TMEP 711.02: Supplemental Office Action Resetting Response Period

This is the October 2015 Edition of the TMEP

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711.02    Supplemental Office Action Resetting Response Period

Sometimes the examining attorney must issue a supplemental Office action that resets the six-month statutory period for response. If the examining attorney discovers after issuing an action that a refusal or requirement that should have been raised was overlooked, the examining attorney must issue a supplemental Office action addressing the issue and resetting the period for response. See TMEP §706. The examining attorney must also issue a supplemental Office action if a new issue arises after the issuance date of a previous Office action (e.g., during examination of an amendment to allege use).

If the examining attorney issues a supplemental Office action, a new six-month response period will begin running from the issuance date of the supplemental action. See 15 U.S.C. §1062(b). In a supplemental Office action, the examining attorney should: (1) indicate that the action is supplemental to and supersedes the previous action; (2) specifically identify all of the outstanding refusals and/or requirements; and (3) include the standard six-month response clause.

In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO. 15 U.S.C. §1141h(c); TMEP §1904.03(a).

See TMEP §717 regarding reissuing of Office actions.