Notice Must Be Sent Within 18 Months

Within 18 months of the date the IB forwards a request

for extension of protection, the USPTO must transmit:

(1) A notification of refusal based on

examination;

(2) A notification of refusal based on the filing of

an opposition; or

(3) A notification of the possibility that an

opposition may be filed after expiration of the 18-month period.  If the USPTO

notifies the IB of the possibility of opposition, it must send the notification

of refusal within 7 months after the beginning of the opposition period, or

within one month after the end of opposition period, whichever is earlier.

15 U.S.C.

§1141h(c)

; Article 5.

If the USPTO does not send a notification of refusal

of the request for extension of protection to the IB within 18 months, the request

for extension of protection cannot be refused.

15 U.S.C.

§1141h(c)(4)

; Article 5(5); Regs. Rules 17(2)(iv),

18(1)(a)(iii).  If the USPTO sends a notification of refusal, no grounds of refusal

other than those set forth in the notice can be raised more than 18 months after the

date on which the IB forwards the request for extension of protection to the USPTO.

15 U.S.C. §1141h(c)(3)

.

If upon re-examination the examining attorney

determines a new ground of refusal exists that should have been raised in the first

Office action, a second Office action raising this new ground may be issued only if

time remains in the 18-month period.  In such a case, the examining attorney must

ensure that a notification of the new ground of refusal is sent to the IB.