When a patent or trademark application is received by the United States Patent and Trademark Office (“USPTO”), it is examined to determine whether or not deficiencies exist that would jeopardize the applicant’s right to protection. If deficiencies are found, the examiner will issue an office action informing the applicant of any reasons the application cannot be issued or registered.
Upon receipt of an office action, the applicant has an opportunity to submit a response that either defends their case or amends the application to comply with the examiner’s decision. The examiner will then re-examine the application with respect to the applicant’s response. If the application is still not in order for acceptance, a second office action will be issued. The examiner may declare on the second or any subsequent office action that the action is final (i.e., Final Office Action or Final Rejection).
When an office action is received from the United States Patent and Trademark Office, the date by which a response must be filed is calculated based on the mail date. For trademarks, the due date is six months from the mail date of the office action. There is no grace period available for late submission of a response to an office action for a trademark.
When an office action is issued for a patent application, the examiner will state the time period in which the applicant should reply. For US patents, this period is typically three months from the office action’s mail date. There are times, however, when an examiner may set a “shortened statutory period” for reply. Regardless of the time period set by the examiner, the applicant can always extend the deadline to up to six months (with payment of applicable fees).
When a final office action is issued, the applicant has two courses of action. They can either 1) respond to the office action or 2) appeal the examiner’s decision to the appropriate appeals board (TTAB for trademarks or BPAI for patents). For patents, if the applicant chooses to respond to the office action, the applicant may file an early response to the final office action within two months from the mail date of the final office action and the examiner will expedite the review process. The examiner will reconsider the application with respect to the response and either allow the application (if it has been placed in order for acceptance) or notify the applicant of deficiencies that still exist (this notification is called an Advisory Action). This process provides the applicant with the opportunity to evaluate the examiner’s disposition and decide whether they should submit a final response or appeal the decision.
* Important note about Advisory Actions: When an Advisory Action is issued, the shortened statutory period (see above) is reset to either the mail date of the Advisory Action or the original three month due date, whichever is later. While further extension periods are calculated from this “reset” date, the final response cannot be submitted later than six months from the mail date of the original final office action.
If the applicant chooses to appeal the examiner’s decision, the applicant must file a Notice of Appeal within three months from the mail date of the final office action (for patents). Once the applicant notifies the appropriate appeals board of their intention to appeal the examiner’s decision (Notice of Appeal), an appeal brief must be prepared and submitted within sixty days (for trademarks) or two months (for patents).
Request for Continued Examination (RCE): If prosecution in a patent application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth prior to the earliest of:
1) Payment of the issue fee;
2) Abandonment of the application; or
3) The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or the commencement of a civil action, unless the appeal or civil action is terminated.
Prosecution in an application is closed as used in this section means that the application is under appeal, or that the last office action is a final action, a notice of allowance, or an action that otherwise closes prosecution in the application.
A submission as used in this section includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If reply to an office action is outstanding, the submission must meet the reply requirements.
If an applicant files an RCE and fee, the prosecution in the application will be re-opened and any amendment submitted prior to the filing of the RCE will be entered and considered by the examiner.
Please note that an RCE is not the filing of a new application. Thus, the USPTO will not convert an RCE to a new application.
