TEAS RESPONSE TO OFFICE ACTION (ROA) TIPS

 

Through the ROA form, you can address all issues raised within an Office action, from  substantive refusals to informalities.  Following are various “tips” to facilitate your use of the ROA form (which, in turn, the USPTO hopes will lead to increased use of the form):

 

Attaching PDF image files

A reminder that the USPTO enhanced the TEAS ROA form on July 22, 2006 to accept PDF files (in addition to JPG files) for the following: evidence, specimens, foreign registration certificates, consents, miscellaneous information, and handwritten pen-and-ink signatures.  However, a mark image is only acceptable in the JPG format.  For PDF guidelines, see http://www.uspto.gov/teas/pdfguidelines.html.

 

Accessing hyperlinked HELP

If the purpose of either an initial ROA form wizard question or a field within the actual form is not clear, a reminder that all underlined terminology is hyperlinked to underlying help.  For example, if you are unsure whether “Yes” or “No” is the appropriate answer to the wizard question “Do you want to make any additional statement(s) of record to address a requirement, e.g., a disclaimer or claim of a prior registration?,” you could click directly on additional statement(s) to display the appropriate HELP text.  Therein, all of the possible additional statement options that would be presented within the actual form would be displayed for your review.

 

Cutting-and-pasting into the ROA form

Simply cutting-and-pasting a Word or Word Perfect document into any portion of the ROA form may cause the introduction of unwanted characters and/or prevent successful validation of the form, especially if the Word or Word Perfect documents are heavily formatted.  To avoid this problem, you should convert the Word or Word Perfect document to a text format, by using the "save as" and "save as type" features of Word or Word Perfect.  However, please note that because a text document does not allow for complex formatting, this approach may only be suitable when little or no formatting is desired, for example, with goods/services recitations.  No problem exists with text that is typed directly into the form, or text previously saved as an html document.  For heavily formatted text, such as may appear within arguments, see section headed “Attaching argument text as PDF file,” below.

 

Using spell check feature

The ROA form does not provide a “spell check” feature.  Therefore, the USPTO recommends that you first prepare entries, for example, goods/services recitations in a Word or Word Perfect document, which permits spell checking through that word processing tool.  Then, as described in the previous section, you can cut-and-paste correctly spelled text into the ROA form.

 

Attaching argument text as PDF file

As an alternative to using the existing ROA Text box for the entry of an argument (either through direct entry therein or cutting-and-pasting from a Word or Word Perfect document), you may use the form’s “Evidence Section” to attach a PDF file.

 

To use this approach, you must first answer “Yes” to both questions presented at #2 in the initial form wizard.  Then, within the Text box for entering an argument, you should enter the statement “Please see the actual argument text attached within the Evidence section,” followed by attachment of the full argument as a PDF file as “Evidence.”  While not, in a sense, truly “evidence,” the USPTO sanctions this workaround approach, since the retention of formatting facilitates the reading of the argument; also, images can be included within the PDF file, which is not possible when entry is attempted directly within the Text box.

 

HOWEVER, the only real constraint is that you must not submit an entire response as one single PDF attachment.  I.e., if specific portions of the ROA form exist for entering the information, such as a disclaimer or amended goods/services, those entries must be made within the appropriate area of the form, and not merely included as part of the PDF attachment.  The PDF should ONLY consist of the argument (and any images, if appropriate), and none of the other items necessary for a complete response to the issued Office action.

 

Re-accessing form wizard without losing work

Because the ROA form is produced directly by the answers provided within the initial form wizard, you must answer each of those questions carefully, to ensure that the retrieved form will display all applicable sections needed for a complete response to the issued Office action.  However, if after partially completing the ROA form you realize that a necessary section is missing (e.g., the “Additional Statements” section for entering a disclaimer), you must take certain steps to ensure that you do not lose existing work prior to returning to the form wizard: (1) complete all existing sections of the form, and then click the “VALIDATE” button, in order to “lock in” your existing work;  (2) click the “Go Back to Modify” button on the bottom of the Validation Page; (3) Scroll down from the top of the ROA form (to which you would have been returned after Step 2 to reach the very bottom of the form, and there click the “Go Back” button, to return to the initial form wizard (WARNING: At steps 2 and 3, you must use the buttons at the bottom of the form, and NOT the browser’s “Back” button); (4) make any necessary changes in the form wizard (i.e., switch from “No” to “Yes” wherever appropriate); (5) click “NEXT” at the bottom of the wizard to return to the form: and   (6) any new section(s) requested will now appear, but all work previously entered will also be displayed.

