715.03 Request for Reconsideration After Final Action
Under 37 C.F.R. §2.64(b), the applicant may file a request for reconsideration before the deadline for filing an appeal to the Board.
However, filing a request for reconsideration does not 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. §2.64(b); 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. See TMEP §§715.04-715.04(b) for information about processing a request for reconsideration filed with a notice of appeal. 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. See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).
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)(2) and (b) and 715.04(a) and (b). Any Office action issued in connection with those procedures should discuss any new evidence submitted with the request for reconsideration.
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). 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," with a six-month response clause. See TMEP §§715.03(b), 715.04(b).
In determining the appropriate action to take upon receipt of a request for reconsideration, the examining attorney must determine whether: (1) the applicant has timely filed a notice of appeal; and (2) the request for reconsideration presents a new issue. 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.
715.03(a) Examining Attorney’s Action When No New Issue is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
If a request for reconsideration presents no new issues and the applicant has not filed a notice of appeal, the examining attorney must consider whether to: (1) approve the application for publication or registration; (2) deem the application abandoned for an incomplete response; or (3) issue an Office action.
715.03(a)(1) Request for Reconsideration Resolves All Outstanding Issues
If the request for reconsideration convinces the examining attorney that a refusal or requirement should be withdrawn, and no other issues remain, the examining attorney may withdraw the refusal or requirement and approve the application for publication or registration.
715.03(a)(2) Request for Reconsideration Does Not Resolve All Outstanding Issues
715.03(a)(2)(A) Withdrawal of Prior Amendment
If, in a request for reconsideration that does not overcome or resolve all outstanding issues, the applicant also withdraws a prior amendment submitted in response to a refusal or requirement made by the examining attorney in an Office action (e.g., an amendment to the Supplemental Register or disclaimer), this does not raise a new issue.
715.03(a)(2)(B) Time Remaining in Response Period
If the applicant has made a good-faith, but incomplete, attempt to comply, and there is more than 30 days remaining in the response period, the examining attorney must issue a "Request for Reconsideration Denied – No Appeal Filed - Time Remaining" (or, if appropriate, "SU - Request for Reconsideration Denied – No Appeal Filed - Time Remaining") that: (1) acknowledges the request for reconsideration; (2) indicates that it is denied and explains why it does not overcome or resolve the final refusal; (3) states that the final refusal is maintained; and (4) advises the applicant that the time for appeal runs from the issuance date of the final Office action. The examining attorney should advise the applicant that the applicant has the remainder of the response period to comply with any outstanding requirement and/or to file a notice of appeal to the Board. The Office action must not include a six-month response clause. See TMEP §705.08.
715.03(a)(2)(C) No Time Remaining in Response Period – Discretion to Provide Thirty Days to Complete Response
If the applicant has made a good-faith but incomplete attempt to comply and there is no time remaining or fewer than 30 days remaining in the six-month response period, the examining attorney has discretion under 37 C.F.R. §2.65(b) to issue an "Examiner’s Action Continuing a Final Refusal – 30 day Letter" that gives the applicant additional time to resolve the matters that remain outstanding. See TMEP §718.03(b). The Office action must not include a six-month response clause. This additional time should be granted only if the record indicates that the applicant can place the application in condition for approval by completing the response. See In re P.T. Polymindo Permata, 109 USPQ2d 1256 (Dir USPTO 2013). Granting additional time to complete a response under 37 C.F.R. §2.65(b) does not extend the deadline for filing an appeal to the Board (or petition to the Director under 37 C.F.R. §2.63(b)(2), if appropriate). See 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a).
If the examining attorney believes that an examiner's amendment (see TMEP §§707 et seq.) will immediately put the application in condition for publication or registration, the examining attorney should attempt to contact the applicant to obtain authorization to issue an examiner's amendment.
715.03(a)(2)(D) No Time Remaining in Response Period – Abandon for Incomplete Response
If the examining attorney is not persuaded by the request for reconsideration and the applicant has not made a good-faith effort to comply with the outstanding requirements and/or to overcome all outstanding refusals, and there is no time remaining in the response period, the application must be deemed abandoned due to incomplete response. The examining attorney must issue an "Abandoned Due to Incomplete Response" action.
If the examining attorney denies the request for reconsideration and holds the application abandoned for incomplete response, the applicant may file a petition to the Director under 37 C.F.R. §2.146 to reverse the examining attorney’s holding of abandonment. However, the Director will reverse the examining attorney’s action on petition only where there has been clear error or an abuse of discretion. In re GTE Educ. Servs., 34 USPQ2d 1478, 1479-80 (Comm'r Pats. 1994); In re Legendary Inc., 26 USPQ2d 1478, 1479 (Comm’r Pats. 1992); TMEP §1713.01. The unintentional delay standard of 37 C.F.R. §2.66 does not apply in this situation. See TMEP §§1713.02 and 1714.01(f)(ii)(A).
