1714.01(a)(i)    Response to Nonfinal Office Action

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’s nonfinal Office action are listed in 37 C.F.R. §2.66(b).  The petition must include all of the following:

  • (1) The petition fee required by 37 C.F.R. §2.6;
  • (2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the response on or before the due date was unintentional.  The statement does not have to be verified; and
  • (3) A properly signed response to the Office action or a statement that the applicant did not receive the Office action or the notification that an Office action issued.  

Office Actions With a Three-month Response Period and No Request for an Extension of Time to Respond Was Granted. If the applicant does not assert non-receipt of the Office action or notification, in addition to the requirements set forth above, the petition must also include the fee under 37 C.F.R §2.6(a)(28)  for a request for extension of time to respond. However, payment of this fee with the petition to revive does not provide additional time to file a further response. A response is due at the time of filing the petition to revive.

If applicant asserts non-receipt of the Office action or notification, the fee under 37 C.F.R §2.6(a)(28)  is not required.

Office Actions With an Extended Response Period. The filing of an extension of time to respond under 37 C.F.R §2.62(a)(2)  (see TMEP §711.01) presumes knowledge of the issuance of the Office action. Accordingly, in the limited circumstance in which an applicant has been granted an extension of the response period to six months and does not file a response within the extended time period, the applicant may not claim non-receipt of the Office action in any petition to revive under 37 C.F.R §2.66. In such case, the applicant must provide a response to the outstanding Office action with the petition to revive. In the rare circumstance in which the applicant alleges that an extraordinary situation resulted in non-receipt of the Office action, even though a request for an extension of time to respond was filed, the applicant may provide proof of such alleged extraordinary situation in a petition to the Director under 37 C.F.R §2.146(a)(5).

Assertion of Non-Receipt of the Office Action. An applicant may not assert again that it did not receive the same Office action or notification in a subsequent petition. 37 C.F.R. §2.66(b)(3).

If the petition states that applicant did not receive the Office action, and the petition is granted, the examining attorney will conduct a new search and issue a new Office action and provide the applicant with a new response period, or, if all issues previously raised remain the same, after reviving the application, the USPTO will issue a notice to the applicant directing the applicant to view the previously issued Office action on the TSDR portal on the USPTO website at https://tsdr.uspto.gov/, and provide the applicant with a new response period in which to file a response. See TMEP §711 regarding the deadline for response to an Office action.

See TMEP §718.02(a) regarding a petition to revive a portion of an application that was partially abandoned and §1714.01 regarding situations in which a petition to revive fails to meet the procedural requirements of 37 C.F.R. §2.66(b)  (e.g., when there is no allegation that the applicant did not receive the Office action, but the petition does not include a proposed response).