1904.02(h) Issuing Office Actions
The USPTO will send the first Office action in a §66(a) application to the IB. The first Office action is known as a provisional refusal and must be reviewed by the IB. If the provisional refusal meets the applicable requirements (see TMEP §§1904.03 et seq.), the IB will process the refusal and send it to the holder (i.e., the §66(a) applicant). The IB notifies the USPTO of the date on which it processed the refusal, and the USPTO updates the TRAM database with this information. A response to the Office action issued by the USPTO is due within six months of the date on which the USPTO sent the action to the IB, not the date on which the refusal was processed by the IB.
An examiner’s amendment or a combined examiner’s amendment/priority action (see TMEP §§707 et seq. and 708.05) may not be issued as a first Office action because the IB will not accept such amendments. Examiner’s amendments and combined examiner’s amendments/priority actions may be issued as second and subsequent actions if authorized by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 ("qualified practitioner"). See TMEP §§602 et seq. regarding persons who are authorized to represent applicants, registrants, and parties to proceedings before the USPTO.
The USPTO will send second and subsequent Office actions directly to the applicant, at the correspondence address set forth in the request for extension of protection to the United States, or to the correspondence address provided in a subsequent communication filed in the USPTO. See TMEP §§609.01(a) and 1904.02(i) regarding correspondence in §66(a) applications.