As part of the Trademark Modernization Act discussed in our December 2021 Trademark Alert, the US Patent and Trademark Office (“USPTO”) will reduce the time to respond to a pending application Office Action from six months to three months beginning on December 3, 2022.
This new reduced timeline applies only to Office Actions issued on or after December 3, 2022. However, the new timeframe will NOT apply to Section 66a Applications (those based on International Registrations) and will not immediately apply to post-registration Office Actions. Instead, a three-month response period for post-registration Office Actions will begin next year, on October 7, 2023.
The initial deadline is extendable one time for an additional three months (for a total of six months from the issuance of the Office Action). There is a government filing fee of $125 for the extension.
If you miss the deadline to respond to the Office Action and do not file the extension, the application will become abandoned. However, it still may be possible to file a petition to revive if certain requirements are met.
What does this mean?
The law should enable the USPTO to address simple issues more quickly, thus expediting the application process. However, you should pay close attention to reported response deadlines since they may be sooner than you were used to previously.
Also, because some Office Actions are complex and may require more response time, you should be prepared for the possibility of incurring a $125 government filing fee to extend the initial deadline.