TMEP 715.03: Request for Reconsideration After Final Action

October 2017 Edition of the TMEP

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715.03    Request for Reconsideration After Final Action

Under 37 C.F.R. §2.63(b)(3), the applicant may file a request for reconsideration before the deadline for filing an appeal to the Board or petition to the Director.

However, filing a request for reconsideration does notstay or extend the deadline for filing a notice of appeal or petition to the Director under 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.63(b)(3); TMEP §715.03(c).  The USPTO cannot extend the statutory deadline for filing an appeal. See 15 U.S.C. §1062(b)37 C.F.R. §2.142(a). But see TMEP §1714.01(a)(ii) (concerning filing a petition to revive an abandoned application with a notice of appeal when an applicant fails to respond to a final action).  Therefore, if an applicant files a request for reconsideration of a final action and wants to preserve the right to appeal if the request is unsuccessful, the applicant must file a notice of appeal (with the fee required by 37 C.F.R. §2.6) before the expiration of the six-month period for response to the final action, or the application will be abandoned.  If the request for reconsideration is unsuccessful, and the applicant has not timely filed a notice of appeal, the application will be abandoned for incomplete response after the expiration of the six-month response period. See15 U.S.C. §1062(b)37 C.F.R. §2.65(a). See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement and TMEP §§715.04–715.04(b) for information about processing a request for reconsideration filed with a notice of appeal.

The examining attorney should construe any document filed after final action that responds to the outstanding refusals or requirements as a request for reconsideration.  If the request for reconsideration does not overcome or resolve all outstanding refusals and requirements, the examining attorney must follow the procedures outlined in TMEP §§715.03(a)(ii), (b), and 715.04(a), (b).  An Office action issued in connection with those procedures should discuss any new evidence submitted with the request for reconsideration, regardless of whether it is significantly different from evidence previously submitted. If the evidence in the request for reconsideration is significantly different from the evidence currently of record, the examining attorney must issue a new final refusal (i.e., an "Examiner’s Subsequent Final Refusal"). See TMEP §715.03(b).

Regardless of whether an applicant submits new evidence with a request for reconsideration, the examining attorney may introduce additional evidence directed to the issue(s) for which reconsideration is sought. TBMP §1207.04;  see In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1200–01 (TTAB 2009); In re Giger, 78 USPQ2d 1405, 1406–07 (TTAB 2006).

To determine the appropriate action to take upon receipt of a request for reconsideration, the examining attorney must consider whether: (1) the applicant has timely filed a notice of appeal; (2) time remains in the six-month period to respond to the final action; and (3) the request for reconsideration presents a new issue or new evidence significantly different from that previously submitted.  See TMEP §§715.03(a), 715.03(b), and 715.04–715.04(b) for further information as to how examining attorneys should handle requests for reconsideration.