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2665    Extension of Time for Patent Owner Response [R-08.2012]

37 C.F.R. 1.956   Patent owner extensions of time in inter partes reexamination.

The time for taking any action by a patent owner in an inter partes reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. Any request for such extension must be accompanied by the petition set forth in § 1.17(g). See § 1.304(a) for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit.

The provisions of 37 CFR 1.136(a) and 1.136(b) are NOT applicable to inter partes reexamination proceedings under any circumstances. Public Law 97-247 amended 35 U.S.C. 41 to authorize the Director of the USPTO to provide for extensions of time to take action which do not require a reason for the extension of time in an “application.” An inter partes reexamination proceeding does not involve an “application.” The provisions of 37 CFR 1.136 authorize 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 an inter partes reexamination proceeding.

The times for filing a notice of appeal or cross-appeal, an appellant brief, a respondent brief, submissions curing a defective appeal or brief, a rebuttal brief, and a request for oral hearing cannot be extended.

A request for an extension of time for filing an appeal to the U.S. Court of Appeals for the Federal Circuit is governed by 37 CFR 1.304(a). A request for an extension of time to petition from the denial of a request for reexamination can be obtained only by filing a grantable petition under 37 CFR 1.183 (with fee) to waive the time provisions of 37 CFR 1.927.

Extensions of time in an inter partes reexamination proceeding are otherwise governed by 37 CFR 1.956. It should be noted that extensions of time under 37 CFR 1.956 are not available to the third party requester.

An extension of time in an inter partes reexamination proceeding is requested, where applicable, pursuant to 37 CFR 1.956. Any request for extension of time pursuant to 37 CFR 1.956 will be decided by the Central Reexamination Unit (CRU) Director. The request (A) must be filed on or before the day on which action by the patent owner is due, (B) must set forth sufficient cause for the extension, and (C) must be accompanied by the petition fee set forth in 37 CFR 1.17(g).

Requests for an extension of time in an inter partes reexamination proceeding will be considered only after the first Office action on the merits in the reexamination is mailed. Any request for an extension of time filed prior to the first action will be denied.

The certificate of mailing and the certificate of transmission procedures (37 CFR 1.8), and the “Express Mail” mailing procedure (37 CFR 1.10), may be used to file a request for extension of time, as well as any other paper in an existing inter partes reexamination proceeding (see MPEP § 2666).

As noted above, a request for extension of time under 37 CFR 1.956 will be granted only for sufficient cause, and the request must be filed on or before the day on which action by the patent owner is due. In no case, will the mere filing of a request for extension of time automatically effect any extension, because the showing of cause may be insufficient or incomplete. In the prosecution of an ex parte reexamination, an automatic 1-month extension of time to take further action is granted upon filing a first timely response to a final Office action (see MPEP § 2272). The automatic extension given in ex parte reexamination does not apply to the first response to an Action Closing Prosecution (ACP) in an inter partes reexamination. The reason is that in inter partes reexamination, parties do not file an appeal in response to an ACP, and a further Office action (Right of Appeal Notice) will issue even if the parties make no response at all. Thus, there is no time period to appeal running against the parties after the ACP is issued, unlike ex parte reexamination where an appeal is due after final rejection and the time is thus automatically extended one month to provide time for the patent owner to review the Office’s response to the amendment before deciding whether to appeal.

Evaluation of whether “sufficient cause” has been shown for an extension must be made by balancing the desire to provide the patent owner with a fair opportunity to respond, against the requirement of the statute, 35 U.S.C. 314(c), that the proceedings be conducted with special dispatch.

Any request for an extension of time in a reexamination proceeding must fully state the reasons therefor. The reasons must include (A) a statement of what action the patent owner has taken to provide a response, to date as of the date the request for extension is submitted, and (B) why, in spite of the action taken thus far, the requested additional time is needed. The statement of (A) must provide 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.

Prosecution will be conducted by initially setting a time period of at least 30 days or one month (whichever is longer), see MPEP § 2662. First requests for extensions of these time periods will be granted for sufficient cause, and for a reasonable time specified-usually 1 month. The reasons stated in the request will be evaluated, and the request will be favorably considered where there is a factual accounting of reasonably diligent behavior by all those responsible for preparing a response or comments within the statutory time period. Second or subsequent requests for extensions of time, or requests for more than one month, will be granted only in extraordinary situations.

  EXTENSIONS OF TIME TO SUBMIT AFFIDAVITS AFTER ACTION CLOSING PROSECUTION

Frequently, a request for an extension of time is made, stating as a reason therefor, that more time is needed in which to submit an affidavit. When such a request is filed after an ACP, the granting of the request for extension of time is without prejudice to the right of the examiner to question why the affidavit is now necessary and why it was not earlier presented. If the showing by the patent owner 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 give the patent owner an extended opportunity to present the affidavit or to take other appropriate action.

Affidavits submitted after an ACP are subject to the same treatment as amendments submitted after an ACP. This is analogous to the treatment of affidavits submitted after a final rejection in an application. See In re Affidavit Filed After Final Rejection, 152 USPQ 292, 1966 C.D. 53 (Comm’r Pat. 1966).

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