TMEP 706: New Matter Raised by Examining Attorney After First Action

This is the October 2015 Edition of the TMEP

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706    New Matter Raised by Examining Attorney After First Action

If in the first Office action an examining attorney inadvertently failed to refuse registration on a clearly applicable ground or to make a necessary requirement, the examining attorney must take appropriate action to correct the inadvertent error in a subsequent action. Examining attorneys should exercise great care to avoid these situations, and should take this step only when the failure to do so would result in clear error (see TMEP §706.01). After the first action, supervisors (e.g., supervisors reviewing the quality of the examining attorney’s work) should not introduce any new reason for refusal that is not clearly justified under the Act or rules.

Since it is unusual to make a new refusal or requirement that could have been raised in the first action, an examining attorney who does make a new refusal or requirement must clearly explain why the refusal or requirement is necessary, and apologize for the delay in raising the issue, if appropriate. See TMEP §711.02 regarding supplemental Office actions.

Sometimes, the examining attorney must issue a new refusal or requirement because the applicant submits information that raises a new issue.

In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date on which the International Bureau of the World Intellectual Property Organization (“IB”) forwards the request for extension of protection to the USPTO. Thus, if the examining attorney determines that a new ground of refusal exists, a second Office action raising this new ground may be issued only if time remains in the 18-month period. In such a case, the examining attorney must contact the Madrid Processing Unit (“MPU”) upon issuance of the Office action, so that a notification of the new ground of refusal can be sent to the IB. See TMEP §1904.03(a).