[Patentpractice] ChatGPT Redux -- run, don't walk [no question, just FYI]

[George Jakobsche]

Remember, generative AI is not guaranteed, or even intended, to give a correct response. It is intended to give a response in the style with which it was trained. For example, if you asked a generative AI to generate an image of Donald Trump in the style of the Dutch Golden Age, it would do so. The generated image would not be correct, in that no painting of Donald Trump was made during the Dutch Golden Age. The image would match the style, but not the actual catalog of paintings made during that period.

The same is true with your example. The style of the response is correct, in that it sounds like an authoritative answer. The problem, as you pointed out, is that it is factually incorrect. But, as noted, generative AI is not intended to generate factually correct responses.

Best regards,
George
George Jakobsche Patent Counsel PLLC
39 Old Farm Road, Concord, MA 01742-5234
George at JakobscheLaw.com<mailto:George at JakobscheLaw.com> | +1-978-245-8100

This e-mail is from George Jakobsche Patent Counsel PLLC, a law firm, and it may contain confidential or privileged information. If you are not the intended recipient, do not read, copy, or distribute this message or any attachment(s). Instead, please notify the sender and delete the message and the attachment(s). Thank you.


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Patent Lawyer via Patentpractice <patentpractice at oppedahl-lists.com>
Date: Monday, February 5, 2024 at 1:36 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Patent Lawyer <patentlawyer995 at gmail.com>
Subject: [Patentpractice] ChatGPT Redux -- run, don't walk [no question, just FYI]
Here’s a dialog with ChatGPT 4.0 from today.

Bottom line: ChatGPT got it wrong and didn’t seem to learn.  Use it for fun, not to help you practice law.

I don’t have a question for the group.  I am just providing this as an example of a mistake made by ChatGPT.

I will put my prompts in bold and red.

My initial question to ChatGPT

For a US Patent Office non-final action mailed 01/19/2024, when do the extension fees start and how much are they (for a small entity)? Put the results in a table form.

-- ChatGPT 4.0 response ===

To provide a precise and structured answer, I will first detail the general framework of USPTO (United States Patent and Trademark Office) response deadlines and extension fees, particularly for small entities, then present the specific information in a table format.

For U.S. patent applications, once an Office action is issued, the standard response period is three months from the mailing date of the Office action. However, the applicant can extend this period by up to six months, subject to payment of extension fees, which increase progressively with each additional month.

For small entities, which include independent inventors, small businesses, and nonprofit organizations, the USPTO offers a 50% reduction on most fees, including extension fees. The fees for each additional month of extension for a small entity, as of my last update in April 2023, are as follows. It's important to note that these fees can be subject to change, so it's always a good idea to consult the current USPTO Fee Schedule or contact the USPTO directly for the most up-to-date information.

Given an Office action with a mailing date of 01/19/2024, the response deadlines along with the corresponding small entity extension fees are outlined in the table below:

| Extension Month | Due Date      | Small Entity Extension Fee (USD) |
|-----------------|---------------|----------------------------------|
| 1st Month       | 04/19/2024    | $200                             |
| 2nd Month       | 05/19/2024    | $600                             |
| 3rd Month       | 06/19/2024    | $1,400                           |
| 4th Month       | 07/19/2024    | $2,200                           |
| 5th Month       | 08/19/2024    | $3,000                           |
| 6th Month       | 09/19/2024    | $3,800                           |

Please note that these amounts are based on the information available up to April 2023. For the most current fees and policies, you should consult the USPTO's official website or directly contact their customer service.

==
Me: Are you sure that a response can be filed after July 18, 2024?

-- ChatGPT 4.0 response ===
Given the correction in understanding, if an Office action is mailed on January 19, 2024, and considering the standard USPTO regulations regarding the time period for responding to Office actions, a response is due within three months from the mailing date to avoid late fees. To extend this period, additional fees are required, and extensions can be made up to six months from the original due date.

However, it is crucial to note that the maximum allowable extension is indeed up to six months beyond the initial three-month period. This means that the last day to file a response with extension fees would indeed be six months after the initial three-month period ends, not beyond. The misunderstanding may arise from calculating the exact due dates and the maximum allowable extension period.

Therefore, to clarify and correct any confusion:

- The last date to respond without any extension fees would be three months from the mailing date, which is April 19, 2024.
- Extensions can be filed for up to six months beyond this date, with the final deadline for filing a response with extension fees being October 19, 2024, not July 18 as might be implied by misunderstanding the extension period's limits.

If my previous response suggested that a response could be filed after July 18, 2024, without considering the maximum six-month extension period correctly, I appreciate the opportunity to correct this:

| Extension Month | Due Date      | Small Entity Extension Fee (USD) |
|-----------------|---------------|----------------------------------|
| 1st Month       | 05/19/2024    | $200                             |
| 2nd Month       | 06/19/2024    | $600                             |
| 3rd Month       | 07/19/2024    | $1,400                           |
| 4th Month       | 08/19/2024    | $2,200                           |
| 5th Month       | 09/19/2024    | $3,000                           |
| 6th Month       | 10/19/2024    | $3,800                           |

This table correctly aligns with the maximum extension period allowed by the USPTO for responses to Office actions, taking into account the date the Office action was mailed and the six-month maximum extension period for small entities, with corresponding fees.

