204.03 Examining Attorney’s Handling of Applications That Are Erroneously Accorded a Filing Date
Sometimes an application under §1 or §44 that does not meet the minimum requirements of 37 C.F.R. §2.21 for receipt of a filing date is erroneously referred to an examining attorney for examination. In this situation, if the examining attorney discovers the error before issuing an action in the case, then the examining attorney should have the application declared informal. The USPTO will cancel the filing date and serial number, refund any filing fee submitted, and send a notice to the applicant explaining why the application is defective. See TMEP §204.01.
If, however, an examining attorney discovers after issuing an action that the application as filed did not meet the minimum requirements for receipt of a filing date, then the examining attorney must issue a supplemental Office action, refusing registration on the ground that the application was not eligible to receive a filing date. Any outstanding refusals and requirements must be maintained and incorporated into the supplemental Office action. The applicant should be given six months to comply with all filing date requirements. If the applicant fails to qualify for a filing date within the response period, the application is void. If a filing fee was submitted with the original application, the examining attorney must have the filing fee refunded and update the USPTO’s automated records to indicate that the application is abandoned.
If the applicant complies with the filing date requirements within six months of the issuance of the examining attorney’s Office action, the application will receive a new filing date as of the date on which the applicant satisfied all minimum filing date requirements. In such a case, the examining attorney must conduct a new search of Office records for conflicting marks, and issue another Office action if necessary.
The examining attorney must treat a response that addresses any outstanding refusals and requirements, but does not include the required fee, as an incomplete response, and must issue a notice of incomplete response 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 of incomplete response, the examining attorney must use the "Examiner’s Non-Responsive Amendment." The notice must not include a six-month response clause. If the applicant does not respond by submitting the filing fee, the application must be abandoned for incomplete response.