TMEP 714.05: Delineating New Issues Requiring Issuance of Nonfinal Action

October 2017 Edition of the TMEP

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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).