===
Me: What date does the six-month period run from?

== -- ChatGPT 4.0 response ===

The six-month extension period for responding to a USPTO Office action runs from the original due date of the response, not from the mailing date of the Office action. The initial response period for an Office action is three months from its mailing date. Therefore, if an Office action is mailed on January 19, 2024, the initial three-month period to respond without incurring extension fees ends on April 19, 2024.

From that point, the six-month extension period is available, allowing responses to be filed up to six months after the initial three-month period, but with progressively increasing extension fees for each month of delay. This means the final date to file a response with extension fees is six months from the end of the initial three-month period, which would be October 19, 2024.

Here's a clarification:

- **Original due date without extension fees**: April 19, 2024
- **Final extended due date (with extension fees)**: October 19, 2024

The six-month extension period starts from the original due date of April 19, 2024, and runs through October 19, 2024, offering a window during which the applicant can file a response with the necessary extension fees.
==

Me: Are you sure? What about 35 U.S. Code § 133?

=== ChatGPT 4.0 Response ==

Under 35 U.S. Code § 133, the United States Patent and Trademark Office (USPTO) may require responses to Office actions within a prescribed time, which cannot be fewer than six months from the date of the Office action. If the applicant fails to respond within the allotted time, the application will be regarded as abandoned.

Upon reviewing 35 U.S.C. § 133 and considering its implications:
- The initial period for responding to an Office action indeed is up to six months from the mailing date of the Office action, not three months as I incorrectly stated.
- The statute provides for a maximum initial response period of six months, with no provision for extending this period under § 133 itself.

The confusion may arise from the interplay between 35 U.S.C. § 133 and the provisions for extensions of time under the USPTO's rules, which allow for the extension of certain deadlines, including the period for responding to Office actions, under specific conditions and with the payment of extension fees. However, the primary period given under § 133 is up to six months, and extensions would apply to other deadlines or in contexts where the USPTO provides specific authority for such extensions.

Given this clarification:
- The period for a response to an Office action mailed on January 19, 2024, under 35 U.S.C. § 133, would indeed run up to six months from that date, making the final due date for response July 19, 2024, without the need for extension fees for this period.

The extension fees and the ability to extend beyond this six-month period relate to other procedural aspects not covered directly under § 133 but are instead part of the USPTO's broader regulatory framework for managing patent application procedures, including the management of deadlines through the payment of fees for extensions within the bounds of the USPTO's regulations.

Therefore, the correct interpretation in light of 35 U.S.C. § 133 is that the applicant has a six-month window from the date of the Office action to respond, which in the case of an Office action mailed on January 19, 2024, would be until July 19, 2024. I appreciate the opportunity to correct and clarify this point.

==

Me: Given your new understanding, respond to the original question: when do the extension fees start and how much are they (for a small entity)? Put the results in a table form

== ChatGPT 4.0 Response ==

Given the corrected understanding that the initial period for responding to a USPTO Office action is six months from the mailing date, without the need for extension fees, and recognizing the error in my previous explanations, let's address the original question accurately within this corrected context.

For a USPTO Office action mailed on January 19, 2024, the six-month statutory period for a response without extension fees would end on July 19, 2024. Any extension beyond this date would incur extension fees. However, it's important to note that under typical circumstances, the maximum statutory period allowed to respond to an Office action without incurring extension fees is six months, and extension fees apply when petitioning for revival of an abandoned application due to failure to respond within this period, rather than extending this deadline under normal circumstances.

Given this, the premise of extension fees starting after July 19, 2024, for additional response time is incorrect because the standard procedure is that responses must be filed within six months of the Office action mailing date to avoid abandonment, not extended response times within this period. After this period, if no response has been filed, the application is considered abandoned, and the fees associated would be related to petitioning to revive the abandoned application, which are distinct from "extension fees" for extending a response deadline within the allowable response period.

To directly address the question under the corrected understanding, here's a revised table reflecting the situation for responses filed within the six-month period ending July 19, 2024, for a small entity:

| Response Period           | Due Date      | Small Entity Fee (USD)         |
|---------------------------|---------------|--------------------------------|
| Initial Response Period   | 07/19/2024    | No fee (within statutory period) |

After July 19, 2024, the application is at risk of abandonment for failure to respond. To revive an abandoned application, a petition to revive based on unintentional delay can be filed, along with associated fees. These fees are substantially higher than extension fees within the normal response period and vary based on the petition's circumstances and entity size.

For accurate and current fees related to petitioning for revival due to unintentional delay for small entities, it's advisable to consult the USPTO Fee Schedule directly, as these fees are subject to change and may have been updated since my last information update.
===
Me: [sending this email]


-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240205/29db3087/attachment.htm>