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710 Period for Reply

MPEP SECTION SUMMARY If an applicant needs more time to file an Office Action, he or she can in some cases be granted an extension of time for the reply. A petition for an extension of time will have to be properly filed. There are circumstances where a petition for an extension of time will be denied by the Office, such as if the application is involved in a reexamination or an interference proceeding. If the applicant fails to file a reply by midnight on the date the period for reply was due, the application will be regarded as abandoned and the applicant may lose all of his or her rights to an invention. This section covers details on the period for reply.

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MPEP SECTION SUMMARY Under the current practice, the examiner may set a shortened statutory time period (generally 2 months) during which an applicant must supply the omission to the previous reply to avoid abandonment.

MPEP SECTION SUMMARY When an examiner sends out an Office action, he or she sets a time limit. They set what is called a shortened statutory period (SSP). It may be possible for the applicant to extend the time limit (depending on what it was originally set for). For example, an Office action with an SSP of 2 months may be extended for up to 4 months, bringing the grand total to 6 months. SSP’s may not be extended for any longer than six months. Missing one of these deadlines may result in abandonment. This section covers the details of shortened statutory periods including due date particulars.

Under 37 CFR 1.136 an applicant may be required to reply in a shorter period than 6 months, not less than 30 days.

In other situations, for example, the rejection of a copied patent claim, the examiner may require applicant to reply on or before a specified date.

• These are known as time limit actions.

Shortened statutory periods are subject to the provisions of 37 CFR 1.136(a) unless applicant is notified otherwise in an Office action.

MPEP SECTION SUMMARY A shortened statutory period may not be less than 30 days. This section discusses when a shortened statutory period may be used.

The Patent Law Treaty (PLT), which entered into force with respect to the United States on December 18, 2013, provides for a time period of at least two months for replies to most Office actions and other notices.

• The Office has certain pilot programs that are not encompassed by this requirement of the PLT and set a time period of less than two months for reply.

2 month SSP's may be used for the following:

• (A) Requirement for restriction or election of species only (no action on the merits).
• (B) When a reply by an applicant for a nonfinal Office action is bona fide but includes an inadvertent omission, the examiner may set a 2 month shortened statutory time period to correct the omission.
• (C) Winning party in a terminated interference to reply to an unanswered Office action.
  Where, after the termination of an interference proceeding, the application of the winning party contains an unanswered Office action, final rejection or any other action, the primary examiner notifies the applicant of this fact. In this case reply to the Office action is required within a shortened statutory period running from the date of such notice.
• (D) To reply to an Ex parte Quayle Office action.
  When an application is in condition for allowance, except as to matters of form, such as correction of the specification, a new oath, etc., the application will be considered special and prompt action taken to require correction of formal matters. A 2-month shortened statutory period for reply should be set.
• (E) Multiplicity rejection — no other rejection.

3 month SSP's may be used for the following:

To reply to any Office action on the merits.

Period for reply restarted

Where the citation of a reference is incorrect or an Office action contains some other defect and this error is called to the attention of the Office within 1 month of the mail date of the action, the Office will restart the previously set period for reply to run from the date the error is corrected, if requested to do so by applicant.

MPEP SECTION SUMMARY Replies that involve a specific time limit may be extendable for up to 5 months. Missing a reply period will result in the loss of that particular matter, but not usually abandonment. This section covers the difference between shortened statutory and period for reply.

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The 2-month time period for filing an appeal brief on appeal to the Patent Trial and Appeal Board and the 1-month time period for filing a new appeal brief to correct the deficiencies in a defective appeal brief are time periods, but are not (shortened) statutory periods for reply.

• Thus, these periods are, unless otherwise provided, extendable by up to 5 months under 37 CFR 1.136(a), and, in an exceptional situation, further extendable under 37 CFR 1.136(b) (i.e., these periods are not statutory periods subject to the 6-month maximum.
• In addition, the failure to file an appeal brief (or a new appeal brief) within the time period set in 37 CFR 41.37(a) (or (d)) results in dismissal of the appeal.

The dismissal of an appeal results in abandonment, unless there is any allowed claim(s), in which case the examiner should cancel the nonallowed claims and allow the application.

The 2-month time period for reply to A Notice to File Missing Parts of an Application is not identified on the Notice as a statutory period subject to 35 U.S.C. 133.

