1109.16(d) Response to Office Action Required Within Six Months of Issuance Date Regardless of Expiration Date of Period for Filing the Statement of Use

In limited circumstances, when the applicant files a timely "insurance" extension request in conjunction with or after filing a statement of use (see TMEP §§1108.03–1108.03(a), 1109.16(c)) and the examining attorney has issued an Office action, the six-month period for response to the Office action will expire before the statutory deadline for filing the statement of use. To avoid abandonment, the applicant must respond within six months of the issuance date of the Office action, regardless of the expiration date of the time for filing the statement of use.

If the time for filing the statement of use expires after the time for responding to a nonfinal Office action, and the applicant believes that it can cure a deficiency raised in the Office action before expiration of the time for filing the statement of use, the applicant should timely respond to the Office action, stating in the response that it intends to comply with the statutory requirements for filing the statement of use on or before the expiration of the statutory filing period.

If the applicant files such a response, the examining attorney must not suspend the application. Instead, the examining attorney must make final any outstanding refusal or requirement. The applicant will then have six months from the issuance date of the final Office action to cure statutory deficiencies. Of course, applicant still must comply with the statutory requirements for filing the statement of use before the expiration date of the deadline for filing the statement of use.

Example: If the deadline for filing the statement of use expires on July 3, 2009, and the examining attorney issues a final Office action requiring substitute specimens on March 4, 2009, the applicant has until September 4, 2009 to file the substitute specimens, but the applicant must verify that the specimens were in use in commerce on or before July 3, 2009.

If the applicant files a proper response to the final Office action within six months of the date of issuance, and complies with the statutory requirements for filing the statement of use before the expiration of the period for filing the statement of use, the examining attorney will withdraw the refusal based on non-compliance with the statutory requirements for filing the statement of use.

If the time for filing the statement of use expires after the time for responding to a final Office action, and the applicant can overcome any grounds for refusal or comply with any requirement raised in the final action before expiration of the time for filing the statement of use, but not within the time for responding to the final Office action, the applicant must still file a timely response to the Office action. The response must state that the applicant intends to comply with the statutory requirements for filing the statement of use on or before the expiration of the statutory filing period and request suspension of the application. The examining attorney will then suspend the application for only the amount of time remaining in the statutory period for filing the statement of use. The applicant will then have until the end of the extension period to overcome any grounds for refusal or comply with any requirement.

Example: The notice of allowance issues on September 30, 2010 and a statement of use and/or extension request is due on or before March 30, 2011. The applicant files a statement of use on October 15, 2010. On November 5, 2010, the examining attorney issues an Office action regarding the acceptability of the specimen and the applicant responds on November 8, 2010 but does not correct the specimen deficiency. The examining attorney then issues a final Office action on November 29, 2010 regarding the specimen issue. If the applicant files a timely "insurance" extension request on or before March 30, 2011, this would extend the time to perfect the statement of use to September 30, 2011. However, the applicant must still respond to the final Office action by May 29, 2011 (i.e., within six months of issuance of the final Office action). The response must include a request to suspend the application or the application will be abandoned for failure to respond. The examining attorney would then suspend the application until September 30, 2011, which is the date of expiration of the extension period and the deadline for complying with the statutory requirements for a statement of use.

If the applicant files a response to the final Office action prior to the expiration of the statutory period for filing a statement of use, and the response overcomes the grounds for refusal and/or complies with any requirement, the examining attorney will remove the application from suspension and withdraw the refusal.

If the applicant files a response to the final Office action prior to expiration of the statutory period for filing the statement of use, but the response does not overcome the grounds for refusal and/or comply with any requirement, the examining attorney must issue an "Examiner’s Subsequent Final Refusal," thereby reissuing the final refusal, and the applicant will have six months to respond. See TMEP §716.06.