714.05 Delineating New Issues Requiring Issuance of Nonfinal Action
It is sometimes difficult to determine what constitutes a new issue requiring a new nonfinal action, rather than a final action, after receipt of a response. See TMEP §§714.05(a) – 714.05(f) regarding the propriety of issuing a final action in specific situations, and TMEP §§715.03(b) and 715.04(b) regarding new issues presented in a request for reconsideration of an examining attorney’s final action.
In a §66(a) application, the Madrid Processing Unit should be notified if a new issue is raised. See TMEP §1904.03(a). However, the examining attorney cannot issue a new refusal more than 18 months after the date on which the IB forwards the request for an extension of protection to the USPTO. See TMEP §1904.03(a).