• Thus, extensions of time of up to 5 months under 37 CFR 1.136(a), followed by additional time under 37 CFR 1.136(b), when appropriate, are permitted.

MPEP SECTION SUMMARY This section provides details on extensions of time including when due dates may not be extended. There are two types of due date extensions; automatic extensions under 37 C.F.R. 1.136(a) and extensions for cause under 37 C.F.R. 1.136(b). Automatic extensions include those when an applicant must reply within a nonstatutory or shortened statutory time. Extensions for cause are used when the applicant is unable to reply within the specified time period and 37 C.F.R. 1.136(a) is unavailable.

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37 CFR 1.136 provides for two distinct procedures to extend the period for action or reply in particular situations.

The procedure which is available for use in a particular situation will depend upon the circumstances.

37 CFR 1.136(a) permits an applicant to file a petition for extension of time and a fee up to 5 months after the end of the time period set to take action except:

• (A) where prohibited by statute,
• (B) where prohibited by one of the items listed in the rule, or
• (C) where applicant has been notified otherwise in an Office action.

The petition and fee must be filed within the extended time period for reply requested in the petition and can be filed prior to, with, or without the reply.

The filing of the petition and fee will extend the time period to take action up to 5 months dependent on the amount of the fee paid except in those circumstances noted above.

37 CFR 1.136(b) provides for requests for extensions of time upon a showing of sufficient cause when the procedure of 37 CFR 1.136(a) is not available.

• Although the petition and fee procedure of 37 CFR 1.136(a) will normally be available within 5 months after a set period for reply has expired, an extension request for cause under 37 CFR 1.136(b) must be filed during the set period for reply.
  

Neither the primary examiner nor the Director of the USPTO has authority to extend the shortened statutory period unless a petition for the extension is filed.

• While the shortened period may be extended within the limits of the statutory 6 months period, no extension can operate to extend the time beyond the 6 months.

Any request under 37 CFR 1.136(b) for extension of time for reply must state a reason in support thereof and supply the fee.

• Such extensions will only be granted for sufficient cause and must be filed prior to the end of the set period for reply.

Extensions of time with the payment of a fee pursuant to 37 CFR 1.136(a) are possible in reply to most Office actions of the examiner. Exceptions include:

• (A) all extensions in a reexamination proceeding;
  
• (B) all extensions during an interference proceeding (but not preparatory to an interference where a claim is suggested for interference);
  
• (C) those specific situations where an Office action states that the provisions of 37 CFR 1.136(a) are not applicable (e.g., reply to a notice of allowability, in reissue applications associated with litigation, or where an application in allowable condition has nonelected claims and time is set to cancel such claims); and
  
• (D) those limited instances where applicant is given a specified time limit to take certain actions.

The fees for extensions of time under 37 CFR 1.136(a) are subject to a 50% reduction for persons or concerns qualifying as small entities

While a petition for an extension of time under 37 CFR 1.136(a) must be filed within the extended period for reply, the petition need not be filed within the original shortened statutory period for reply.

• If a petition for an extension of time under 37 CFR 1.136(a) (with or without a reply) requests an insufficient period of extension such that the petition would be filed outside the so-extended period for reply, but the period for reply could be further extended under 37 CFR 1.136(a) such that the petition would be filed within the further extended period for reply, it is Office practice to simply treat the petition for extension of time as requesting the period of extension necessary to make the petition filed within the further extended period for reply if the petition or application contains an authorization to charge extension fees or fees under 37 CFR 1.17 to a deposit account.

Where a reply is filed after the set period for reply has expired and no petition or fee accompanies it, the reply will not be accepted as timely until the petition and the appropriate fee are submitted.

• For example, if an Office action sets a 3-month period for reply and applicant replies in the 4th month and includes only the petition for a 1-month extension of time, the reply is not acceptable until the fee is filed.
• If the fee is not filed until the 5th month, an additional fee for the 2nd month extension would also be required in order to render the reply timely.

When the provisions of 37 CFR 1.136(a) are not applicable, extensions of time for cause pursuant to 37 CFR 1.136(b) may be possible.

• Any such extension must be filed on or before the day on which the reply is due. The mere filing of such a request will not affect any extension.

