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Questions and Answers Regarding Relief Available to Patent Applicants and Patentees Affected by the Catastrophic Events of March 11, 2011, in Japan

The following questions and answers are related to the Official Gazette (OG) notice titled Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Catastrophic Events of March 11, 2011, in Japan.

 

1.  What areas are considered to be “areas of Japan affected by the earthquake and tsunami”?  For example, if one of the inventors or the correspondence address is located in Tokyo, can the applicant request a reissuance of an Office communication?

The Office did not specify in the notice which areas of Japan are affected since the Office did not want to exclude someone who may have been affected by the earthquake and/or tsunami.  However, the need for the relief being requested must be due to the effects of the earthquake and/or tsunami of March 11, 2011.  Whether someone in Tokyo would qualify for relief would depend on whether the need for the relief was due to the earthquake and/or tsunami. 

 

2.  If an applicant is filing a request for reissuance of an Office communication that was outstanding on March 11, 2011, does the applicant need to pay any extension of time fees due at that point based on the original mailing date of the Office communication?

No, applicant does not need to pay any extension of time fees when filing a request for reissuance of an Office communication. 

 

3.  In order to request reissuance of an Office communication pursuant to the OG notice does the Office communication need to have been outstanding on March 11, 2011?

Yes.  

 

4.  What time period will be provided when the Office grants applicant’s request for reissuance of an Office communication?  Is the time period that will be provided different from what is set forth in MPEP 710.06? 

The time period that was set in the Office communication will be restarted from the date of the reissuance of that Office communication.  For example, if an Office action was mailed that set a three-month shortened statutory period for reply, and the Office grants a request for reissuance of that Office action, the three-month time period running against the application will begin as of the date of the reissuance (e.g., the remailing date).  This is different from some of the situations set forth in MPEP 710.06 in which applicant may not be given a new time period equivalent to the previous time period. 

 

5.  Does the applicant need to provide any explanation when filing a request for relief pursuant to the OG notice?

No.  An applicant may simply submit the certification and request form (PTO/SB/425), or a copy of the OG notice, with an indication as to the relief being requested (if it is not clear from the record).  Applicants do not have to provide any explanation regarding how or why they are entitled to the requested relief.  Applicants should note, however, that any request for relief (either by submitting form PTO/SB/425 or a copy of the notice) is considered a representation that the need for the requested relief is due to the effects of the earthquake and/or tsunami of March 11, 2011.  Applicants are reminded that any paper being filed in the Office is considered a certification under 37 CFR 11.18(b).  Therefore, applicants must ensure that they are entitled to the relief being requested.  The need for the relief being requested must be due to the effects of the earthquake and/or tsunami of March 11, 2011, in Japan.   

 

6.  Will the Office conduct any investigation regarding whether an applicant requesting the relief is actually entitled to the relief? 

The Office does not plan to investigate whether a particular applicant qualifies for the requested relief beyond making sure that the request can be granted.  Thus, for a request for reissuance of an Office communication, the Office will make sure that a reply or response to the Office communication was outstanding on March 11, 2011, and the time period (as permitted to be extended under 37 CFR 1.136(a)) has not yet expired.  The Office does not plan to investigate whether the need for the requested relief was due to the effects of the earthquake and/or tsunami of March 11, 2011.  If there is some evidence in the record that applicant may not be entitled to the requested relief, the Office does have the authority to require additional information.  Applicants should also keep in mind that the request for relief is considered a certification under 37 CFR 11.18(b).   

 

7.   Can applicant submit a request for reissuance of an Office action on the last day of the six-month statutory time period for reply to the Office action?

No.  If applicant submits a request for reissuance on the last day of the six-month statutory time period for reply to the Office action, the Office would not be able to reissue (e.g., remail) the Office action on that same day.  Applicants must submit any request for reissuance of an Office action in sufficient time for the Office to withdraw and reissue the Office action prior to expiration of the statutory time period (as permitted to be extended under 37 CFR 1.136(a)).  If the Office does not reissue the Office action prior to the expiration of the six-month statutory time period, the application would be abandoned by operation of law.

 

8.   If an applicant previously filed a reply to a final Office action, but the Office has not yet mailed an Advisory Action (or other action in response to the after-final reply), can applicant request a reissuance of the final Office action provided that the six-month statutory time period has not yet expired?

