709 Suspension of action
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Section Frequency Chart
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| 709 |
(a) Suspension for cause. On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph for good and sufficient cause. The Office will not suspend action if a reply by applicant to an Office action is outstanding. Any petition for suspension of action under this paragraph must specify a period of suspension not exceeding six months. Any petition for suspension of action under this paragraph must also include:
(1) A showing of good and sufficient cause for suspension of action; and
(2) The fee set forth in § 1.17(g), unless such cause is the fault of the Office.
(b) Limited suspension of action in a continued prosecution application (CPA) filed under § 1.53(d). On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph in a continued prosecution application filed under § 1.53(d) for a period not exceeding three months. Any request for suspension of action under this paragraph must be filed with the request for an application filed under § 1.53(d), specify the period of suspension, and include the processing fee set forth in § 1.17(i).
(c) Limited suspension of action after a request for continued application (RCE) under § 1.114. On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph after the filing of a request for continued examination in compliance with § 1.114 for a period not exceeding three months. Any request for suspension of action under this paragraph must be filed with the request for continued examination under § 1.114, specify the period of suspension, and include the processing fee set forth in § 1.17(i).
(d) Deferral of examination. On request of the applicant, the Office may grant a deferral of examination under the conditions specified in this paragraph for a period not extending beyond three years from the earliest filing date for which a benefit is claimed under title 35, United States Code. A request for deferral of examination under this paragraph must include the publication fee set forth in § 1.18(d) and the processing fee set forth in § 1.17(i). A request for deferral of examination under this paragraph will not be granted unless:
(1) The application is an original utility or plant application filed under § 1.53(b) or resulting from entry of an international application into the national stage after compliance with § 1.495;
(2) The applicant has not filed a nonpublication request under § 1.213(a), or has filed a request under § 1.213(b) to rescind a previously filed nonpublication request;
(3) The application is in condition for publication as provided in § 1.211(c); and
(4) The Office has not issued either an Office action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
(e) Notice of suspension on initiative of the Office. The Office will notify applicant if the Office suspends action by the Office on an application on its own initiative.
(f) Suspension of action for public safety or defense. The Office may suspend action by the Office by order of the Director if the following conditions are met:
(1) The application is owned by the United States;
(2) Publication of the invention may be detrimental to the public safety or defense; and
(3) The appropriate department or agency requests such suspension.
A request to suspend under 37 C.F.R. 1.103(a):
- requires a fee
- requires a showing of good and sufficient cause for the suspension
- involves a six month maximum suspension
A request for suspension under 37 C.F.R. 1.103(b) or (c) must meet the following requirements:
- it must be filed along with a CPA or an RCE (remember, a CPA may only be filed for a design application)
- (1) if the request is filed with an RCE, the RCE must be in compliance with 37 CFR 1.114, i.e., the RCE must be accompanied by a submission and the fee. Note that the payment of the RCE filing fee may not be deferred and the request for suspension cannot substitute for the submission;
- (2) if the request is filed with a CPA, a filing date must be assigned to the CPA;
- involves a 3 month maximum suspension
- it must include a fee
An action cannot be suspended in an application that contains an outstanding Office action or a request awaiting a reply by the applicant
- the request will be denied if it is for the applicant to submit an IDS
It is possible to suspend an application if the inventorship is wrong and the registered practitioner needs time to investigate it
The suspension of action will last until the suspension period expires or the applicant submits a request for the termination of the action
The Office may grant the requested suspension if, after a final rejection, a request for a continued examination complying with 37 C.F.R. 1.114 is filed along with a request to suspend the action by the Office for a period that does not exceed 3 months to provide time to submit an IDS and the proper fees associated with it.
The Office will not suspend an action in an application when a reply by the applicant is outstanding:
- 35 U.S.C. 133 requires that the applicant must prosecute the application within 6 months of the Office action (or shorter if stated) to avoid the abandonment of application
- if the applicant files a request for a continuing examination, but does not also provide any submission (in reply to the prior Office action) within the period for reply to the prior Office action, the application is abandoned
At a glance:
Details of suspension of action.
Request under 37 C.F.R. |
Requirements |
Fee |
Maximum length |
1.103(a) |
Petition with showing of good and sufficient cause |
Yes |
6 months |
1.103(b) |
Required at the time of filing a CPA |
Yes |
3 months |
1.103(c) |
Required at the time of filing a RCE |
Yes |
3 months |
