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

Tue Aug 6 19:53:03 UTC 2024

Update!

The examiner's supervisor just e-mailed to say that the Office will honor
the 3-month reply deadline, and he is going to change the document code in
Patent Center from "Untimely (Late) Amendment filed" to the proper code.

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 12:18 PM Krista Jacobsen <krista at jacobseniplaw.com>
wrote:

> 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]
>> <http://www.leberiplaw.com/>*
>>
>>
>>
>>
>>
>> *Angie Armstrong-Baker*
>>
>> Senior Patent Law Clerk
>>
>> *www.leberiplaw.com <http://www.leberiplaw.com/>*
>>
>> +1 503.549.6269 (main)
>>
>> +1 613.909.6875 (direct)
>>
>> *angie at leberiplaw.com <angie at leberiplaw.com>*
>>
>>
>>
>> *[image: Title: LinkedIn - Description: image of LinkedIn icon]
>> <https://www.linkedin.com/in/angiearmstrongbaker61466a18/>*
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>> * <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
>> <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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