TMEP 714.03: When Final Action is Appropriate

This is the October 2015 Edition of the TMEP

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714.03    When Final Action is Appropriate

Final action is appropriate when a clear issue has been developed between the examining attorney and the applicant, i.e., the examining attorney has previously raised all outstanding issues and the applicant has had an opportunity to respond to them.

For a second action to be made final, all substantive refusals or requirements must have been made in the first action. No refusal or requirement may be made final, even if it is a repeated refusal or requirement, unless the entire action is made final. Thus, if the examining attorney makes a new refusal or requirement in a second or subsequent action, any previously issued refusals or repeated requirements may not be made final, but instead should be maintained.

In an application with a claim of priority based on §44(d) in which the applicant has indicated an intent to rely on §44(e) as a basis for registration, the examining attorney may not issue a final action until the applicant submits a copy of the foreign registration. When the application is otherwise in condition for final refusal, the examining attorney must suspend action on the application pending receipt of a copy of the foreign registration. The notice of suspension must indicate all outstanding refusals or requirements that will be made final upon receipt of the foreign registration if no new issues are raised. See TMEP §§716.02(b), 1003.04(a), (b).

Second actions should be final actions whenever possible. While an applicant is entitled to a full and fair hearing, it is in the public interest that prosecution be limited to as few actions as is consistent with proper examination. Neither the Act nor the rules of practice give an applicant the right to an extended prosecution.

See TMEP §§714.05–714.05(f) for further discussion of when an examining attorney should issue a nonfinal action rather than a final action, and TMEP §714.06 regarding final actions that are premature.