711 Deadline for Response to Office Action
The statutory period for response to an examining attorney’s Office action is six months from the Office action's date of issuance. 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a). The examining attorney has no discretion to shorten or extend this period. Thus, the applicant must file a response within six months unless the examining attorney has issued a supplemental action resetting the period for response. See TMEP §711.02 regarding supplemental Office actions.
In a §66(a) application, a response to an Office action is due within six months of the date on which the USPTO sends the action to the IB, not the date on which the IB processes the refusal. See TMEP §1904.02(h) for further information about issuing Office actions in §66(a) applications.
To expedite processing, the USPTO recommends that responses to Office actions be filed through TEAS, at http://www.uspto.gov.
Filing an amendment to allege use does not extend the deadline for filing a response to an outstanding Office action, appeal to the Board, or petition to the Director. 37 C.F.R. §2.64(c)(1); TMEP §1104.
See TMEP §310 for information about computing the response period, TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness: and TMEP §§718.02 and 718.03-718.03(a) regarding abandonment for failure to respond or incomplete response to an Office action.
711.01 Time May Run from Previous Action
In most cases, the six-month statutory period to respond to an Office action runs from the issuance date of the Office action. In some situations, the examining attorney’s Office action does not re-start the beginning of a statutory response period. For example, a notice that an applicant’s response was incomplete (see TMEP §718.03), or a notice that an applicant’s request for reconsideration of a final action fails to overcome a refusal or satisfy an outstanding requirement (see TMEP §§715.03(a), (c)), does not begin a new response period. In all cases in which the statutory response period runs from the date of a previous Office action, the examining attorney must include a statement to that effect in the Office action, and must omit the six-month response clause.
711.02 Supplemental Office Action Resetting Response Period
Sometimes the examining attorney must issue a supplemental Office action that resets the six-month statutory period for response. If the examining attorney discovers after issuing an action that a refusal or requirement that should have been raised was overlooked, the examining attorney must issue a supplemental Office action addressing the issue and resetting the period for response. See TMEP §706. The examining attorney must also issue a supplemental Office action if a new issue arises after the issuance date of a previous Office action (e.g., during examination of an amendment to allege use).
If the examining attorney issues a supplemental Office action, a new six-month response period will begin running from the issuance date of the supplemental action. See 15 U.S.C. §1062(b). In a supplemental Office action, the examining attorney should: (1) indicate that the action is supplemental to and supersedes the previous action; (2) incorporate all outstanding issues by reference to the previous action; and (3) include the standard six-month response clause.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO. 15 U.S.C. §1141h(c); TMEP §1904.03(a).
See TMEP §717 regarding reissuing of Office actions.