TMEP 718.03(b): Granting Additional Time to Perfect Response

October 2017 Edition of the TMEP

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718.03(b)    Granting Additional Time to Perfect Response

Under 37 C.F.R. §2.65(a)(2), the examining attorney has discretion to grant an applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response if:

  • (1) the response was filed within the six-month period;
  • (2) the response was a bona fide attempt to advance the examination;
  • (3) the response was a substantially complete response to the examining attorney’s action; and
  • (4) consideration of some matter or compliance with some requirement was omitted.

Nonfinal Action: If an applicant’s attempt to comply with an examining attorney’s nonfinal action is incomplete, the examining attorney generally should issue a "Examiner’s Final Refusal" (or, if appropriate, "SU – Examiner’s Final Refusal") action when the application is otherwise in condition for final action, and not grant a 30-day extension of time under 37 C.F.R. §2.65(a)(2). See TMEP §718.02(a) regarding processing an incomplete response to a partial nonfinal refusal or requirement and TMEP §718.03 regarding processing TEAS responses to nonfinal actions that consist only of a signature or are missing significant data or attachments.

Final Action: The discretion to give an applicant extra time to perfect a response under 37 C.F.R. §2.65(a)(2) should generally be exercised in connection with a response to a final action. See TMEP §§715.03─715.03(c) regarding processing requests for reconsideration after final action and TMEP §718.02(a) regarding processing an incomplete response to a partial final refusal or requirement. To grant additional time after a response to a final action, the examining attorney must issue an "Examiner’s Action Continuing a Final Refusal – 30 day Letter" (or, if appropriate, "SU – Examiner’s Action Continuing a Final Refusal – 30 day Letter"). See TMEP §§715.03(a)(ii)(C), (a)(ii)(E).

Granting the applicant additional time to complete a response under 37 C.F.R. §2.65(a)(2) after final action does not extend the time for filing an appeal to the Trademark Trial and Appeal Board (or a petition to the Director under 37 C.F.R. §2.63(b)(2) ). The applicant must file a notice of appeal (or petition) within six months of the issuance date of the final action. 15 U.S.C. §1062(b)37 C.F.R. §2.142(a); see 37 C.F.R. §2.63(b)(1)–(2).

Unsigned Response or Response Signed by Unauthorized Person: If the response to a nonfinal or final action is unsigned or signed by an unauthorized person, the examining attorney must issue a notice of incomplete response explaining why the response is incomplete and granting the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response. To issue a notice after a nonfinal action, the examining attorney must use the "Examiner’s Non-Responsive Amendment" action and omit the six-month response clause. To issue a notice after a final action, the examining attorney must use the "Examiner’s Action Continuing a Final Refusal – 30 day Letter" (or, if appropriate, "SU – Examiner’s Action Continuing a Final Refusal – 30 day Letter") and omit the six-month response clause. See TMEP §§715.03(a)(ii)(E) and 718.03 regarding processing responses to actions that are not signed or not properly signed.

Failure to Respond or Respond Completely to Notice of Incomplete Response: If the applicant fails to respond to a notice or to complete the response within the time granted under 37 C.F.R. §2.65(a)(2), the examining attorney must issue an "Abandoned Due to Incomplete Response" action. See TMEP §718.03(a). In this situation, the applicant cannot file a petition to revive due to unintentional delay pursuant to 37 C.F.R. §2.66. The applicant’s only recourse is to file a petition to the Director to exercise supervisory authority under 37 C.F.R. §2.146(a)(3) to reverse the examining attorney’s holding of abandonment. However, the Director will reverse an examining attorney’s action on petition only where there has been clear error or an abuse of discretion or, in rare cases, where a petitioner can show that it has substantially complied with the requirements of the statute or rules. See TMEP §1713.01.

If the application is abandoned for failure to file a complete response, but the applicant did not receive the action granting additional time to complete a response, or was unable to respond to the action due to some other extraordinary circumstance, the applicant may file a petition requesting that the Director waive 37 C.F.R. §2.62(a) and permit a late response to be submitted under 37 C.F.R. §2.146(a)(5). See TMEP §1713.02.