2265 Extension of Time
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(c) The time for taking any action by a patent owner in an ex parte reexamination proceeding may be extended as provided in this paragraph.
(1) Any request for such an extension must specify the requested period of extension and be accompanied by the petition fee set forth in § 1.17(g).
(2) Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of such a request for extension will not effect the extension. A request for an extension in a third party requested ex parte reexamination will not be granted in the absence of sufficient cause or for more than a reasonable time.
(3) Any request for an extension in a patent owner requested or Director ordered ex parte reexamination for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested or Director ordered ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months from the time period set in the Office action will not effect the extension. The time for taking action in a patent owner requested or Director ordered ex parte reexamination will not be extended for more than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.
(4) The reply or other action must in any event be filed prior to the expiration of the period of extension, but in no situation may a reply or other action be filed later than the maximum time period set by statute.
(5) See § 90.3(c) of this title for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action.
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I. EXTENSIONS UNDER 37 CFR 1.136 ARE NOT PERMITTED IN EX PARTE REEXAMINATION PROCEEDINGS
The provisions of 37 CFR 1.136(a) and (b) are NOT applicable to ex parte reexamination proceedings under any circumstances.
- Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding.
II. FEE FOR AN EXTENSION OF TIME IN EX PARTE REEXAMINATION PROCEEDINGS
The fee set forth in 37 CFR 1.17(g) is the required fee for filing a request for an extension of time in a reexamination proceeding.
III. GENERAL GUIDANCE ON EXTENSIONS OF TIME IN EX PARTE REEXAMINATION PROCEEDINGS
All requests by the patent owner for extensions of time to respond to any Office action in an ex parte reexamination proceeding, including the submission of a patent owner statement under 37 CFR 1.530, must be filed under 37 CFR 1.550(c), in writing, and will be decided by the Director or SPRS of the Central Reexamination Unit (CRU) or the Director of a Technology Center (TC) conducting the reexamination proceeding, with the exception of an automatic two-month extension of time to take further action which will be granted upon filing a first timely response to a final Office action.
- The time extended is added to the last calendar day of the original period, as opposed to being added to the day it would have been due when said last day is a Saturday, Sunday, or federal holiday.
- The time period for filing a third party requester reply under 37 CFR 1.535 to the patent owner’s statement (i.e., two (2) months from the date of service of the statement on the third party requester) cannot be extended under any circumstances.
IV. THIRD PARTY REQUESTED EX PARTE REEXAMINATIONS
The extension of time practice under 37 CFR 1.550(c) for patent owner responses in an ex parte reexamination proceeding which has been requested by a third party, i.e., a third party requested ex parte reexamination, remains unchanged under the rules and practices adopted in view of the Patent Law Treaty (PLT).
A. Requirements for a Showing of Sufficient Cause and for a Reasonable Time
Any request for an extension of time for a response by the patent owner in a third party requested ex parte reexamination must include a showing of sufficient cause, and the requested extension must be for a reasonable time.
B. Time for Filing
37 CFR 1.550(c) continues to provide that any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due.
- Because the extension of time practice for patent owner responses in third party requested reexaminations remains unchanged, “the day on which action by the patent owner is due” continues to be no later than the day before the date of expiration of the time period for response set in the Office action.
- For example, if the Office action sets a one-month period for response, any request for an extension of time must be filed no later than one month from the mail date of the Office action.
C. Extension of Time for Filing a Notice of Appeal, an Appeal Brief, or a Reply Brief
Extensions of time for filing a notice of appeal to the Patent Trial and Appeal Board (PTAB), an appeal brief, or a reply brief, are governed by 37 CFR 1.550(c).
A notice of appeal is governed by 37 CFR 1.550(c) in the same manner as a response.
V. PATENT OWNER REQUESTED AND DIRECTOR ORDERED EX PARTE REEXAMINATIONS
Because a supplemental examination of a patent can only be requested by a patent owner, any ex parte reexamination ordered under 35 U.S.C. 257 as a result of a supplemental examination is considered to be a “patent owner requested” ex parte reexamination for the purposes of 37 CFR 1.550(c).
A. “No Cause” Extensions of Time for Up to Two Months from Response Period Set in Office Action
Effective December 18, 2013, 37 CFR 1.550(c) was amended to omit the requirement, in patent owner requested or Director ordered ex parte reexamination proceedings, for a showing of sufficient cause in a request for an extension of time for up to two months from the time period set in the Office action, i.e., a “no cause” extension.
B. Extensions of Time for More than Two Months from Response Period Set in Office Action
A request for an extension for more than two months from the time period for response set in the Office action must include a showing of sufficient cause, and the extension must be for a reasonable time.
- The timely filing of a written request for an extension for more than two months from the time period for set in the Office action and the required fee, alone, will not result in an extension of time; i.e., will not effect the extension.
C. Time for Filing
1. “No Cause” Extension of Time
37 CFR 1.550(c) provides that any request in a patent owner requested or Director ordered ex parte reexamination for an extension of time for up to two months from the time period set in the Office action, i.e., a “no cause” extension, must be filed no later than two months from the expiration of the time period set in the Office action.
- The patent owner must specify the requested period of extension, not to exceed two months from the time period set in the Office action.
