TMEP 708.03: Form of the Priority Action

This is the October 2015 Edition of the TMEP

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708.03    Form of the Priority Action

The priority action should reference the date of the telephone call, e-mail message, or other communication, and the name and title (where appropriate) of the person who authorized the priority action. See TMEP §708.02 for information about who may authorize issuance of a priority action.

A priority action must include a six-month response clause (see TMEP §705.08) so that it is clear that the applicant must timely respond to the priority action to avoid abandonment of the application.

The priority action must include a search clause (see TMEP §704.02) if it is a first action, or if the applicant has not previously been advised of the results of a search.

The priority action must also: (1) fully discuss all refusals and/or requirements; (2) include sufficient evidence to support all refusals and/or requirements; and (3) specifically describe what action the applicant may take in order to put the application into condition for publication or registration. See TMEP §708.02 regarding discussion of issues on the merits.

The examining attorney should discuss each issue separately, stating the reason for the refusal and/or requirement and/or citing the relevant sections of the statute, rules, and/or TMEP. The essential nature of the refusal or requirement, and any pertinent advisories relating thereto, must be clearly stated in the priority action, and fully supported by appropriate evidence (if applicable), because the action of the USPTO is based exclusively on the written record. 37 C.F.R. §2.191.

A priority action may be used for a final or nonfinal refusal or requirement. See TMEP §708.04 regarding refusal of registration in a priority action, and TMEP §§714–714.06 regarding final actions.