204.03 Examining Attorney’s Handling of Applications that Are Erroneously Accorded a Filing Date
In rare situations, an application under §1 or §44 that does not meet the minimum requirements of 37 C.F.R §2.21(a) for receipt of a filing date may be inadvertently referred to an examining attorney for examination.
Examining Attorney Discovers Error Before Taking Action. If the examining attorney discovers the error before issuing an action in the case, then the examining attorney should have the application declared informal. See TMEP §204. The USPTO will cancel the filing date and serial number, refund any filing fee submitted, and send a notice to the applicant explaining why the application is defective. See TMEP §204.01.
Examining Attorney Discovers Error After Taking Action. However, if the examining attorney discovers that the application as filed did not meet the minimum requirements for receipt of a filing date after issuing an action, the examining attorney must issue a supplemental Office action refusing registration on the ground that the application was not eligible to receive a filing date. Any outstanding refusals and requirements must be maintained and incorporated into the supplemental Office action. The applicant will be given three months to respond to the Office action, with an option for applicant to extend the deadline by requesting one three-month extension of the time to respond. See TMEP §§711-711.03 regarding the deadline for response to an Office action. If the applicant fails to perfect the filing-date requirements within the response period, the application is void. If a filing fee was submitted with the original application, the examining attorney must have the filing fee refunded and update the USPTO’s automated records to indicate that the application is abandoned.
If the applicant complies with the filing-date requirements within the response period, the application will receive a new filing date as of the date on which the applicant satisfied all minimum filing-date requirements. In such a case, the examining attorney must conduct a new search of the USPTO records for conflicting marks, and issue another Office action if necessary.
If the supplemental Office action was issued because the EFT or credit-card payment was refused or charged back by a financial institution, the examining attorney must treat a response that addresses any outstanding refusals and requirements, but does not include the required fee, as an incomplete response, and must issue a notice of incomplete response granting the applicant 30 days, or to the end of the response period for the previous Office action, whichever is longer, to perfect the response. To issue a notice of incomplete response, the examining attorney must use the "Notice of Non-Responsive Amendment." If the applicant does not respond, or responds but does not submit the required fee, the application must be abandoned for incomplete response.
Permitted Paper Applications. If the supplemental Office action was issued because the check or money order submitted as payment of an application filing fee was returned to the USPTO unpaid, the examining attorney must treat a response that addresses any outstanding refusals and requirements, but does not include the required fee, as an incomplete response, and must issue a notice of incomplete response granting the applicant 30 days, or to the end of the response period for the previous Office action, whichever is longer, to perfect the response. See TMEP §301.01 regarding the limited exceptions for paper submissions. To issue a notice of incomplete response, the examining attorney must use the "Notice of Non-Responsive Amendment." If the applicant does not respond, or responds but does not submit the required fee, the application must be abandoned for incomplete response.