1713 Petition to Reverse Holding of Abandonment for Incomplete Response
1713.01 Standard of Review
Under 37 C.F.R. §2.65(a), an application may become abandoned when an applicant’s response, although received within the six-month response period, is incomplete. See TMEP §§718.03–718.03(b) regarding incomplete responses.
When an examining attorney holds an application abandoned because the applicant’s response is incomplete, the applicant may petition the Director to reverse the holding under 37 C.F.R. §2.146. See TMEP §718.02(a) regarding partial abandonment for failure to respond completely to a final refusal or final requirement that is expressly limited to only certain goods/services/class(es) and TMEP §718.03(a) for failure to respond completely in all other situations.
However, the Director will reverse the examining attorney’s holding of abandonment only if 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. In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257 (Dir USPTO 2013); 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). Note: The "unintentional delay" standard for reviving abandoned applications pursuant to 37 C.F.R. §2.66(a) does not apply to applications held abandoned because a response was deemed incomplete under 37 C.F.R. §2.65(a). See TMEP §1714.01(f)(ii)(A).
1713.02 Failure to Respond to Notice of Incomplete Response or Denial of Request for Reconsideration with No Appeal Filed
If an examining attorney issues an "Examiner’s Non-Responsive Amendment" action, "Examiner’s Action Continuing a Final Refusal – 30 day Letter" (or, if appropriate, "SU – Examiner’s Action Continuing a Final Refusal – 30 day Letter"), or a "Request for Reconsideration Denied – No Appeal Filed - Time Remaining" (or, if appropriate, "SU - Request for Reconsideration Denied No Appeal Filed - Time Remaining") action, and the applicant does not receive the action or fails to timely respond due to some extraordinary circumstance, the applicant may file a petition to the Director to 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).
If the applicant submits the response with the petition and the petition is granted, the Director will instruct the examining attorney to review the response. If the applicant did not receive the action and does not submit a response with the petition and the petition is granted, the USPTO will re-issue the action and provide the applicant with a new 30-day period in which to respond.
However, if an examining attorney issues an Office action granting an applicant additional time to complete a response when it appears that a response is signed by an improper party, and the applicant fails to respond or to complete the response within the time granted or remaining, the examining attorney must issue an "Abandoned Due to Incomplete Response" action. See TMEP §§715.03(a)(ii)(E), 718.03, 718.03(b). If the applicant wishes to submit evidence that an authorized party signed the original response, the applicant may petition the Director to exercise supervisory authority and reverse the holding and reinstate the application under 37 C.F.R. §2.146(a)(3). If the evidence establishes that a proper party signed the response, the Director will grant the petition and instruct the examining attorney to review the response. If, however, the evidence establishes that the response was signed by an unauthorized party, the Director will find that (1) the application should have been abandoned for failure to respond, (2) the petition will be construed as a petition to revive under 37 C.F.R.§2.66, (3) revival based on unintentional delay is proper, and (4) a response signed by a proper party must be submitted. To expedite revival in this situation, a properly signed response should be submitted with the petition.
The granting of the petition does not extend the time for filing a notice of appeal or filing a petition to review the examining attorney’s action under 37 C.F.R. §2.63(a) and (b). 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a). Therefore, in most circumstances, if the response does not overcome all outstanding refusals or satisfy all outstanding requirements, the application will again be abandoned and an "Abandoned Due to Incomplete Response" notice will issue (but see TMEP §1714.01(a)(ii) regarding petition to revive for failure to respond to a final action).