[Patentpractice] Reply period for lack-of-unity finding in US 371 application
Carl Oppedahl
carl at oppedahl.com
Tue Aug 6 22:44:35 UTC 2024
What controls is what it said on the PTOL-326. It absolutely does not
matter whether the Examiner intended to say "2". If it says "3" then
you get three months and that is the answer.
No you should not have to file a petition. Nor should you have to pay
any money at all.
If need be you escalate to the SPE and then to the Director of the Tech
Center. Eventually somebody will get shamed into doing the right thing.
On 8/6/2024 11:20 AM, Krista Jacobsen via Patentpractice wrote:
> 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 <http://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 <http://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
>
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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 <http://www.jacobseniplaw.com>
>
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