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

Tue Aug 6 19:18:27 UTC 2024

And, also, 37 CFR § 1.134 states that "An Office action will notify the
applicant of any non-statutory or shortened statutory time period set for
reply to an Office action. Unless the applicant is notified in writing that
a reply is required in less than six months, a maximum period of six months
is allowed."

It seems to me that a reasonable interpretation of this regulation is that
the applicant is entitled to rely on whatever the Office Action says the
deadline for reply is. Otherwise, the USPTO is placing the burden of
determining reply deadlines on applicants, which surely cannot be right.

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 Tue, Aug 6, 2024 at 11:49 AM Timothy Snowden via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Although practically I would follow Randall's suggestion, this phrase
> caught me: "I am sure the Examiner is not authorized to change the
> shortened statutory period for a particular type of Office Action."
>
>
>    1. Is the 2-months statutorily set? My understanding is that the
>    "shortened statutory periods" are not set by any statute. MPEP 710.02(b)
>    begins with "Under the authority given him or her by *35 U.S.C. 133
>    <https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#d0e303207aia>*,
>    the Director of the USPTO *has directed the examiner* to set a
>    shortened period for reply to every action. The length of the shortened
>    statutory period to be used depends on the type of reply required. Some
>    specific cases of shortened statutory periods for reply are given below. *These
>    periods may be changed under special, rarely occurring circumstances*."
>    Accordingly, it seems that the Examiner (or at least, some examiners) would
>    be able to change the 'default' shortened periods (shorter or longer) –
>    this is why I always double check what is written in case (so far it's
>    never happened to me) they shortened the default shortened period...
>    2. Furthermore, that guidance binds the examiner, not the applicant.
>    Even assuming the examiner *shouldn't *have changed it, the examiner
>    is speaking with the force of the USPTO Director. Accordingly, the only
>    thing the applicant has to go off of is what was set in the official notice
>    from the USPTO. It seems like there is some rule or court case that when
>    the USPTO makes a mistake that they don't catch until afterwards, that
>    doesn't take away the applicant's rights – maybe in the context of the
>    USPTO miscalculating fees due (USPTO mistake, not based on applicant
>    mistake), and then issuing the patent doesn't make the patent invalid. It
>    seems like this would be corollary, although I defer to better minds there.
>
>
> Just some thoughts triggered by one short phrase...
>
> ------------------------------
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> on
> behalf of Randall Svihla via Patentpractice <
> patentpractice at oppedahl-lists.com>
> *Sent:* Tuesday, August 6, 2024 1:15 PM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Randall Svihla <rsvihla at nsiplaw.com>
> *Subject:* Re: [Patentpractice] Reply period for lack-of-unity finding in
> US 371 application
>
>
> Hi, Krista
>
>
>
> I am a big fan of cursing the darkness rather than lighting a candle.  But
> in this case I would light the candle.
>
>
>
> I am sure that the USPTO's systems have the appropriate due dates
> programmed into the system, so that when an Office Action or a Final Office
> Action or a Restriction Requirement is entered into the system, the correct
> due date is entered into the system regardless of what the Examiner types
> in the Office Action Summary.
>
>
>
> MPEP 710.02(b) states as follows on MPEP page 700-119:
>
>
>
> *2 MONTHS*
>
> (A) Requirement for restriction or election of species only (no action on
> the merits) ...... MPEP §§ 809.02(a) and 817.
>
>
>
> I am sure the Examiner is not authorized to change the shortened statutory
> period for a particular type of Office Action.
>
>
>
> While you are technically correct, you would have to file a Petition Under
> 37 CFR 1.181 to get this fixed, and there is no guarantee they would agree
> with you.
>
>
>
> So just paying the one-month extension of time fee would be the most
> cost-effective way to go, considering the time it would take you to prepare
> the petition.  Plus the petition will almost certainly not be decided until
> the 6-month statutory period for response has expired, so you would have to
> file an RCE to avoid the application from going abandoned.
>
>
>
> Did your response not include an authorization to pay for any extension of
> time fee that may be required?
>
>
>
> Best regards,
>
>
>
> Randall S. Svihla
>
> NSIP Law
>
> Washington, D.C.
>
>
>
>
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Krista Jacobsen via Patentpractice
> *Sent:* Tuesday, August 6, 2024 1:20 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:* Re: [Patentpractice] Reply period for lack-of-unity finding in
> US 371 application
>
>
>
> 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 <krista at jacobseniplaw.com>*
>
> T:  408.455.5539
>
> *www.jacobseniplaw.com <http://www.jacobseniplaw.com/>*
>
>
>
>
>
> On Mon, Jun 17, 2024 at 8:11 PM Krista Jacobsen <*krista at jacobseniplaw.com
> <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 <krista at jacobseniplaw.com>*
>
> T:  408.455.5539
>
> *www.jacobseniplaw.com <http://www.jacobseniplaw.com/>*
>
>
>
>
>
> On Fri, Jun 14, 2024 at 6:50 AM David Boundy via Patentpractice <*patentpractice at oppedahl-lists.com
> <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
> <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 <http://www.leberiplaw.com/>*
>
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> *From:* Patentpractice <*patentpractice-bounces at oppedahl-lists.com
> <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
> <patentpractice at oppedahl-lists.com>*>
> *Cc:* Krista Jacobsen <*krista at jacobseniplaw.com
> <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 <krista at jacobseniplaw.com>*
>
> T:  408.455.5539
>
> *www.jacobseniplaw.com <http://www.jacobseniplaw.com/>*
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