USPTO Implements Shorter Deadlines to Respond to Office Actions
On December 3, 2022, the USPTO is implementing shorter response times to most Office Actions as the last part of the Trademark Modernization Act. On or after that date, Office Actions issued during examination will have a three-month response period, instead of the current six months. This applies to applications based on actual use – 1(a), intent-to-use – 1(b), foreign application – 44(e), or foreign registration – 44(d). The shorter period will not apply to applications based on the Madrid Protocol, which will remain at six months calculated from the mailing date of the Office Action. Post-registration Office Actions will not get the shorter Office Action period implemented until October 7, 2023.
A three-month extension can be requested upon payment of a $125 fee. This extension can only be requested on or before the initial deadline, calculated from the issue date of the Office Action. The new deadline will be calculated from the initial mailing date, not from the date of the request. No extensions are available for Madrid Protocol applications.
By shortening the response times, the USPTO hopes to decrease the time it takes to get a registration. It also provides the flexibility to request a longer response period when merited, perhaps due to the complexity of the issues raised in the Office Action, or if the time is needed to obtain instructions. Of course, sometimes there also can be strategic reasons to request an extension.
If you have any questions, please contact Kevin Thompson at 312 368-0100. If you would like to schedule a meeting with Kevin, please follow the link at https://zcal.co/kevinthompson.
