717    Reissuing an Office Action

Sometimes, an Office action must be reissued because the action has been returned as undeliverable or because the applicant notifies the USPTO that the applicant did not receive the Office action.  In these situations, the USPTO will not extend the deadline for response, unless the Office action was sent to the wrong address due to a USPTO error.

If there was a USPTO error, the USPTO will issue an Office action notifying the applicant that it may view and print the Office action via the TSDR portal on the USPTO website at http://tsdr.uspto.gov/.  The applicant will be given a new response period.

If there was no USPTO error, the USPTO will issue an Office action notifying the applicant that it may view and print the original Office action via the TSDR portal on the USPTO website, but that the deadline for applicant’s response will not be extended.

A "USPTO error in sending the Office action to the wrong address" means that the USPTO either entered the correspondence address incorrectly or failed to enter a proper notice of change of address filed before the date on which the action was issued.  The transmittal of a response on letterhead bearing a new address is not a proper notice of change of address.  The applicant must specifically instruct the USPTO to change the correspondence address.  37 C.F.R. §2.18(b).  Applicants and attorneys have a duty to maintain a current and accurate correspondence address.  This also applies to e-mail addresses, if the applicant has authorized the USPTO to send correspondence by e-mail.  37 C.F.R. §2.18(b)(1).   See TMEP §§609.02–609.02(f).

See TMEP §608.02 regarding Office actions sent to individuals who are subsequently excluded from practice before the USPTO, TMEP §717.01 regarding Office actions returned as undeliverable, and TMEP §717.02 regarding non-receipt of Office actions.

717.01    Returned Office Action

If an Office action is returned to the USPTO because the United States Postal Service was not able to deliver it, or because an outgoing e-mail communication was undeliverable, USPTO personnel will review the record to determine whether the correspondence address was entered correctly and/or whether the applicant has filed a notice of change of address.  See TMEP §717 regarding the reissuance of an Office action sent to the wrong address due to a USPTO error.

If the USPTO is ultimately unsuccessful in delivering or redelivering the Office action, the returned action and envelope will be scanned into the TICRS database.  If no communication from the applicant is received within the period for response, the application will be abandoned.

If outgoing e-mail is returned as undeliverable, the USPTO will send a paper copy to the correspondence address of record.  See TMEP §304 regarding e-mail and TMEP §403 for more information about returned correspondence.

717.02    Non-Receipt of Office Action

If an applicant notifies the USPTO that the applicant did not receive an action, either before or after the expiration of the response period, the examining attorney must check to determine whether the action was sent to the correspondence address of record.   See TMEP §§609–609.04.

If the Office action was sent to the correspondence address of record, and there is time remaining in the response period, the examining attorney should direct the applicant to view the full record on the TSDR portal on the USPTO website, and advise the applicant that the deadline for response runs from the original issuance date and that a response must be received in the USPTO before this deadline to avoid abandonment.  If the response period has expired, the examining attorney should advise the applicant that the application is abandoned, and that the applicant may file a petition to revive under 37 C.F.R. §2.66.  See TMEP §§1714–1714.01(g) regarding petitions to revive.  In either situation, the examining attorney should enter an appropriate Note to the File in the application record.

If there is evidence in the record that the USPTO sent the Office action to the wrong address due to a USPTO error ( see TMEP §717), the USPTO will reissue the action and provide the applicant with a new response period.  The examining attorney should first ensure that the correspondence address has been corrected, and then e-mail the internal TM Clerical Support mailbox, stating that the action was sent to the wrong address, and requesting that the action be reissued with a new response period.  The deadline for response will run from the new issuance date.  If the application had been abandoned, it will be reinstated.  See TMEP §1712.01 regarding reinstatement of applications that are abandoned due to USPTO error.