66(b)(3); TMEP §715.03.
If the petition states that applicant did not receive the final action, and the petition is granted, the USPTO will issue a new final action and provide the applicant with a new response period. If all issues previously raised remain the same, the USPTO will send a notice to the applicant directing the applicant to view the previously issued final action on the TSDR portal on the USPTO website at http://tsdr.uspto.gov/, and provide the applicant with a new six-month period in which to file a response. Note, however, that the applicant may not assert again that it did not receive the final Office action or notification in a subsequent petition. 37 C.F.R. §2.66(b)(3).