Timing Considerations
Six-Month Response Time
Generally, applicants are given six (6) months from the date of the Office action in which to respond.[1]TMEP §§ 705.08, 711-711.02; 15 U.S.C. § 1062(b); 37 C.F.R. § 2.62(a) However, for anything other than the initial Office action, it is important not to assume one has six (6) months to respond. Sometimes, the time provided by the USPTO to respond runs from a previously issued Office action or from a different set period as stated in the Office action (sometimes 30 days). The deadline to respond will be set forth on the first page of a written Office action. Also, while an Examiner has no discretion to shorten or extend the six-month statutory period for responding to Office actions, the Examiner may have issued a supplemental action resetting the period for response (TMEP § 711.02). Also, if the Examiner has issued a “priority action” (defined below), it may be beneficial for applicant to respond more promptly, within 30 or 60 days as suggested by the Examiner, so that review of its response may be expedited and its application may proceed more quickly through the examination process.
No Extensions for Time to File a Notice of Appeal
The applicant may file a request for reconsideration after a final action within six months of its issuance date but this does not extend the time for filing a notice of appeal to the TTAB or petition to the Director for relief. The USPTO cannot extend the statutory deadline for filing an appeal. Thus to preserve the right to appeal if a concurrent request for reconsideration is unsuccessful, the applicant must file a notice of appeal (with the fee required by 37 C.F.R. §2.6) before the expiration of the six-month period for response to the final action or the application will be abandoned.
In determining the appropriate action to take upon receipt of a request for reconsideration, the Examiner must determine whether: (1) the applicant has timely filed a notice of appeal; and (2) the request for reconsideration presents a new issue.
Time Remaining in Response Period
Under TMEP § 715.03(a)(2)(B), if the applicant has made a good-faith, but incomplete, attempt to comply, and there is more than 30 days remaining in the response period, the Examiner must issue a writing to the applicant that essentially informs applicant of the time remaining in which to preserve its right to an appeal. To do so, the Examiner will issue a “Request for Reconsideration Denied – No Appeal Filed – Time Remaining” that: (1) acknowledges the request for reconsideration; (2) indicates that it is denied and explains why it does not overcome or resolve the final refusal; (3) states that the final refusal is maintained; and (4) advises the applicant that the time for appeal runs from the issuance date of the final Office action. The Examiner should advise the applicant that the applicant has the remainder of the response period to comply with any outstanding requirement and/or to file a notice of appeal to the TTAB.
If, however, the Examiner is not persuaded by the request for reconsideration and the applicant has not made a good-faith effort to comply with the outstanding requirements and/or to overcome all outstanding refusals, and there is no time remaining in the response period, the application must be deemed abandoned due to incomplete response. The Examiner must issue an “Abandoned Due to Incomplete Response” action.[2]TMEP § 715.03(a)(2)(D)
Time for Appeal Runs from Issuance Date of Final Action
It should be clear by now the importance of preserving an applicant’s right to appeal by timely filing a notice of appeal, and that filing a request for reconsideration or petitioning the Director for relief does not extend the time to do so.[3]TMEP § 715.03(c) The deadline for filing a notice of appeal to the TTAB or a petition to the Director runs from the issuance date of the final Office action. If this deadline has expired and the applicant has not filed a notice of appeal, the application will be abandoned due to an incomplete response.[4]15 U.S.C. §1062(b); 37 C.F.R. §2.65(a)