717    Reissuing an Office Action

If there was a USPTO error when issuing an Office action, for example, it was sent to the wrong address, the USPTO will reissue the Office action by 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 is no time remaining in the response period and the application has abandoned, the applicant may file a request for reinstatement.

If there was no USPTO error, the USPTO will inform 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 new Office action will not be sent. If there is no time remaining in the response period, the applicant may file a petition to revive the application.

A USPTO error means that the USPTO either entered the correspondence address incorrectly or failed to enter a proper request to change the correspondence address filed before the date on which the action was issued.  The transmittal of correspondence or 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, and should do so using the TEAS Change of Correspondence Address form.  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 emailed notification of an issued Office action is returned as undeliverable, the USPTO will not send a paper copy of the Office action. See TMEP §304 regarding email and TMEP §403 for more information about returned correspondence. Trademark applicants and registrants should monitor the status of their applications and submissions in support of maintenance of registrations by checking the status every six months between the filing date of the application or maintenance submission and the issuance of a registration or notice of acceptance. See TMEP §§108.03 and 1705.05 regarding due diligence and the duty to monitor status.

If a mailed Office action is returned to the USPTO because the United States Postal Service was not able to deliver it, the returned action and envelope will be scanned into the electronic record.  See TMEP §717 regarding the applicable procedure if an Office action is sent to the wrong address due to a USPTO error. If no communication from the applicant is received within the period for response, the application will be abandoned. See TMEP §§1712–1712.02(b)(iii) regarding requesting reinstatement of applications and registrations abandoned due to USPTO error and TMEP §§1714–1714.01(f)(i) concerning filing a petition to revive an application abandoned due to unintentional delay.

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 if the applicant can meet the timeliness requirements in 37 C.F.R. §2.66(a).  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 documenting the discussion.

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.