USPTO Proposes Three-Month Deadline and Electronic Response to Final Refusal

On February 14, 2007, The United States Patent and Trademark Office (‘‘USPTO’’) proposed amending 37 CFR 2.64 to require a request for reconsideration of an examining attorney’s final refusal or requirement to be filed through the Trademark Electronic Application System (‘‘TEAS’’) within three months of the mailing date of the final action. Comments must be received by April 16, 2007 to ensure consideration.

According to the USPTO:

Under the current version of the rule, wherein the applicant may file a request for reconsideration at any time between the final action and the six-month deadline for appealing or petitioning, many applicants simultaneously seek reconsideration and file an appeal. Because the examining attorney loses jurisdiction over the application upon the filing of an appeal to the TTAB, this simultaneous pursuit of reconsideration and appeal often necessitates a remand by the TTAB to the examining attorney for a decision on the request for reconsideration. If the request is denied, then the case is transferred back to the TTAB. If the request is granted, and the
examining attorney reconsiders the final action, the appeal or petition may become moot. The need for these remands and transfers contributes to the burden on the applicant and the USPTO, and prolongs the pendency of the case.

In order to eliminate some appeals and petitions and reduce the need for these remands and transfers, the proposed rule provides that a request for reconsideration must be filed within
three months of the final action, while the six-month period for appeal or petition remains unchanged. . . .

The proposed rule still affords applicants the opportunity to submit amendments for the full six-month period from the date of the final action, and maintains the practice under the current rule that such amendments are entered if they comply with the
applicable rules and statutory provisions. . . .