[Patentpractice] Examiner's answer to appeal brief not received within 2 months

Fri Dec 13 21:35:18 UTC 2024

Nope.

The Examiner said that he could see that the Allowance is being processed on his side… but it is not in private Patent Center.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
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From: Randall Svihla <rsvihla at nsiplaw.com>
Sent: Friday, December 13, 2024 4:33 PM
To: Suzannah K. Sundby <suzannah at canadylortz.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: RE: [Patentpractice] Examiner's answer to appeal brief not received within 2 months

Hi, Suzannah

No entry like this?

Notice of Allowance Data Verification Completed

Best regards,

Randall S. Svihla
NSIP Law
Washington, D.C.

From: Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>>
Sent: Friday, December 13, 2024 4:25 PM
To: Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Subject: RE: [Patentpractice] Examiner's answer to appeal brief not received within 2 months

Final and status/transactions in PatentCrapper still indicated that the Response to the Final was forwarded to the Examiner.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

From: Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>
Sent: Friday, December 13, 2024 4:10 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>>
Subject: RE: [Patentpractice] Examiner's answer to appeal brief not received within 2 months

Hi, Suzannah

Did you reply to a Non-Final Office Action or a Final Office Action?  If you replied to a Non-Final Office Action, there is no way the application can go abandoned even if the USPTO doesn't mail the Notice of Allowance for two years.

What does the transaction history in Patent Center show?

The application might have been pulled for review by Quality Review.  Or if the case had been flagged for security review when it was filed, the flag might not have been removed, which would hold up the allowance.

Good luck.

Randall S. Svihla
NSIP Law
Washington, D.C.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Suzannah K. Sundby via Patentpractice
Sent: Friday, December 13, 2024 3:10 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>>
Subject: Re: [Patentpractice] Examiner's answer to appeal brief not received within 2 months

I understand that some things are hung up at the USPTO.

I filed a response… response places in a condition for allowance.  Should have received the allowance by the 5 month date.  Contacted the Examiner.  He said he processed the allowance… still nothing… contacted the Examiner a few weeks before the 6 month date.  Allowance still being “processed” for mailing.  Day before the 6 month date, told the Examiner that I need in writing that he allowed the application in case I need to point to in case someone at the USPTO deems the application is abandoned since the allowance was not mailed before the end of the 6 month date.

The Examiner and the Supervisory Examiner kindly ensured that an Interview Summary indicating a Notice of Allowance is forthcoming was in the filewrapper the day before the 6 month date.

The allowance has yet to be mailed (or even indicated in the transaction history in PatentCrapper)…

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Krista Jacobsen via Patentpractice
Sent: Friday, December 13, 2024 9:36 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Krista Jacobsen <krista at jacobseniplaw.com<mailto:krista at jacobseniplaw.com>>
Subject: Re: [Patentpractice] Examiner's answer to appeal brief not received within 2 months

Hi Randall,

This is very helpful information — thank you. We are not way past the 2-month deadline, so perhaps the examiner did prepare the answer on time, and it’s going through back-end processing. It is good to know that the examiner will get dinged and her supervisor will automatically be notified if she doesn't get it done by the internal deadline.

Thanks again.

Best regards,
Krista

------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com<mailto:krista at jacobseniplaw.com>
T:  408.455.5539
www.jacobseniplaw.com<http://www.jacobseniplaw.com>

NOTICE:  This communication may include privileged or confidential information.  If received in error, please notify the sender and delete this communication without copying or distributing.

On Dec 13, 2024, at 6:25 AM, Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>> wrote:

Hi, Krista

The Examiner will get hit with minus points on the workflow management element of their rating if they don't issue an Examiner's answer by the deadline on their docket report, and the case will pop up on his supervisor's list of late cases, so that will prevent an Examiner from sitting on the Appeal Brief forever.

When I was an Examiner, we had to issue an Examiner's Answer by the end of the biweek that included the date that was two months after the Appeal Brief was placed on our docket.  That may have changed slightly, but is still approximately correct,  And it takes some time after the Examiner turns in the Examiner's Answer for it to be processed and mailed.

Best regards,

Randall S. Svihla
NSIP Law
Washington, D.C.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Krista Jacobsen via Patentpractice
Sent: Friday, December 13, 2024 9:02 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Krista Jacobsen <krista at jacobseniplaw.com<mailto:krista at jacobseniplaw.com>>
Subject: [Patentpractice] Examiner's answer to appeal brief not received within 2 months

Hi everyone,

According to the transaction history, the appeal brief in an application was forwarded to the examiner over 2 months ago. We have not yet received the examiner's answer.

Per MPEP 1207.02, "[t]he examiner should furnish the appellant with a written statement in answer to the appellant’s brief within 2 months after the receipt of the brief by the examiner."

(Note the word "should," which seems problematic, at least because the appeal cannot be forwarded to the PTAB without an examiner's answer. What's to stop an examiner from just sitting on the appeal brief forever?)

Other than calling the examiner's supervisor (and/or Patrick the Ombudsman who is definitely not AI), is there anything an applicant can do when the examiner misses the 2-month (apparently soft) deadline to provide the answer?

Thanks in advance.

Best regards,
Krista

------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com<mailto:krista at jacobseniplaw.com>
T:  408.455.5539
www.jacobseniplaw.com<http://www.jacobseniplaw.com/>

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