715.03(a)(2)(E) Responses Signed by Unauthorized Persons, Unsigned Responses, TEAS Responses Consisting Only of a Signature, and TEAS Responses Missing Significant Data or Attachments
If an examining attorney receives a response to a final action signed by an unauthorized person, an unsigned response to a final action, a TEAS response to a final action that consists only of a signature, or a TEAS response to a final action missing significant data or attachments, the examining attorney should not hold the application abandoned for failure to respond completely. If there are more than 30 days remaining in the response period, the examining attorney must issue a "Request for Reconsideration Denied – No Appeal Filed - Time Remaining" (or, if appropriate, "SU - Request for Reconsideration Denied – No Appeal Filed - Time Remaining"). If there are fewer than 30 days remaining in the response period, the examining attorney must issue an "Examiner’s Action Continuing a Final Refusal – 30 day Letter" that gives the applicant additional time to complete the response, with an appropriate explanation. In either case, the Office action must not include a six-month response clause. See TMEP § 705.08. Granting additional time to complete a response under 37 C.F.R. §2.65(b) does not extend the deadline for filing an appeal to the Board (or petition to the Director under 37 C.F.R. §2.63(b)(2), if appropriate). See 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a).
If the applicant then fails to submit a complete response (or a request for reconsideration) that resolves all outstanding issues, or fails to respond, the examining attorney must hold the application abandoned for failure to file a complete response. Thus, after providing the applicant one opportunity to perfect, if the applicant fails to do so within the six-month period (or the additional 30 days), the examining attorney must then follow the standard procedure regarding incomplete responses. See TMEP §718.03.
715.03(b) Examining Attorney’s Action When New Issue or New Evidence is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
If the request for reconsideration includes an amendment that presents a new issue, whether related to the final refusal or not, the examining attorney must issue a nonfinal action with a six-month response clause that addresses the new issue and maintains the final refusal. For example, if the applicant’s request for reconsideration contains a §2(f) claim of acquired distinctiveness in response to a final §2(e)(1) refusal, and the claim fails to place the application in condition for approval, the examining attorney must issue a nonfinal action. See TMEP §714.05(a)(i). However, if the applicant withdraws a prior amendment submitted in response to a refusal or requirement made by the examining attorney in an Office action (e.g., an amendment to the Supplemental Register or §2(f) claim of acquired distinctiveness submitted in response to a §2(e)(1) refusal or a disclaimer submitted in response to a requirement), this does not raise a new issue. See TMEP §§715.03(a)(2)(A) and 715.04(a).
Whenever the examining attorney issues a new nonfinal action after review of an applicant’s request for reconsideration, the Office action should explain that the applicant must respond to all requirements or refusals within six months of the issuance date of the action, but that the applicant should not file an appeal to the Board because an appeal would be premature under 15 U.S.C. §1070 and 37 C.F.R. §2.141(a). If the applicant’s response to the new nonfinal action does not resolve all outstanding requirements or refusals and put the application in condition for publication or registration, the examining attorney must issue an "Examiner’s Subsequent Final Refusal" with a six-month response clause. This provides the applicant the opportunity to file an appeal.
Evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a new final or nonfinal action. In re GTE Educ. Servs., 34 USPQ2d 1478, 1480 (Comm'r Pats. 1994) (finding examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, because the substitute specimens submitted with the request were deficient for the same reason as original specimens).
If the request for reconsideration does not raise a new issue, but presents new evidence that is significantly different from evidence previously submitted, the examining attorney must issue an "Examiner’s Subsequent Final Refusal," with a six-month response clause. This provides applicant with the opportunity to respond before filing an appeal. Any response to the subsequent final refusal will be treated as a new request for reconsideration and processed according to the guidelines set forth in TMEP §§715.03–715.03(b).
Example: If an applicant files an executed consent agreement in response to a final refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney must issue an "Examiner’s Subsequent Final Refusal." However, the examining attorney should not issue a subsequent final refusal if the applicant merely states that it is negotiating a consent agreement. See TMEP §714.05(d).
Example: The examining attorney must issue an "Examiner’s Subsequent Final Refusal" if the applicant asserts unity of control (see TMEP §1201.07 ) in response to a final refusal under §2(d), and the examining attorney determines that unity of control has not been established. See TMEP §714.05(d).
Submission of new arguments in response to the same refusal or requirement does not raise a new issue that requires the examining attorney to issue a subsequent final or nonfinal action. Generally, if the same refusal or requirement was made before, the examining attorney does not have to issue a subsequent final or nonfinal action.
See TMEP §§714.05–714.05(f) for further information about delineating new issues that require issuance of a nonfinal action.
Sometimes action on an application is suspended after a final refusal has issued. If the grounds for refusal remain operative after the application is removed from suspension and no new issues have been raised, the examining attorney must issue an "Examiner’s Subsequent Final Refusal," with a six-month response clause. See TMEP §716.06.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).
715.03(c) Time for Appeal Runs from Issuance Date of Final Action
Filing a request for reconsideration does not stay the time for responding to a final refusal. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.64(b), 2.142(a). If the examining attorney denies an applicant’s request for reconsideration, the deadline for filing a notice of appeal to the Board (or petition to the Director if permitted by 37 C.F.R. §2.63(b)(2)) runs from the issuance date of the final action. If this deadline has expired and the applicant has not filed a notice of appeal, the application will be abandoned due to an incomplete response. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). The applicant may not file a petition to revive under 37 C.F.R. §2.66, based on unintentional delay. See TMEP §1714.01(f)(ii)(A). The applicant’s recourse is to file a petition to the Director under 37 C.F.R. §2.146 to reverse the examining attorney’s holding of abandonment. However, the Director will reverse the examining attorney’s action on petition only where there has been clear error or an abuse of discretion. See TMEP §1713.01.