[Patentpractice] Extended Due Date/Sanity Check Question

[Goldberg, Judi]

If the notice is dated 10/17/24, even with a two month response date (i.e., 12/17/24), and assuming the normal 3 month extension available, the application wouldn’t be abandoned until 3/17/25.

My understanding has always been that you get 4 months of extension for a two month response date, and 5 months extension on a one-month response, so everything equals a total available time of 6 months.

Let us know what you find out from PTO Legal.  Thanks!

Judi

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Suzannah K. Sundby via Patentpractice
Sent: Wednesday, March 12, 2025 11:44 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Suzannah K. Sundby <suzannah at canadylortz.com>
Subject: Re: [Patentpractice] Extended Due Date/Sanity Check Question


[External Email]
Yeah, read what Boundy wrote and felt like everything I know and understand was turned upside down…

Btw, PatentCrapper indicates that the Notice mailed on October 17th is a Pre-Exam Formalities Notice.

I’m going to contact Patent Legal because the given case is a mess.

12/22/2021      Received Notice of Acceptance
09/03/2024      Notice withdrawing the Notice of Acceptance
09/13/2024      Notice of DO/EO Missing Requirements Mailed
10/17/2024      Notice withdrawing the Notice mailed 09/13/2024; Requirement for Sequence Listing setting 2 mo due date
03/12/2025      Abandonment Notice indicating no timely reply to the Notice of 10/17/2024

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Timothy Snowden via Patentpractice
Sent: Wednesday, March 12, 2025 12:27 PM
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Subject: Re: [Patentpractice] Extended Due Date/Sanity Check Question


I see your point, but I know the office (FWIW) interprets Missing Parts as having 5 month extension available, which is what I was taught. I understood the keyword here in 35 USC 132 to be "ON EXAMINATION." But this isn't examination because it's always pre-examination. In other words, although this may be an action, it's during a pre-examination review, not "on examination". Not sure how clearly that distinction carries into other thing, though.

Have I been missing something for years now? What happens when the office grants a patent after response to NTFMP at 7 months
On 3/12/2025 11:18 AM, David Boundy via Patentpractice wrote:
I think you have one more month, to total six months, April 17.  I disagree with Tim Snowden -- the six month deadline is statutory.   The statutory deadline applies to all "objections or requirements" or "actions" even if the underlying basis is regulatory.   "Action" is defined in 5 U.S.C. 551.   Look at sections 132 and 133 --

35 U.S.C. § 132 - Notice of rejection; reexamination
(a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be re­examined. No amendment shall introduce new matter into the disclosure of the invention.

35 U.S.C. § 133 - Time for prosecuting application

Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto.
Five months extension is only available for a few situations --
     -- teh initial time is one month
     -- teh deadline runs from some action of the applicant (such as filing a Notice of Appeal) rather than responding to an objection, requirement, or "any action" of the PTO.

On Wed, Mar 12, 2025 at 11:15 AM Suzannah K. Sundby via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
Received a Notification to Comply (with Sequence Listing Requirements), which is essentially a Notice of Missing Parts.

The Notice was mailed October 17, 2024, and sets an extendible 2 month shortened due date.
[cid:image001.png at 01DB9345.28DB0370]

The USPTO just mailed a Notice of Abandonment for failing to timely respond.

Thus, I need a sanity check:
Because it is a 2-month shortened date, the due date can be extended by 5 months to May 17, 2025 – Correct?

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>
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