[Patentpractice] Reply period for lack-of-unity finding in US 371 application

Tue Aug 6 17:20:23 UTC 2024

In case anyone wondered what happened here, I have a fun (as in, not at all
fun) update.

I prepared a reply so that we could meet the 2-month deadline, but I didn't
receive client instructions until after it passed. As a result, I filed the
reply after the 2-month deadline but before the 3-month deadline indicated
in the Office Action.

The reply in Patent Center is now labeled as "Untimely (Late)."

I sent e-mail to the AAU asking for the reply recognized as timely because
the Office Action set a 3-month period for reply, and the reply was filed
before that deadline passed. So far, I have received no response, and
nothing has changed.

In an attempt to avoid having to actually call the AAU and sit on hold
forever, today I called the examiner to see if she could do what needs to
be done. She said, "Oh, yeah, that was a typo by me, it should've been 2
months. That's why the reply is considered late." I said, "OK, but the
reply was not late. The Office Action says 3 months." She said, "Yeah, but
it should've been 2 months." I said, "Yeah, but it SAYS 3 months." She then
suggested I file a petition/fee for a 1-month extension of time. I said,
no, the Office Action says 3 months, typo or not, and I filed before 3
months, and therefore the reply was timely and needs to be recognized as
timely. As in, the USPTO needs to fix this.

She said she's going to try to figure out who needs to be contacted to
address it.

So I am now in exactly the situation I had hoped to avoid, trying to get
the USPTO to acknowledge its own error so my client is not penalized for my
presumption that the USPTO meant what it said.

Best regards,
Krista

------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com
T:  408.455.5539
www.jacobseniplaw.com

On Mon, Jun 17, 2024 at 8:11 PM Krista Jacobsen <krista at jacobseniplaw.com>
wrote:

> Hi David,
>
> This is very helpful -- thank you. I was thinking that the coding of the
> document would automatically set a 2-month deadline, but if the clerks
> actually do look at the OA itself to set the PTO's timers, then I do not
> have to worry.
>
> Best regards,
> Krista
>
> ------------------------------------------
> Krista S. Jacobsen
> Attorney and Counselor at Law
> Jacobsen IP Law
> krista at jacobseniplaw.com
> T:  408.455.5539
> www.jacobseniplaw.com
>
>
> On Fri, Jun 14, 2024 at 6:50 AM David Boundy via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
>> The examiner is wrong.   Look at the statute, specifically section 133.
>> "Such action" controls over usual practice or what the examiner wishes
>> he/she might have done.
>>
>> This isn't enforced by the examiner.  Once an action goes out, extensions
>> are enforced by the intake clerks.  When the Action goes out, the examiner
>> clicks a box "2 months" vs "3 months" and that ends up on the action cover
>> sheet, and that's what the intake clerks will enforce when you file a reply.
>>
>> It ain't broke.  Don't fix it.  Classic case of "to ask permission is to
>> seek denial."
>>
>> On Fri, Jun 14, 2024 at 7:24 AM Angela Armstrong-Baker via Patentpractice
>> <patentpractice at oppedahl-lists.com> wrote:
>>
>>> Hi Krista.
>>>
>>>
>>>
>>> This happened to us this week as well. I contacted the Examiner and she
>>> said that the 3 month reply date was an error and the deadline is in fact 2
>>> months.
>>>
>>>
>>>
>>> Best regards,
>>>
>>>
>>>
>>> Angie
>>>
>>>
>>>
>>> [image: Logo Description automatically generated with low confidence]
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>>>
>>>
>>>
>>>
>>> *Angie Armstrong-Baker*
>>>
>>> Senior Patent Law Clerk
>>>
>>> www.leberiplaw.com
>>>
>>> +1 503.549.6269 (main)
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>>>
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>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>> <https://namwolf.org/law-firm-members/m/leber-patent-law-pc/>
>>>
>>> <https://www.wbenc.org/about-wbenc/>
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>>> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
>>> Behalf Of *Krista Jacobsen via Patentpractice
>>> *Sent:* Thursday, June 13, 2024 4:37 PM
>>> *To:* For patent practitioners. This is not for laypersons to seek
>>> legal advice. <patentpractice at oppedahl-lists.com>
>>> *Cc:* Krista Jacobsen <krista at jacobseniplaw.com>
>>> *Subject:* [Patentpractice] Reply period for lack-of-unity finding in
>>> US 371 application
>>>
>>>
>>>
>>> Am I right to be suspicious of a 3-month reply period for a
>>> lack-of-unity finding in a U.S. national phase application?
>>>
>>>
>>>
>>> This is my first lack-of-unity finding in the U.S. national phase, and I
>>> was pleasantly surprised that the examiner applied the correct standard.
>>> The office action purports to set a reply deadline of 3 months, but I am
>>> wondering if that is correct, given that ordinary restriction requirements
>>> have a 2-month reply period.
>>>
>>>
>>>
>>> I am concerned that the coding of the office action ("Requirement for
>>> restriction/election"), and not what the office action actually says,
>>> automatically starts a clock in the USPTO's systems, and if I take the
>>> 3-month deadline at face value and wait until after the 2-month date passes
>>> to file a reply, I could end up in a situation where they want a petition
>>> and fee for a 1-month extension of time. Fighting them about that would be
>>> more complicated and costly than just replying within 2 months.
>>>
>>>
>>>
>>> Before I call the examiner, I wanted to check with the brain trust to
>>> see if perhaps this is a completely normal situation, and I'm worrying for
>>> nothing. (For example, is there a rule that all replies in the national
>>> phase get at least 3 months? I couldn't find anything, but I did not do an
>>> exhaustive search.) Thanks in advance.
>>>
>>>
>>>
>>> Best regards,
>>>
>>> Krista
>>>
>>>
>>>
>>> ------------------------------------------
>>>
>>> Krista S. Jacobsen
>>>
>>> Attorney and Counselor at Law
>>>
>>> Jacobsen IP Law
>>>
>>> krista at jacobseniplaw.com
>>>
>>> T:  408.455.5539
>>>
>>> www.jacobseniplaw.com
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>>
>>
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>>
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>>
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