2265 Extension of Time [R-07.2015]

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. Public Law 97-247 amended 35 U.S.C. 41 to authorize the Director to provide for extensions of time to take action in an “application.” An ex parte reexamination proceeding does not involve an “application.” 37 CFR 1.136 authorizes extensions of the time period only in an application in which an applicant must respond or take action. There is neither an “application,” nor an “applicant” involved in a reexamination proceeding.

An extension of time in an ex parte reexamination proceeding is requested pursuant to 37 CFR 1.550(c) which provides that any request for such an extension must specify the requested period of extension and be accompanied by the fee set forth in 37 CFR 1.17(g).

Form paragraph 22.04.01 may be used to notify the parties in a reexamination proceeding the extension of time practice in reexamination.

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. Unlike extension of time practice under 37 CFR 1.136, the period of extension is not determined by the amount of the fee paid. The fee is for filing the request. Under 37 CFR 1.550(c), each request for an extension must specify the requested period of extension and must be accompanied by the fee set forth in 37 CFR 1.17(g).

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 (see subsection VII below; see also MPEP § 2272). Requests for an extension of time must be filed on or before the day on which action by the patent owner is due, and will be granted only for sufficient cause (see subsection VI below), except for requests for a “no cause” extension in patent owner requested or Director ordered reexaminations as provided in 37 CFR 1.550(c) (see subsection V.A. below). Patent owner requested reexaminations include reexaminations ordered under 35 U.S.C. 257. In no case, other than the “after final” practice and the “no cause” extension in patent owner requested or Director ordered reexaminations, will a mere filing of a request for extension of time automatically effect any extension.

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.

A request for an extension of time under 37 CFR 1.550(c) must be submitted as a separate paper which will be forwarded to the CRU SPRS or TC Director for action. The certificate of mailing and the certificate of transmission procedures (37 CFR 1.8) and the Priority Mail Express® mailing procedure (37 CFR 1.10) may be used to file a request for extension of time.

A request for an extension of time in an ex parte reexamination proceeding will be considered only after the decision to grant or deny reexamination is mailed. Any request filed before that decision will be denied. A request for an extension of the time period to file a petition from the denial of a request for reexamination can only be entertained by filing a petition under 37 CFR 1.183 with the appropriate fee to waive the time provisions of 37 CFR 1.515(c).

Ex parte prosecution will generally be conducted by initially setting a two-month shortened period for response. See MPEP § 2263. In any ex parte reexamination ordered under 35 U.S.C. 304 (i.e., patent owner requested, Director ordered, or third party requested), the patent owner also will be given a two-month statutory period after the order for reexamination to file a statement. See 37 CFR 1.530(b). However, in ex parte reexaminations ordered under 35 U.S.C. 257, the statute does not permit the patent owner to file such a statement. See MPEP §§ 2818.01 and 2823.

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. No extensions will be permitted to the time for filing a reply under 37 CFR 1.535 by the requester because the two-month period for filing the reply is a statutory period. See 35 U.S.C. 304. A statutory period for response cannot be waived. See MPEP § 2251.

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 third party requested ex parte reexamination is initiated by a party other than the patent owner or the Office. Thus, it is an “inter partes proceeding” under PLT Rule 12(5)(a)(vi). For this reason, the minimum reply period provisions of the PLT do not apply to third party requested ex parte reexaminations.

The patent owner must file a written request specifying the requested period for extension (e.g., one month), and must file the request, the required fee, and the response within the specified period for extension. A request for an extension, which must be accompanied by the required fee, may be filed with or without the response.

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. See subsection VI below.

“No cause” extensions of time for up to two months for filing a response (see subsection V.A. below), or for filing an appeal brief (see also subsection IV.C. below) are not available, because the extension of time provisions of the PLT do not apply to third party requested reexaminations. The mere filing of a written request for an extension of time and the required fee in a third party requested reexamination will not result in an extension of time; i.e., will not effect the extension.

