MPEP § 704.12(c) — Treatment of an Incomplete Reply (Annotated Rules)
§704.12(c) Treatment of an Incomplete Reply
This page consolidates and annotates all enforceable requirements under MPEP § 704.12(c), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Treatment of an Incomplete Reply
This section addresses Treatment of an Incomplete Reply. Primary authority: 37 CFR 1.105 and 37 CFR 1.135(c). Contains: 1 permission and 2 other statements.
Key Rules
Incomplete or Non-Responsive Reply
An incomplete reply to a 37 CFR 1.105 requirement in a pending application or reexamination proceeding is handled in the same manner as an amendment not fully responsive to a non-final Office action. See 37 CFR 1.135(c) and MPEP § 714.03. Where the reply is a bona fide reply, form paragraph 7.95 may be used. Note that a 37 CFR 1.105 requirement, even absent an action on the merits, is an Office action.
Form Paragraph Usage
An incomplete reply to a 37 CFR 1.105 requirement in a pending application or reexamination proceeding is handled in the same manner as an amendment not fully responsive to a non-final Office action. See 37 CFR 1.135(c) and MPEP § 714.03. Where the reply is a bona fide reply, form paragraph 7.95 may be used. Note that a 37 CFR 1.105 requirement, even absent an action on the merits, is an Office action.
First Action on Merits
An incomplete reply to a 37 CFR 1.105 requirement in a pending application or reexamination proceeding is handled in the same manner as an amendment not fully responsive to a non-final Office action. See 37 CFR 1.135(c) and MPEP § 714.03. Where the reply is a bona fide reply, form paragraph 7.95 may be used. Note that a 37 CFR 1.105 requirement, even absent an action on the merits, is an Office action.
Examiner Form Paragraphs
Examiner form paragraphs are standard language that you might see in an Office Action or communication from the USPTO. Examiners have latitude to change the form paragraphs, but you will often see this exact language.
The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2] . See 37 CFR 1.111 . Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ).
This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91 .
Citations
| Primary topic | Citation |
|---|---|
| First Action on Merits Form Paragraph Usage Incomplete or Non-Responsive Reply | 37 CFR § 1.105 |
| First Action on Merits Form Paragraph Usage Incomplete or Non-Responsive Reply | 37 CFR § 1.135(c) |
| First Action on Merits Form Paragraph Usage Incomplete or Non-Responsive Reply | MPEP § 714.03 |
| First Action on Merits Form Paragraph Usage Incomplete or Non-Responsive Reply | Form Paragraph § 7.95 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 704.12(c) — Treatment of an Incomplete Reply
Source: USPTO704.12(c) Treatment of an Incomplete Reply [R-10.2019]
An incomplete reply to a 37 CFR 1.105 requirement in a pending application or reexamination proceeding is handled in the same manner as an amendment not fully responsive to a non-final Office action. See 37 CFR 1.135(c) and MPEP § 714.03. Where the reply is a bona fide reply, form paragraph 7.95 may be used. Note that a 37 CFR 1.105 requirement, even absent an action on the merits, is an Office action.
¶ 7.95 Bona Fide, Non-Responsive Amendments
The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133).
Examiner Note:
This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91.