715.02    Action After Final Action

Once an action has been properly made final, the examining attorney normally should not change his or her position.  However, this does not mean that an applicant’s amendment or argument will not be considered after final action.  An amendment may be accepted and entered if it places the application in condition for publication or registration, or will put the application in better form for appeal (i.e., reduce the issues on appeal).  For example, an amendment requesting registration on the Supplemental Register or on the Principal Register under §2(f) may be a proper response to a final refusal of registration on the Principal Register in some circumstances.   See TMEP §§714.05(a)(i), 816.04, 1212.02(h).

The examining attorney should issue an examiner’s amendment (see TMEP §707─707.03 ) if it will immediately put the application in condition for publication or registration or reduce the issues on appeal.

If the applicant files a response that complies with all outstanding requirements and overcomes all outstanding refusals, the examining attorney should approve the application for publication or registration, as appropriate.

In the rare circumstance where the examining attorney determines that a final refusal should be withdrawn, even though the applicant has not submitted any further amendments or arguments after issuance of the final action, the examining attorney must withdraw the requirement or refusal and approve the application for publication or registration, if it is otherwise in condition for such action. The examining attorney must also promptly attempt to notify the applicant by telephone or email that the requirement or refusal is withdrawn, so that the applicant knows that filing an appeal is unnecessary, and must enter an appropriate Note to the File in the record.

The applicant may file a request for reconsideration of the final action that seeks to overcome any substantive refusals and/or comply with any outstanding requirements within six months of the issuance date of the final action.  However, filing a request for reconsideration does not stay or extend the time for filing a notice of appeal to the Board or petition to the Director under 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.63(b)(3).

See TMEP §716.06 regarding suspension after final action.