[Patentpractice] Extended Due Date/Sanity Check Question

David Boundy PatentProcedure at gmail.com
Wed Mar 12 17:34:16 UTC 2025 

Justice Gorsuch (while still on the (Tenth?) Circuit) explained that one
relies on PTO subregulatory guidance to override a statute at one's peril.
The PTO doesn't have authority to waive it just by throwing an oddball name
at it.  whatever authority the PTO had to stretch statutes ended with Loper
Bright last summer.


On Wed, Mar 12, 2025 at 1:19 PM Sharon Rubin via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> As Timothy said, Missing Parts has always been interpreted as 2 month + 5
> months.  2 different docketing systems we’ve used agree, so it must be true!
>
>
>
> Our current docketing system says with regard to Missing Parts: “There are
> five extensions available, so the final time can be 7 months after the date
> mailed.  See MPEP 710.02(d) which explains why this time can go beyond 6
> months.”
>
>
>
> *MPEP* *710.02(d)    Difference Between Shortened Statutory Periods for
> Reply and Specified Time Limits [R-07.2015]*
>
>
>
> “The 2-month time period for reply to A Notice to File Missing Parts of an
> Application is not identified on the Notice as a statutory period subject
> to 35 U.S.C. 133 <https://www.bitlaw.com/source/35usc/133.html>. Thus,
> extensions of time of up to 5 months under 37 CFR 1.136(a)
> <https://www.bitlaw.com/source/37cfr/1-136.html>, followed by additional
> time under 37 CFR 1.136(b)
> <https://www.bitlaw.com/source/37cfr/1-136.html>, when appropriate, are
> permitted.”
>
>
>
> *Sharon Rubin*
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Goldberg, Judi via Patentpractice
> *Sent:* Wednesday, March 12, 2025 12:52 PM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Goldberg, Judi <jgoldberg at leydig.com>
> *Subject:* Re: [Patentpractice] Extended Due Date/Sanity Check Question
>
>
>
> 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
>
>
>
> 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
>
> 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
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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
> *To:* patentpractice at oppedahl-lists.com
> *Cc:* Timothy Snowden <tdsnowden at outlook.com>
> *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> 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.
>
>
>
> 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
>
> www.canadylortz.com
>
> Confidentiality Notice:  This message is being sent by or on behalf of a
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