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2662    Time for Response and Comments [R-11.2013]

The time periods for response and comments for the various stages of an inter partes reexamination proceeding are as follows:

  • (A) After an Office action that is not an Action Closing Prosecution (non-ACP Office action).
    • (1) Patent owner may file a patent owner’s response within the time for response set in the non-ACP Office action. The time period set for response will normally be two (2) months from the mailing date of the action.
    • (2) Where patent owner files a timely response to the non-ACP Office action, the third party requester may once file written comments addressing issues raised by the Office action or by the patent owner response to the action. The third party requester’s written comments must be submitted within 30 days from the date of service of the patent owner’s response on the third party requester. The date of service can be found on the Certificate of Service that accompanies the patent owner’s response.
  • (B) After an Office letter indicating that a response by the patent owner is not proper.

After an Office letter indicates that a response filed by the patent owner is not completely responsive to a prior Office action (i.e., an incomplete response), the patent owner is required to complete the response within the time period set in the Office letter. 37 CFR 1.957(d). A time period of 30 days or one month (whichever is longer) is normally set. Any third party requester comments on a supplemental patent owner response that completes the initial response must be filed within 30 days from the date of service of the patent owner’s supplemental response on the third party requester.

  • (C) After an Action Closing Prosecution (ACP).

    The patent owner may once file written comments and/or present a proposed amendment to the claims within the time period set in the ACP. 37 CFR 1.951(a). Normally, the ACP will set a period of 30 days or one month (whichever is longer) from the mailing date of the ACP. Where the patent owner files comments and/or a proposed amendment, the third party requester may once file comments responsive to the patent owner’s submission within 30 days from the date of service of the patent owner’s submission on the third party requester. 37 CFR 1.951(b).

  • (D) Appeal to the Board after the examiner issues Right of Appeal Notice.
    • (1) After the examiner issues a Right of Appeal Notice (RAN), the patent owner and the third party requester may each file a notice of appeal within 30 days or one month (whichever is longer) from the mailing date of the RAN. 37 CFR 1.953(c). The time for filing a notice of appeal cannot be extended. 37 CFR 41.61(e).
    • (2) A patent owner who has not filed a timely notice of appeal may file a notice of cross appeal (with respect to any decision adverse to the patentability of any claim) within fourteen days of service of a third party requester’s notice of appeal. 37 CFR 41.61(b)(1).

A third party requester who has not filed a timely notice of appeal may file a notice of cross appeal (with respect to any final decision favorable to the patentability of any claim) within fourteen days of service of a patent owner’s notice of appeal. 37 CFR 41.61(b)(2).

The time for filing a notice of cross-appeal cannot be extended. 37 CFR 41.61(e).

  • (E) After an Office notification of defective notice of appeal or notice of cross appeal (to the Board).

    A party who is notified of a defective notice of appeal, or defective notice of cross appeal, must cure the defect within one month from the mail date of the Office letter notifying the party. (Form PTOL-2067 should be used to notify the parties.)

    The time for curing a defective notice of appeal or cross-appeal cannot be extended, since the paper curing the defect is in-effect a substitute notice of appeal or cross-appeal.

  • (F) Filing of briefs after notice of appeal or notice of cross appeal (to the Board).
    • (1) Each party that filed a notice of appeal or notice of cross appeal may file an appellant brief and fee within two months after the last-filed notice of appeal or cross appeal. Additionally, if any party to the reexamination is entitled to file an appeal or cross appeal but fails to timely do so, the appellant brief and fee may be filed within two months after the expiration of time for filing (by the last party entitled to do so) of the notice of appeal or cross appeal. 37 CFR 41.66(a).
    • (2) Once an appellant brief has been properly filed, an opposing party may file a respondent brief and fee within one month from the date of service of the appellant brief. 37 CFR 41.66(b).
    • (3) The times for filing appellant and respondent briefs may not be extended. 37 CFR 41.66(a) and (b).
  • (G) After an Office notification of non-compliance of appellant brief or respondent brief.

    A party who is notified of non-compliance of an appellant brief or respondent brief must file an amended brief within a non-extendable time period of one month from the date of the Office letter notifying the party of the non-compliance of the brief.

  • (H) Rebuttal brief after the examiner issues an examiner’s answer.

    A third-party requester appellant and/or a patent owner appellant may each file a rebuttal brief within one month of the date of the examiner’s answer. The time for filing a rebuttal brief may not be extended. 37 CFR 41.66(d).

  • (I) Oral Hearing.

    If an appellant or a respondent (who has filed a respondent brief) desires an oral hearing by the Board, he or she must file a written request for an oral hearing accompanied by the fee set forth in 37 CFR 41.20(b)(3) within two months after the date of the examiner’s answer. The time for filing a request for oral hearing may not be extended. 37 CFR 41.73(b).

  • (J) Appeal to Court.

    The time for the patent owner and/or the third party requester to file a notice of appeal to the U.S. Court of Appeals for the Federal Circuit is two months from the date of the Board decision. If a timely request for rehearing (37 CFR 41.79) is filed, the time for the patent owner and/or the third party requester to file a notice of appeal to the Federal Circuit is two months from final Board action on the request for rehearing. 37 CFR 1.304(a)(1).

  • (K) Extensions of Time.

    See MPEP § 2665 as to extensions of time in inter partes reexamination.

  • (L) Litigation.

    Where the reexamination results from a court order or litigation is stayed for purposes of reexamination, the shortened statutory period will generally be set at one month or thirty days, whichever is longer. In addition, if (1) there is litigation concurrent with an inter partes reexamination proceeding and (2) the reexamination proceeding has been pending for more than one year, the Director of the Office of Patent Legal Administration (OPLA), Director of the Central Reexamination Unit (CRU), Director of the Technology Center (TC) in which the reexamination is being conducted, or a Senior Legal Advisor of the OPLA, may approve Office actions in such reexamination proceeding setting a one-month or thirty days, whichever is longer, shortened statutory period for response rather than the two months usually set in reexamination proceedings. A statement at the end of the Office action – “One month or thirty days, whichever is longer, shortened statutory period approved,” followed by the signature of one of these officials, will designate such approval. See MPEP § 2686.04.

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Last Modified: 03/27/2014 10:10:35