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.

For the purposes of requesting an extension of time for filing an appeal brief or a reply brief, the “the day on which action by the patent owner is due” set forth in 37 CFR 1.550(c) is the last day of the time period permitted to file the brief. For example, 37 CFR 41.35(a) requires that an appeal brief must be filed within two months from the date of the appeal. See MPEP § 1205. 37 CFR 41.41(a) governs the time for filing a reply brief. See MPEP § 1208. See also MPEP § 2274, subsection III.

The request for an extension of time to file a notice of appeal, an appeal brief, or a reply brief must include a showing of sufficient cause, and the extension must be for a reasonable time. See subsection VI below. The request must be filed as a separate paper.

See MPEP § 1216 for specific guidance on the time for filing the notice and reasons of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action. See also MPEP § 2279.

V. PATENT OWNER REQUESTED AND DIRECTOR ORDERED EX PARTE REEXAMINATIONS

The extension of time practice in ex parte reexaminations which have been requested by the patent owner (patent owner requested reexaminations), and in ex parte reexaminations initiated by the Director pursuant to 35 U.S.C. 302 (see MPEP § 2239) (Director ordered reexaminations), has been revised as a result of the implementation of the Patent Law Treaty (PLT). See Changes to Implement the Patent Law Treaty, 78 FR 62368 (October 21, 2013)(final rule).

Because a supplemental examination of a patent can only be requested by a patent owner (see 37 CFR 1.601), 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).

For specific guidance on extension of time practice in ex parte reexaminations which have been requested by a third party (third party requested reexaminations), see subsection IV above.

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.

As in extension of time practice under 37 CFR 1.136 for applications, a patent owner is not required to provide a reason why the extension is requested (i.e., the “cause” of the need for the extension) in a request for an extension of time for up to two months from the time period for response set in the Office action. However, unlike extension of time practice under 37 CFR 1.136 for applications, the mere filing of the fee for the extension of time is insufficient. The patent owner must timely file, in addition to the response to the Office action: (i) a written request for an extension of time which specifies the requested period of extension, i.e., for up to two months from the response period set in the Office action; and (ii) the fee set forth in 37 CFR 1.17(g). The written request must be filed as a separate paper. The written request for the extension and the fee may be filed with or without the response. However, the request for the extension, the required fee, and the response must all be timely filed.

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. See subsection V.C below. The Office may then grant an extension for the time specified, up to a period of two months.

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. See subsection VI below.

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.

If, for example, the Office action sets a two-month period for response, and if the patent owner requests a two-month extension, the patent owner is permitted to file the request for such an extension up to the last day of the fourth month from the mail date of the Office action. However, if the Office action sets a two-month period for response, and if the patent owner requests only a one-month extension, the patent owner must file the request for the extension by the last day of the third month from the mail date of the Office action.

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.

Patent owners are cautioned that a request for an extension for more than two months from the time period set in the Office Action will only be granted in extraordinary circumstances. See subsection VI below.

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. Thus, if the patent owner wishes to request an extension for more than two months, the patent owner must file, no later than two months from the expiration of the time period set in the Office action: 1) one or more written requests specifying a period of extension, the total of which does not exceed two months from the time period set in the Office action, i.e., “no cause” extensions, and the required fee for each request; and 2) an additional written request specifying a period of extension, which is more than two months from the time period set in the Office action, and an additional required fee. The request for an extension for more than two months must also include a showing of sufficient cause, and must be for a reasonable time. See subsection VI below. A request for an extension for more than two months may be filed in the same paper as a request for a “no cause” extension for up to two months, or each request may be filed separately. Any request for an extension of time, however, must be filed separately from any other paper, such as a response or an appeal brief.

