708.01 Priority Action Defined
A “priority action” is an Office action that is issued following a telephone conversation, personal interview, or e-mail communication in which the examining attorney and the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s qualified practitioner discuss the various issues raised in an application and what actions the applicant must take to put the application in condition for publication or registration. A priority action is generally used when the action requires verification by the applicant. The use of priority actions is encouraged to expedite examination.
A priority action should be issued according to the following procedure: (1) the examining attorney telephones or e-mails the applicant or applicant’s qualified practitioner and requests that the applicant take some specific action, explaining the reasons; (2) the applicant or applicant’s qualified practitioner specifically discusses the merits of the application with the examining attorney; (3) the examining attorney prepares and signs a priority action that fully discusses all refusals or requirements, includes evidence to support the refusals and/or requirements, and specifically describes what action the applicant may take in order to put the application into condition for publication or registration; and (4) the USPTO sends a copy of the priority action to the applicant.
If the evidence of record supports a statutory refusal of registration, a priority action may be issued only if the examining attorney believes that an amendment or explanation will obviate the refusal. See TMEP §708.04.
See TMEP §708.03 regarding the form of a priority action.
Note: In a §66(a) application, an examining attorney may issue a priority action as a first action. See TMEP §1904.02(h) regarding Office actions in §66(a) applications.