711.03    Supplemental Office Action Resetting Response Period

Sometimes the examining attorney must issue a supplemental Office action that resets the period for response.  If the examining attorney discovers after issuing an action that a refusal or requirement that should have been raised was overlooked, the examining attorney must issue a supplemental Office action addressing the issue and resetting the period for response. See TMEP §706. The examining attorney must also issue a supplemental Office action if a new issue arises after the issuance date of a previous Office action (e.g., during examination of an amendment to allege use).

If the examining attorney issues a supplemental Office action, a new response period will begin running from the issuance date of the supplemental action. See 15 U.S.C. §1062(b). In a supplemental Office action, the examining attorney should: (1) indicate that the action is supplemental to and supersedes the previous action; (2) specifically identify all of the outstanding refusals and/or requirements; and (3) include a response clause (see TMEP §705.08).

When the examining attorney must issue a supplemental Office action in a §1 and/or §44 application to address a refusal or requirement that should have been raised in the previous Office action, and the applicant was granted an extension of time to respond to the previous Office action, the USPTO will refund the fee for the extension of time to respond if the response period for the supplemental Office action is earlier than the extended response period for the previous Office action. The examining attorney will submit the request to TM Finance with the information necessary for processing the refund. See TMEP §405.04 regarding refunds and §711.01 regarding requests for an extension of time to respond to an Office action.

In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO.  15 U.S.C.  §1141h(c); TMEP §1904.03(a).

See TMEP §717 regarding reissuing of Office actions.