Patents Q&A

What Patent Application Extensions of Time Are Available?

For U.S. patent applications, official communications from the U.S. Patent & Trademark Office (USPTO) may require a response by a particular deadline. Failing to respond will result in the application being abandoned. If more time is needed to respond, extensions of time may be available, with the payment of official extension of time fee(s). What follows is a brief explanation of how the USPTO handles extensions of time for responses involving patent applications.

The Basics of Response Periods and Availability of Extensions of Time

Statutes plus USPTO regulations and guidelines determine periods for reply and how those time limits are calculated for patent applications. These deadlines are based on the date an official communication is sent to the applicant. Office actions generally have a three (3) month response deadline (called a “shortened statutory period for reply”), extendable by up to three additional months upon payment of official monthly extension of time fees.  The maximum time period to reply, with extension, is six (6) months.

However, some other types of actions, such as responses to restriction/election requirements, responses to deficiencies notices, and appeal briefs have shorter deadline periods but may allow for longer extensions. Certain appeal deadlines and non-standard extension requests under 37 C.F.R. § 1.136(b) are subject to other limits or requirements than for ordinary extensions to respond to office actions, including a need to request leave for an extension within the original deadline period.

Issue fee payment deadlines after allowance are not extendable (37 C.F.R. § 1.311). This means an applicant has only three (3) months after a notice of allowance is sent to pay the issue fee.

Weekends and Holidays

If a USPTO deadline falls on Saturday, Sunday, or a U.S. Federal holiday, the applicant can take action by the next succeeding secular or business day. In other words, a deadline on a weekend or a holiday is automatically extended to the next regular business day without needing a request for an extension of time.

Requesting an Extension of Time

Extensions of time for responding to patent application office actions are essentially freely available. They can be obtained simply by making a request (petition) and paying necessary official fees at the time a substantive response is filed.  That is, in most cases, there is no need to request the extension of time within the original shortened period for reply (or otherwise in advance of a substantive response).  Instead, the applicant files a response after the shortened period of reply, but within the maximum 6-month period, and at that point concurrently files an explicit request for extension along with payment of the extension fees.

Ordinary extensions of time are calculated monthly, based upon the month in which a substantive response is made. The extension of time fees increase with each subsequent month of extension. This means the fee for a 2-month extension is more than twice the fee for a 1-month extension, and so forth. The fees do not stack. So a response in the second month of extension requires only the 2-month extension fee, rather than both the 1-month and 2-month extension fees. The official extension fees also depend on the applicant’s entity size.

Special Considerations After a Final Office Action — Advisory Action Practice

For final office actions in patent cases, the USPTO has a special procedure involving advisory action practice that can help avoid extension of time fees. This amounts to an optional further shortened period with certain benefits. Filing a response to a final office action within two (2) months potentially allows further action to be taken (within the maximum 6-month response period) without an official extension of time.  In practical terms, meeting the 2-month deadline is most useful when making after-final claim amendments but is perhaps less significant for other types of after-final actions. This requires some further explanation and context to fully understand.

Amendments after final are not entered as a matter of right. If an examiner believes that such an amendment raises “new issues” that require further searching, that is, an updated search for prior art, and there was no good and sufficient reason for not presenting the amendment earlier, then an advisory action is issued indicating that the amendment after final will not be entered. The applicant can then consider a request for continued examination (RCE), appeal, or other action to continue to seek a patent. However, such other possible actions are still subject to the original reply periods set by the final office action.

Because an advisory action does not establish a new response deadline, both the shorted and 6-month maximum response deadlines set by the final office action still apply. This means any further action after the end of the 3-month shortened statutory period requires an extension of time and associated fees. An important exception is that if the applicant responded by the 2-month deadline and the advisory action is sent by the USPTO after the shortened statutory period, the applicant can take action on that same day without an extension of time. This is essentially a limited exception to having to pay for an extension of time when an advisory action is issued.

The 2-month after final deadline is optional. An applicant can still take action within the shortened 3-month period without any extension of time, and after that with an extension of time. But submitting a claim amendment after final beyond the 2-month deadline increases the chances that extension of time fees may be required in order to take still further action—unless the amendment merely cancels claims, adopts allowable subject matter or an examiner suggestion, or corrects a minor error that does not require significant further examination.

Other Options Related to Deadlines and Extensions of Time

If a reply is not possible yet even with extensions of time, there may be other options to avoid losing rights. For instance, it is sometimes possible to file a new continuation application and allow the current one to go abandoned, although payment of extension of time fees in the parent case is still required if the continuation application is filed after the shortened statutory period. Moreover, if there was an error in the USPTO reporting an office action or the applicant did not receive it, or if the office action contains an error that affects the applicant’s ability to reply, filing a petition might be possible. An experienced U.S. patent attorney can advise about when and how such other options might be utilized.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.