- The patent owner must file the request and the required fee within the specified period for extension.
2. Extensions of Time for More than Two Months
37 CFR 1.550(c) provides that any request in a patent owner requested or Director ordered ex parte reexamination for an extension of time for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due.
If the patent owner wishes to request an extension for more than two months, and if the patent owner has timely filed one or more requests for an extension of time, the total of which does not exceed two months from the time period set in the Office action, i.e., “no cause” extensions, then “the day on which action by the patent owner is due” is the expiration of the total of the period(s) of extension specified in the request(s) for the “no cause” extension, not to exceed two months.
3. Specific Examples
Example 1
The patent owner, in a patent owner requested reexamination, wishes to file a written request specifying a two-month extension, i.e., a “no cause” extension. The Office action sets a two-month period for response.
The patent owner must file the written request accompanied by the required fee, and the required response, within four months of the mail date of the Office action.
Example 2
The patent owner, in a patent owner requested reexamination, wishes to file a written request specifying only a one-month extension, i.e., a “no cause” extension. The Office action sets a two-month period for response.
The patent owner must file the written request accompanied by the required fee, and the required response, within three months of the mail date of the Office action.
Example 3
The patent owner, in a patent owner requested reexamination, wishes to file a written request specifying only a one-month extension, i.e., a “no cause” extension. The Office action sets a two-month period for response. The patent owner timely files, within three months from the mail date of the Office action, the request for the one-month extension and the required fee, but fails to file the response.
The patent owner may, in order to timely file the response, file another request for a one-month “no-cause” extension, another required fee, and the response within four months from the mail date of the Office action.
Example 4
The patent owner, in a patent owner requested reexamination, wishes to file a written request specifying only a one-month extension, i.e., a “no cause” extension. The Office action sets a two-month period for response. The patent owner files a request for only a one-month extension and the required fee (with or without the response) after three months from the mail date of the Office action.
The request will be dismissed as untimely even if it is filed within four months from the mail date of the Office action. In such a case, a subsequent written request for an extension of two months from the original time period set in the Office action, accompanied by the required fee, may be granted if it is filed within four months from the mail date of the Office action.
Example 5
The patent owner, in a patent owner requested reexamination, wishes to file a request for an extension for three months, i.e., more than two months from the time period set in the Office action. (Such a request will only be granted in extraordinary circumstances. See subsection VI below.) The Office action sets a two-month time period for response.
The patent owner may file, up to the last day of the fourth month from the mail date of the Office action: 1) a first request for a two-month “no cause” extension and the required fee; and 2) a second request specifying an additional one-month extension, which is more than two months from the time period set in the Office action, a showing of sufficient cause, and a second required fee. If the second request is granted (which would only occur in extraordinary circumstances – see subsection VI. below), the required reply must be filed on or before the last day of the fifth month. If the second request is not granted, a reply filed after the last day of the fourth month would be untimely and would not be entered.
Alternatively, the patent owner may file, up to the last day of the third month from the mail date of the Office action: 1) a request for a one-month “no cause” extension and the required fee; and 2) a second request specifying an additional two-month extension, which is more than two months from the time period set in the Office action, a showing of sufficient cause, and a second required fee. If the second request is granted (which would only occur in extraordinary circumstances – see subsection VI below), the required reply must be filed on or before the last day of the fifth month. If the second request is not granted, a reply filed after the last day of the third month would be untimely and would not be entered.
D. Extension of Time for Filing a Notice of Appeal, an Appeal Brief, or a Reply Brief
Extensions of time for filing a notice of appeal to the Board, an appeal brief, or a reply brief, are governed by 37 CFR 1.550(c).
- The request must be filed as a separate paper.
A notice of appeal is governed by 37 CFR 1.550(c) in the same manner as a response.
The patent owner must, in its written request, specify the requested period for extension (e.g., one month or two months), and must file the request and the required fee within the specified period for extension.
VI. REQUIREMENTS FOR A SHOWING OF SUFFICIENT CAUSE AND AN EXTENSION FOR A REASONABLE TIME
Requests for any extension of time in third party requested reexaminations, and requests for an extension of more than two months from the time period set in the Office action in patent owner requested or Director ordered reexaminations, must include a showing of sufficient cause, and the extension must be for a reasonable time.
Any evaluation of whether sufficient cause has been shown for an extension must balance the need to provide the patent owner with a fair opportunity to present an argument against any attack on the patent, and the requirement of the statute that the proceeding be conducted with special dispatch.
VII. FINAL ACTION — TIME FOR RESPONSE
In any ex parte reexamination proceeding, including third party requested reexaminations and patent owner requested or Director ordered reexaminations, the filing of a timely first response to a final rejection having a shortened statutory period for response is construed as including a request to extend the shortened statutory period for an additional two months, but in no case may the period for response exceed six months from the date of the final action.
VIII. EXTENSIONS OF TIME TO SUBMIT AFFIDAVITS OR DECLARATIONS AFTER FINAL REJECTION
Frequently, patent owners request an extension of time, stating as a reason therefor that more time is needed in which to submit an affidavit or declaration.
- When such a request is filed after final rejection, the granting of the request for extension of time is without prejudice to the right of the examiner to question why the affidavit or declaration is now necessary and why it was not earlier presented.
