3 Month Deadline for Trademarks

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As you may know, the United States Patent and Trademark Office (USPTO) issued a new examination guide regarding the changes being made to office action response periods for section 1 and/or section 44 applications. As of December 3, 2022, trademark applicants have three months (with an optional three-month extension), instead of the previous six months, to respond to those office actions subject to the new deadline. This change doesn’t apply to Madrid Protocol section 66(a) applications. AppColl will update all accounts with these changes on December 02, 2022 as follows:

 

  1. Two new extendable external deadline task types called “Respond to Non-Final Office Action – 3 Month Deadline (TM)” and “Respond to Final Office Action – 3 Month Deadline (TM)” will be created with a completion state of “Extension Filed”. 

 

    • These task types will trigger when a corresponding “Receive [Non-]Final Office Action (TM)” task is created with a reference (mailing) date on or after December 3, 2022 AND the value of the FilingBasis field in the corresponding matter is not "66(a): WIPO Registration".

 

  1. The existing “Respond to Non-Final Office Action (TM)” and “Respond to Final Office Action (TM)” task types will be renamed to “Respond to Non-Final Office Action – Final Deadline (TM)” and “Respond to Final Office Action – Final Deadline (TM)” respectively. If these task types do not exist, they will be created. 

 

  • These task types will trigger when A) a corresponding “Respond to [Non-]Final Office Action – 3 Month Deadline (TM)” task completes with an “Extension Filed” status OR B) when a corresponding “Receive [Non-]Final Office Action (TM)” task is created AND the reference (mailing) date is before December 3, 2022 OR the value of the FilingBasis field in the corresponding matter is "66(a): WIPO Registration".

 

Please note that “Respond to [Non-]Final Office Action (TM)” tasks have been renamed and will appear in task lists as “Respond to [Non-]Final Office Action – Final Deadline (TM)”. You may need to update reports that relied on the old name.

 

If you have made any edits to the triggers for any of the existing trademark office action task types (not recommended), they may need to be re-added as all existing triggers will be deleted during this process.

 

If you have any questions please contact AppColl Support.

 

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