1904.02(e)(iii) Limitations vs. Amendments
To the extent that an amendment of the identification in a §66(a) application narrows or restricts the goods/services, an amendment is comparable to a limitation affecting only the United States. A limitation filed at the IB by the applicant clarifying the nature of the goods/services may render the identification of goods/services in the §66(a) application sufficiently definite. Nevertheless, if the examining attorney has issued an Office action requiring amendment of the identification of goods/services, a proper response to the Office action must be received in the allowed time period. Simply recording a limitation with the IB is not a response to an Office action. The applicant must file a response with the USPTO within six months of the date on which the USPTO issued the Office action, stating that the applicant has recorded a limitation that will resolve the outstanding issue(s).
See TMEP §1906.01(e) regarding the filing of a request to record a limitation with the IB; TMEP §1904.03(g) regarding limitations in pending §66(a) applications; and TMEP §1904.15 regarding limitations in registered extensions of protection to the United States.