Applicant should wait until the Office responds to the after-final reply.  If applicant is close to the expiration of the six-month statutory time period for reply, then applicant may request that the final Office action be reissued.  If the final Office action is reissued, prosecution will remain closed.  The previously filed reply will still be considered an after-final reply and will not be entered as a matter of right.  The Office would simply be restarting the time period for applicant to take appropriate action in response to the final Office action.

 

9.  If an applicant previously filed a reply to a final Office action and the Office has mailed an Advisory Action in response to the after-final reply, can the applicant request a reissuance of the final Office action provided that the six-month statutory time period has not yet expired?

Yes.  If the final Office action is reissued, prosecution will remain closed and the previously filed reply will still be considered an after-final reply.  The status of the after-final reply will remain as set forth in the Advisory Action.  The Office would simply be restarting the time period for applicant to take appropriate action in response to the final Office action.

 

10.  Can an applicant request reissuance of a pre-examination notice such as a Notice to File Missing Parts or a Notice to File Corrected Application Papers?

Yes.

 

11.  Can an applicant request reissuance of an Examiner’s Answer so that applicant would have additional time to file a reply brief?

Yes.  A request for reissuance of an Examiner’s Answer must be made within two months of the mailing date of the Examiner’s Answer and the Office must reissue (e.g., remail) the Examiner’s Answer within the two month time period.

 

12.  Can an applicant request a resetting of the time period for filing an appeal brief if a notice of appeal has already been filed?

The time period for filing an appeal brief is based upon the date a notice of appeal is filed, and not on the date an Office action or other communication is mailed.  An applicant may file a petition under 37 CFR 1.136(b) (accompanied by the $200.00 petition fee) if additional time to file an appeal brief is needed due to the effects of the earthquake and/or tsunami of March 11, 2011. 

 

13.  What if applicant needs additional time to take action after a decision by the Board of Patent Appeals and Interferences (BPAI) due to the effects of the earthquake and/or tsunami?

An applicant may file a request under 37 CFR 1.304(a) to extend the time for filing an appeal or commencing a civil action.

 

14.  Can an applicant request that an Office action (or Office communication) in an application under the Accelerated Examination program be reissued?

Yes.  Of course, applicant must satisfy the requirements set forth in the OG notice.  Applicants should keep in mind that if the Office action set a non-extendable time period of one month or thirty days, whichever is longer, applicant must request reissuance of the Office action and the Office must reissue the Office action prior to expiration of this one month (or thirty day) time period.  Also, if the request for reissuance is granted, the time period running in the application would be one month or thirty days, whichever is longer, from the date of the reissuance (e.g., the remailing date) and it would not be extendable under 37 CFR 1.136(a).  

 

15.  What are the patent term adjustment (PTA) implications of the OG notice?

The Office will consider that it met the requirements of 35 USC 154(b)(1)(A)(i)-(iv) and implementing rules, 37 CFR 1.702(a)(1)-(4) when the Office mails the first rejection, objection, or other notice that is later reissued (e.g., remailed) because of the Japanese earthquake and/or tsunami.  The Office will consider applicant to have failed to engage in reasonable efforts to conclude prosecution of the application under 37 CFR 1.704(b) if applicant does not respond within three months to any notice or any action by the Office making any rejection, objection, argument, or other request, measuring such three-month period from the mail date of the reissued action.  The shortened statutory period continues to have no effect on the three-month period.  See 37 CFR 1.704(b).  In addition, the Office will continue to not consider the certificate of mailing or certificate of transmission date under 37 CFR 1.8 in calculating the patent term adjustment.  See 37 CFR 1.703(f).

For example:  Application is filed on August 1, 2009, and the Office mails a first non-final Office action on October 1, 2010.  One of the inventors is in an area of Japan affected by the earthquake and/or tsunami on March 11, 2011.  On March 24, 2011, applicant mails a copy of the form PTO/SB/425 requesting that the Office action mailed on October 1, 2010, be reissued pursuant to the OG notice.  The need for the reissuance of the Office action is due to the effects of the earthquake and/or tsunami.  On March 27, 2011, the Office reissues (e.g., remails) the non-final Office action and restarts the three month period for reply.

The Office will consider that the non-final Office action mailed on October 1, 2010, will meet the requirement of 35 USC 154(b)(1)(A)(i) and 37 CFR 1.702(a)(1), and the Office will not grant any patent term adjustment as it relates to those provisions.

The Office will consider that applicant met the requirement of 37 CFR 1.704(b) if applicant files a reply within three months of March 27, 2011.

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Last Modified: 4/1/2011 5:39:10 PM