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2913 Relief from Prescribed Time Limits [R-07.2015]

35 U.S.C. 387  Relief from prescribed time limits.

An applicant’s failure to act within prescribed time limits in connection with requirements pertaining to an international design application may be excused as to the United States upon a showing satisfactory to the Director of unintentional delay and under such conditions, including a requirement for payment of the fee specified in section 41(a)(7), as may be prescribed by the Director.

37 CFR 1.1051 Relief from prescribed time limits.

  • (a) If the delay in an applicant's failure to act within prescribed time limits under the Hague Agreement in connection with requirements pertaining to an international design application was unintentional, a petition may be filed pursuant to this section to excuse the failure to act as to the United States. A grantable petition pursuant to this section must be accompanied by:
    • (1) A copy of any invitation sent from the International Bureau setting a prescribed time limit for which applicant failed to timely act;
    • (2) The reply required under paragraph (c) of this section, unless previously filed;
    • (3) The fee as set forth in § 1.17(m);
    • (4) A certified copy of the originally filed international design application, unless a copy of the international design application was previously communicated to the Office from the International Bureau or the international design application was filed with the Office as an office of indirect filing, and a translation thereof into the English language if it was filed in another language;
    • (5) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional. The Director may require additional information where there is a question whether the delay was unintentional; and
    • (6) A terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section.
  • (b) Any request for reconsideration or review of a decision refusing to excuse the applicant’s failure to act within prescribed time limits in connection with requirements pertaining to an international design application upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to excuse or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under the provisions of § 1.136.
  • (c) Reply. The reply required may be:
    • (1) The filing of a continuing application. If the international design application has not been subject to international registration, the reply must also include a grantable petition under § 1.1023(b) to accord the international design application a filing date; or
    • (2) A grantable petition under § 1.1052, where the international design application was filed with the Office as an office of indirect filing.
  • (d) Terminal disclaimer. Any petition pursuant to this section must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period beginning on the due date for the reply for which applicant failed to timely act and ending on the date of filing of the reply required under paragraph (c) of this section and must also apply to any patent granted on a continuing design application that contains a specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to the application for which relief under this section is sought.

Pursuant to 35 U.S.C. 387, 37 CFR 1.1051 sets forth a petition procedure to excuse, with respect to the United States, an applicant’s failure to act within prescribed time limits under the Hague Agreement in connection with requirements pertaining to an international design application where the delay in applicant’s failure to act was unintentional. The petition must be accompanied by: (1) a copy of any invitation sent from the International Bureau setting a prescribed time limit for which applicant failed to timely act; (2) the reply required under 37 CFR 1.1051(c), unless previously filed; (3) the fee as set forth in 37 CFR 1.17(m); (4) a certified copy of the originally filed international design application, unless a copy of the international design application was previously communicated to the Office from the International Bureau or the international design application was filed with the USPTO as an office of indirect filing; (5) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional; and (6) a terminal disclaimer (and fee as set forth in 37 CFR 1.20(d)) required pursuant to 37 CFR 1.1051(d). The Director may require additional information where there is a question whether the delay was unintentional.

Pursuant to 37 CFR 1.1051(c), the “reply” required for a grantable petition under 37 CFR 1.1051(a) may be: (1) the filing of a continuing application and, if the international design application has not been subject to international registration, a grantable petition under 37 CFR 1.1023(b) to accord the international design application a filing date; or (2) a grantable petition under 37 CFR 1.1052, where the international design application was filed with the Office as an office of indirect filing. See MPEP § 2914.

Pursuant to 37 CFR 1.1051(d), any petition under 37 CFR 1.1051(a) must be accompanied by a terminal disclaimer and fee as set forth in 37 CFR 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period beginning on the due date for the reply for which applicant failed to timely act and ending on the date of filing of the reply required and must also apply to any patent granted on a continuing design application that contains a specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to the application for which relief under 37 CFR 1.1051 is sought.

Where a petition under 37 CFR 1.1051(a) is refused by the Office, any request for reconsideration or review of the decision must be filed within two months of the decision or within such time as set in the decision. Unless the decision indicates otherwise, the two-month time period may be extended under the provisions of 37 CFR 1.136. See 37 CFR 1.1051(b).

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Last Modified: 01/24/2018 17:19:02