For example, if the Office action sets a two-month time period for response, any request for an extension of time for two months must be filed no later than four months from the mail date of the Office action, and any request for an extension of time for more than two months must also be filed no later than four months from the mail date of the Office action. However, if the Office action only sets a one-month time period for response (for example, in situations where a lack of response does not result in a loss of rights), any request for an extension of time for two months must be filed no later than three months from the mail date of the Office action, and any request for an extension of time for more than two months must also be filed no later than three months from the mail date of the Office action.

3. Specific Examples 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.

For the purposes of requesting an extension of time for filing an appeal brief or a reply brief, the “time set in the Office action” set forth in 37 CFR 1.550(c) is the time permitted to file the brief. The “day on which action by the patent owner is due” set forth in 37 CFR 1.550(c) is the last day of the time period permitted to file the brief. For example, 37 CFR 41.37(a) requires that an appeal brief must be filed within two months from the date of the appeal. See MPEP § 1205. 37 CFR 41.41(a) governs the time for filing a reply brief. See MPEP § 1208. See also MPEP § 2274, subsection III.

In patent owner requested or Director ordered reexamination proceedings, the patent owner may request an extension of time for filing an appeal brief or a reply brief for up to two months from the time permitted to file the brief, without providing a showing of sufficient cause, i.e., a “no cause” extension. See subsection V.A above. For example, since the time permitted to file an appeal brief is two months from the date of the appeal, any request for an extension of time for two months must be filed no later than four months from the date of the appeal. See subsection V.C. above.

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. For example, if the patent owner only specifies a one-month extension in its request, the patent owner must file, in addition to an appeal brief, the written request for the extension and the required fee within three months from the date of the appeal. The request for the extension and the fee may be filed with or without the brief. For further examples, see subsection V.C. above.

However, the timely filing of a written request for an extension for more than two months from the time permitted to file the brief and the required fee, alone, will not result in an extension of time; i.e., will not effect the extension. The request for such an extension must include a showing of sufficient cause. In addition, the extension must be for a reasonable time. Such requests will only be granted in extraordinary circumstances. See subsection VI below.

See MPEP § 1216et seq. for specific guidance on the time for filing the notice and reasons of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action. See also MPEP § 2279.

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 (35 U.S.C. 305) that the proceeding be conducted with special dispatch.

Any request for an extension of time, except for the “no cause” extension in patent owner requested or Director ordered reexamination provided in 37 CFR 1.550(c), must fully state the reasons therefor. The reasons must include a statement of what action the patent owner has taken to provide a response as of the date the request for extension is submitted, and why, in spite of the action taken thus far, the requested additional time is needed. The statement must include a factual accounting of reasonably diligent behavior by all those responsible for preparing a response to the outstanding Office action within the statutory time period.

In patent owner requested and Director ordered reexaminations, the patent owner already has the opportunity to obtain an extension of time for up to two months from the time period set in the Office action, without a showing of sufficient cause, i.e., a “no cause” extension. For this reason, requests for an extension of more than two months in patent owner requested or Director ordered reexaminations are expected to be rare and will only be granted in extraordinary situations.

However, in third party requested ex parte reexaminations, a first request for an extension of time will generally be granted if a sufficient cause is shown, and for a reasonable time specified — usually one month. The reasons stated in the request will be evaluated by the CRU SPRS or TC Director, and the requests will be favorably considered where there is a factual accounting of reasonably diligent behavior by all those responsible for preparing a response within the statutory time period. Second or subsequent requests for an extension of time and requests for an extension of more than one month in third party requested reexaminations will only be granted in extraordinary situations.

A request for an extension of the time period to file a petition from the denial of a request for reexamination can only be entertained by filing a petition under 37 CFR 1.183 with the appropriate fee to waive the time provisions of 37 CFR 1.515(c). Since the examination process (for reexaminations ordered under 35 U.S.C. 304 or under 35 U.S.C. 257) is intended to be essentially ex parte, the third party requesting reexamination can anticipate that requests for an extension of time to file a petition under 37 CFR 1.515(c) will be granted only in extraordinary situations.

