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USPTO due dates and extensions in time

Posted Saturday, December 31, 2011 by Mike Gibbons

Once an application for a patent has been filed with the USPTO, the “patent prosecution” phase begins. From the perspective of an Applicant and the Applicant’s patent attorney or patent agent, patent prosecution refers to the process of working with the USPTO to arrive at agreed-upon patentable subject matter.

The USPTO may not agree with the Applicant that everything that has been submitted in the application merits a patent, in which case they will reply to the Applicant with an “Office Action.” An Office Action contains the USPTO’s reasoning for why the application isn’t in a condition for a patent to issue.

The Applicant’s patent attorney or patent agent will prepare a response to the Office Action. The response might contest the USPTO’s findings, or it might include revisions to the patent claims more compatible with the USPTO’s findings.

Applicants have a three-month period in which to reply to the Office Action. An Applicant is not required to pay a fee to the USPTO in conjunction with filing the response, provided the response is received at the USPTO within the three-month period.

If the Applicant is unable to respond within the three-month period, an extension of time may be “purchased” from the USPTO through payment of an extension fee. Extensions are available for more than just Office Action responses, and extensions are available for one month, two months, three months and even more in some cases.

This brings up an interesting question regarding due dates. By default, an Office Action response is due at the USPTO three months after the Office Action is mailed from the USPTO. An Office Action mailed on November 1st has a period for a response ending on February 1st of the following year. An Office Action mailed on May 31st has a period for a response ending on August 31st of that year.

What about an Office Action mailed on January 31st? The USPTO measures in calendar months, so the response to that Office Action is due on April 30th, since there is no April 31st.

However, for that Office Action mailed on January 31st, let’s say that the Applicant purchases a one-month extension in time for the reply. The due date without the extension would be April 30th, so if you purchase a one-month extension in time, does that make the new due date May 30th?

This is answered in MPEP (the USPTO’s “Manual of Patent Examining Procedure”) section 701.01(a). Dates for the end of a reply period, including extensions, are calculated from the mailing date of the notice. So, in the above example of an Office Action mailed January 31st, a one-month extension in time makes the period for a reply a four-month period for a reply, bringing the new due date to May 31st.

Saturdays, Sundays and Federal holidays add days to the period for a reply. If the due date falls on a Saturday, Sunday or Federal holiday, it is automatically extended at no additional charge to the next succeeding workday.

One last example: an Office Action is mailed on August 31st, 2011. The Applicant wants to extend the period for a response by one month. What is the last day that a response can be filed within that one-month extension?

The end of the three-month period is November 30th, 2011. Because the end of the period for a reply is calculated from the mailing date, paying a one-month extension of time fee gets you to December 31st, 2011. That day is a Saturday, so the new end of the period is the following Monday, which is January 2nd, 2012. However, because New Year’s Day (January 1st, 2012) falls on a Sunday, the New Year’s Day Federal holiday is observed on Monday, January 2nd, 2012. That makes the new end date of the reply period Tuesday, January 3rd, 2012.

In short, in the patent world, the date that falls four months after August 31st, 2011 is January 3rd, 2012. And when I say “patent world,” I’m not kidding. PCT Rule 80.5 (“Patent Cooperation Treaty,” i.e. international applications) also specify that reply period end dates which fall on non-working days or holidays get extended to the next business day.

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