If the request for extension of time is granted, the due date is computed from the date stamped or printed on the action, as opposed to the original due date.

• For example, a reply to an action with a 3-month shortened statutory period, dated November 30, is due on the following February 28 (or 29, if it is a leap year).
• If the period for reply is extended an additional month, the reply becomes due on March 30, not on March 28.

I. FINAL REJECTION — TIME FOR REPLY

If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection.

• This procedure applies only to a first reply to a final rejection.
  
  

In no event will the statutory period for reply expire later than 6 months from the mailing date of the final Office action.

II. EXTENSIONS OF TIME TO SUBMIT AFFIDAVITS AFTER FINAL REJECTION

When an extension of time 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 is now necessary and why it was not earlier presented.

If applicant’s showing is insufficient, the examiner may deny entry of the affidavit, notwithstanding the previous grant of an extension of time to submit it.

Failure to file a reply during the shortened statutory period results in abandonment of the application.

III. NO EXTENSIONS OF TIME AFTER PAYMENT OF ISSUE FEE

The statutory (nonextendable) time period for payment of the issue fee is 3 months from the date of the Notice of Allowance.

Any such informalities must be corrected and the issue fee and the publication fee, if required, must be paid within the 3-month period.

If a Notice Requiring Inventor’s Oath or Declaration is sent with the Notice of Allowability, the required inventor’s oath or declaration must be submitted no later than the payment of the issue fee.

MPEP SECTION SUMMARY When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia the action may be taken, or the fee paid, on the next succeeding secular or business day. The period of pendency of a provisional application will be extended to the next succeeding secular or business day which is not a Saturday, Sunday, or a federal holiday, if the day that is twelve months after the filing date of the provisional application falls on Saturday, Sunday, or a federal holiday within the District of Columbia.

MPEP SECTION SUMMARY In instances where the examiner made a mistake in the Office action and if the applicant brings this to the PTO’s attention, the PTO will “reset” the due date of the reply to begin on a later date. That way the applicant does not lose any time for the PTO’s error. This section covers situations when a reply period is reset or restarted. Included is a discussion on delays in mailing.

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Situations when the reply period may be reset:

• where a citation of a reference is incorrect
• where the Office action contains a defect and it is called to the attention of the Office within 1 month of the mailing date of the action.

The PTO will grant a petition to restart the previously set period for reply to run from the date of receipt of the Office action at the correspondence address when the following criteria are met:

• the petition is filed within 2 weeks of the date of receipt for the PTO action at the correspondence address and it was in fact later than intended
• a substantial portion of the set reply period had elapsed on the date of receipt
• the petition includes evidence and a statement showing the date of receipt of the PTO action at the correspondence address, explaining how the evidence being presented establishes the date of receipt of the PTO action at the correspondence address.
  

If the error is brought to the attention within 1 month of the mail date of the Office action, the PTO will restart the previously set period for the reply to run from the date the error is corrected.

If the error is brought to the attention after 1 month (but before the period for reply expires), the PTO will set a new period for reply which will be equal to the time that is remaining in the reply period.

• it will at least be 1 month from the date the error is corrected.

If the error is called to attention after the period for reply, they will not restart or reset anything, the applicant will have to apply for an extension.

-Delays in mailing:

-Late receipt:

• The PTO will grant a petition asking to restart the period for reply to begin from the date of receipt of the Office action at the correspondence address when the petition is filed within 2 weeks of the date of receipt of the PTO action at the correspondence address.
  • The petition must include:
    • evidence showing the address
    • a copy of the envelope with the date of receipt
    • a statement setting forth the date of receipt of the PTO action at the correspondence address indicating that the PTO action was received in the postmarked envelope that establishes the date of receipt.
      

-Late postmark:

• The PTO will grant a petition asking to restart the period for reply to run from the postmark date shown on an Office action when:
  • The petition is filed within 2 weeks of the date of receipt of the Office action at the correspondence address.
  • The reply period was for payment of the Issue Fee, or the reply period set was 1 month or 30 days, and the petition includes:
• evidence showing the address
• a copy of the envelope with the date of receipt
• a statement setting forth the date of receipt of the PTO action at the correspondence address indicating that the PTO action was received in the postmarked envelope that establishes the date of receipt.
  

 

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