Supplemental Office Action Resetting Response Period

Sometimes the examining attorney must issue a supplemental

Office action that resets the period for response.  If the examining attorney discovers

after issuing an action that a refusal or requirement that should have been raised was

overlooked, the examining attorney must issue a supplemental Office action addressing

the issue and resetting the period for response.

See

TMEP §706

. The

examining attorney must also issue a supplemental Office action if a new issue arises

after the issuance date of a previous Office action (e.g., during examination of an

amendment to allege use).

If the examining attorney issues a supplemental Office

action, a new response period will begin running from the issuance date of the

supplemental action.

See

15 U.S.C. §1062(b)

. In a supplemental Office action, the

examining attorney should: (1) indicate that the action is supplemental to and

supersedes the previous action; (2) specifically identify all of the outstanding

refusals and/or requirements; and (3) include a response clause (

see

TMEP

§705.08

).

When the examining attorney must issue a supplemental

Office action in a §1 and/or §44 application to address a refusal or requirement that

should have been raised in the previous Office action, and the applicant was granted an

extension of time to respond to the previous Office action, the USPTO will refund the

fee for the extension of time to respond if the response period for the supplemental

Office action is earlier than the extended response period for the previous Office

action. The examining attorney will submit the request to TM Finance with the

information necessary for processing the refund. See

TMEP

§405.04

regarding refunds and

§711.01

regarding requests for an extension of time to

respond to an Office action.

In a §66(a) application, the examining attorney cannot

issue a new refusal 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)

;

TMEP §1904.03(a)

nformation necessary for processing the refund. See

TMEP

§405.04

regarding refunds and

§711.01

regarding requests for an extension of time to

respond to an Office action.

In a §66(a) application, the examining attorney cannot

issue a new refusal 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)

;

TMEP §1904.03(a)

.

See

TMEP

§717

regarding reissuing of Office actions.

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