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New USPTO Rules Shorten Office Action Response Times
The United States Patent and Trademark Office (USPTO) issued new rules concerning the timeframe within which responses to trademark Office Actions must be filed. The new rules come into effect beginning on December 3, 2022.
The longstanding timeframe for response to Official Actions issued by Trademark Examining Attorneys had been six months from issuance of the Official Action. Effective December 3, 2022, applicants will have a period of three months to respond to Official Actions, with an extension for an additional three months available on request and payment of a $125 extension fee.
The only exceptions to the six-month response deadline are: 1) Requests for Extension of Protection to the United States of International Registrations filed under the Madrid Protocol, which continue to have a six-month response time. Under its Madrid Protocol treaty obligations, the USPTO is required to give applicants six months to respond to Official Actions; and 2) Responses to Post-Registration Official Actions, which will also continue to have a six-month response period until October 7, 2023, at which point the timeframe will be reduced to three months.
The purported rationale for reducing the time to respond to Official Actions is to decrease the time it takes a mark to mature to registration and to provide flexibility for responding to more complex office actions. Given that the USPTO currently estimates the time between filing and examination to be on the order of six months (with actual processing times being closer to nine months from filing), it will be interesting to see whether the application processing time is in fact reduced and if so, whether the reduction in time comes at the cost of quality of examination because of additional time pressure being placed on the Trademark Examining Corps.
