711.01(b) Time for Filing a Request for Extension of Time to Respond
To be considered timely, a complete request for an extension of time to respond must be received by the USPTO on or before the end of the three-month response period. 37 C.F.R §2.62(a)(2).
In addition, the request for an extension of time to respond must be filed before filing any response. In the context of a request for an extension of time to respond, a response includes a notice of appeal to the Trademark Trial and Appeal Board. Therefore, no extension of time to respond will be granted following the filing of a notice of appeal as to the preceding final Office action. However, the filing of an amendment to allege use (see TMEP §1104), a request to divide (see TMEP §1110.08), or a Change Address or Representation (CAR) form does not generally constitute a response to an outstanding Office action. See also TMEP §719 regarding communications that are treated as "non-responsive communications."
Furthermore, a request for an extension of time to respond only extends the response deadline for the particular Office action to which it applies. Each Office action that issues with a new three-month response period sets a new time for filing an extension of time to respond as to that Office action. For example, a supplemental Office action (see TMEP §711.03) or a subsequent final action in which an appeal has not previously been filed (see TMEP §715.03(b)) are Office actions that begin a new three-month response period and therefore set a new time for filing a request for an extension of time to respond. See TMEP §711.02 regarding Office actions that do not begin a new response period and where the response period runs from the date of a previous Office action and §715.04(b) regarding subsequent final actions that do not begin a new response period.
Consider the following examples:
Example: If an Office action was issued on December 6, 2022, and the applicant timely files a complete request for an extension of time to respond on or before March 6, 2023, prior to filing a response, the applicant has until June 6, 2023, to file a response. If the applicant later files a response within the extended response period and a notice of incomplete response must issue, the relevant deadline is 30 days from the issuance of the notice of incomplete response or June 6, 2023, whichever is longer.
Example: An Office action was issued on December 6, 2022, and the applicant filed a response on December 13, 2022. No timely request for an extension of time to respond was filed prior to the response. If the examining attorney issues a 30-day letter following review of the response, the relevant deadline is 30 days from the issuance of the 30-day letter or the remainder of the original three-month response period (March 6, 2023), whichever is longer. No request for an extension of time to respond may be filed because the applicant has already submitted a response.
Example: If a final Office action was issued on December 6, 2022, and the applicant files a request for reconsideration on March 6, 2023, but did not file a request for an extension of time to respond prior to filing the request for reconsideration, the end of the response period and time for filing an appeal is March 6, 2023. No request for an extension of time to respond may be filed because the applicant has already filed a response.
Similarly, if the applicant filed a notice of appeal on or before March 6, 2023, the notice of appeal constitutes a response, and no request for an extension of time to respond may be filed.
If the examining attorney later issues a nonfinal Office action, the nonfinal Office action begins a new three-month response period. The applicant may file a request for an extension of time to respond as to that Office action, provided it is filed before the applicant submits a response.