Within 18 months of the date the IB forwards a request for extension of protection, the USPTO must transmit:

1. (1) A notification of refusal based on examination;
2. (2) A notification of refusal based on the filing of an opposition; or
3. (3) A notification of the possibility that an opposition may be filed after expiration of the 18-month period. If the USPTO notifies the IB of the possibility of opposition, it must send the notification of refusal within 7 months after the beginning of the opposition period, or within one month after the end of opposition period, whichever is earlier.

15 U.S.C. §1141h(c); Article 5.

If the USPTO does not send a notification of refusal of the request for extension of protection to the IB within 18 months, the request for extension of protection cannot be refused. 15 U.S.C. §1141h(c)(4); Article 5(5); Regs. Rules 17(2)(iv), 18(1)(a)(iii). If the USPTO sends a notification of refusal, no grounds of refusal other than those set forth in the notice can be raised more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO. 15 U.S.C. §1141h(c)(3).

If upon re-examination the examining attorney determines a new ground of refusal exists that should have been raised in the first Office action, a second Office action raising this new ground may be issued only if time remains in the 18-month period. In such a case, the examining attorney must ensure that a notification of the new ground of refusal is sent to the IB.