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. Even if previous extensions have been granted, the primary examiner is authorized to grant the request for extension of time which is implicit in the filing of a timely first response to a final rejection. The filing of any timely first response to a final rejection will be construed as including a request to extend the shortened statutory period for an additional two months, even if the response is informal and/or not signed. An object of this practice is to obviate the necessity for appeal merely to gain time to consider the examiner’s position in reply to a response timely filed after final rejection. Accordingly, the shortened statutory period for response to a final rejection to which a proposed first response has been received will be extended two months. Note that the Office policy of construing a response after final as inherently including a request for a two-month extension of time applies only to the first response to the final rejection. This automatic two-month extension of time does not apply once the notice of appeal has been filed. In that instance, the patent owner will be notified that an appeal brief is due two months from the date of the notice of appeal to avoid dismissal of the appeal, and extensions of time are governed by 37 CFR 1.550(c).

The patent owner is entitled to know the examiner’s ruling on a timely response filed after final rejection before being required to file a notice of appeal. Notification of the examiner’s ruling should reach the patent owner with sufficient time for the patent owner to consider the ruling and act on it.

The present after final practice of providing an automatic two-month extension for filing a response to a final Office action is in conformance with the minimum reply period provisions of the Patent Law Treaty (PLT). For this reason, additional “no cause” extensions of time for filing a response to a final Office action in patent owner requested or Director ordered reexaminations are not available. Any extensions of time for more than two months from the time for response set in the final rejection must provide a showing of sufficient cause in accordance with 37 CFR 1.550(c)(3). See subsection VI above.

In those situations where the advisory action cannot be mailed in sufficient time for the patent owner to consider the examiner’s position with respect to the amendment after final rejection (or other patent owner paper) and act on it before termination of the prosecution of the proceeding, the granting of additional time to complete the response to the final rejection or to take other appropriate action would be appropriate. See Theodore Groz & Sohne & Ernst Bechert Nadelfabrik KG v. Quigg, 10 USPQ2d 1787 (D.D.C. 1988). The additional time should be granted by the examiner, and the time granted should be set forth in the advisory Office action. The advisory action form, Ex Parte Reexamination Advisory Action Before the Filing of an Appeal Brief (PTOL-467), states that “THE PERIOD FOR RESPONSE IS EXTENDED TO RUN ___ MONTHS FROM THE MAILING DATE OF THE FINAL REJECTION.” The blank before “MONTHS” should be filled in with an integer (2, 3, 4, 5, or 6); fractional months should not be indicated. In no case can the period for response to the final rejection be extended to exceed six months from the mailing date of the final rejection. An appropriate response (e.g., a second or subsequent amendment or a notice of appeal) must be filed within the extended period for response. If the patent owner elects to file a second or subsequent amendment, it must place the reexamination in condition for allowance. If the amendment does not place the reexamination in condition for allowance, the prosecution of the reexamination proceeding will stand terminated under 37 CFR 1.550(d) unless an appropriate notice of appeal was filed before the expiration of the response period.

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. See 37 CFR 1.116(e). If the patent owner’s showing is insufficient, the examiner may deny entry of the affidavit, notwithstanding the previous grant of an extension of time to submit it. The grant of an extension of time in these circumstances serves merely to keep the prosecution of the proceeding from becoming terminated while allowing the patent owner the opportunity to present the affidavit or to take other appropriate action. Moreover, prosecution of the reexamination to save it from termination must include such timely, complete and proper action as required by 37 CFR 1.113. The admission of the affidavit or declaration for purposes other than allowance of the claims, or the refusal to admit the affidavit or declaration, and any proceedings relative thereto, shall not operate to save the prosecution of the proceeding from termination.

Implicit in the above practice is the fact that affidavits or declarations submitted after final rejection are subject to the same treatment as amendments submitted after final rejection. See In re Affidavit Filed After Final Rejection, 152 USPQ 292, 1966 C.D. 53 (Comm’r Pat. 1966).

[top]