716.02(f) Pending Expiration of “Insurance” Extension Request
When the applicant files a timely “insurance” extension request (i.e., in conjunction with the statement of use or within the same six-month period that the statement of use is filed; see TMEP §§1108.03–1108.03(a), 1109.16(c)), there are rare instances when the six-month period for response to a final Office action may expire before the statutory period for filing the statement of use. If the applicant can overcome any grounds for refusal and/or comply with any requirement raised in the final action before expiration of the time for filing the statement of use, but not within the time for responding to the final Office action, the applicant must still file a timely response to the Office action. The response must state that the applicant intends to comply with the statutory requirements for filing the statement of use on or before the expiration of the statutory filing period and request suspension of the application. The examining attorney should then suspend the application for only the amount of time remaining in the statutory period for filing the statement of use. The applicant will then have until the end of the extension period to overcome any grounds for refusal and/or comply with any requirement.
Example: The notice of allowance issues on September 30, 2010 and a statement of use and/or extension request is due on or before March 30, 2011. The applicant files a statement of use on October 15, 2010. On November 5, 2010, the examining attorney issues an Office action regarding the acceptability of the specimen and the applicant responds on November 8, 2010 but does not correct the specimen deficiency. The examining attorney then issues a final Office action on November 29, 2010 regarding the specimen issue. If the applicant files a timely “insurance” extension request on or before March 30, 2011, this would extend the time to perfect the statement of use to September 30, 2011. However, the applicant must still respond to the final Office action by May 29, 2011 (i.e., within six months of issuance of the final Office action). The response must include a request to suspend the application or the application will be abandoned for failure to respond. The examining attorney would then suspend the application until September 30, 2011, which is the date of expiration of the extension period and the deadline for complying with the statutory requirements for a statement of use.
If the applicant files a response to the final Office action prior to the expiration of the statutory period for filing a statement of use, and the response overcomes the grounds for refusal and/or complies with any requirement, the examining attorney will remove the application from suspension and withdraw the refusal.
If the applicant files a response to the final Office action prior to expiration of the deadline for filing the statement of use, but the response does not overcome the grounds for refusal and/or comply with any requirement, the examining attorney must issue an “Examiner’s Subsequent Final Refusal,” thereby reissuing the final refusal, and the applicant will have six months to respond. See TMEP §§716.06, 1109.16(d).