 

HOWEVER, please note that the above approach will only result in the saving of work in those areas of the form that did not begin with the direct display of information from the USPTO database, such as the argument section or the additional statement section.  For example, if you modify the listing of goods that displays within the form when first pulled up, and then return to the form wizard, the original listing of goods will then be re-displayed, because it will be retrieved in its original form from the USPTO database once the wizard is re-accessed.  On the other hand, if a new class is added, any goods/services entered therein will be retained, because the field display did not depend on the USPTO database in any way.

NOTE: The USPTO is exploring other design options that would ensure that all entries are retained, regardless of whether the “modified” entry was originally pulled into the form automatically from the USPTO database.  The USPTO is also considering “segmenting” the ROA form, to have the same “look and feel” of the initial application form (both “regular” and TEAS Plus versions), rather than being one “long” form.  In this proposed “segmented” approach, validation of each separate section would help “lock in” the section once validated, so that returning to the form wizard to add a new section would not impact any current sections.

 

Saving completed form for later access

After completing a form, you can save the entire form by clicking on the Download Portable form button at the bottom of the Validation Page.  You will save the form to your local drive, as with any other saved document.  However, to view the saved form, do not click directly on the saved icon, as that will only open the form as an XML document (consisting of data tags/entries).  Instead, to view the form in the proper format, you must go to the front page of the initial form wizard, as if starting a new form.  Rather than entering the serial number, click on the “Browse/Choose File” button, which appears directly below the field for entering the serial number.  A pop-up box will open, wherein you will select the proper saved file.  After clicking on the “Open” button within the pop-up window, the complete file name will appear in the box next to the “Browse/Choose File” button.  When you click on the “NEXT” button at the bottom of the form, the complete form will then open in its original format.

 

Re-attaching image files after saving form

Any time you download and save a portable form, once you re-access the saved form (following in the instructions in the section above), you will find that any previously attached image files will no longer be attached.  This unfortunately is the nature of any browser’s environment, for security reasons, and is not a function of the ROA form itself and “fixable” by the USPTO.  As such, please be aware of this unavoidable constraint—you must re-attach all images after downloading/saving the form.

 

Extending 60-minute time limit

The ROA form wizard warns that

 

       NOTE: This form has a session time limit of 60 minutes. A session begins once

       you create and enter the form via the Form Wizard. If you exceed the 60-minute

       time limit, the form will not validate and you must begin the entire process again. 

 

However, the 60-minute period is not an “absolute” period; i.e., you do not have to complete the form, start to finish, within 60 minutes.  If the USPTO’s server does not detect any activity within 60 minutes, it will end your session at the 60-minute point.  At 54 minutes into your session, you will receive a pop-up window warning that your session will expire in six (6) minutes (it will actually provide the precise “end” time within the window, such as 11:29:14 EST).  To “renew” your session, you simply need to click on the “O.K.” button at the bottom of the pop-up window, and you will automatically get another 60 minute time period.  If you do not click on the button within the remaining six (6) minutes of the session, your session will completely end at the 60-minute mark, and you will be returned directly to the initial form wizard to start the process again.  You are encouraged to have all information required to complete the form available prior to starting your session.

 

Meeting response deadline

The ROA form is time stamped when it arrives on the USPTO server, based on Eastern Standard Time (EST).  Please be particularly aware of that fact if you are drafting/submitting an ROA from a different time zone.  The time stamp applied by the TEAS server is the official time the USPTO received the response, and the time the transmission is started is not considered.  The official filing date and time can be found at the bottom of your e-mail confirmation.  Any submission that arrives as of 11:59 p.m. EST will be given that day’s filing date (i.e., regardless of USPTO’s “normal” business hours, and regardless of whether it is a Saturday, Sunday, or Federal holiday within the District of Columbia.  However, even though a TEAS ROA filing is possible on a Saturday, Sunday, or Federal holiday, the USPTO follows the same “response deadline” rule as for a paper filing; i.e., if the response is due on a date falling on a Saturday, Sunday, or a Federal holiday within the District of Columbia, then the ROA is considered timely if received by 11:59 p.m. on the following date that is not a Saturday, Sunday, or a Federal holiday within the District of Columbia.

 

The USPTO makes every attempt to ensure that the TEAS ROA form, and the overall TEAS service, is available 24 hours a day, 7 days a week, 365 days a year.  Nonetheless, the USPTO strongly recommends that you do not wait until the final hour of the overall six-month response period to attempt to file electronically, since TEAS may be unexpectedly down, or other technical problems may surface, that may prevent a successful ROA transmission before the response deadline.