[Patentpractice] Extended Due Date/Sanity Check Question
Timothy Snowden
tdsnowden at outlook.com
Wed Mar 12 17:55:38 UTC 2025
Well, better safe than sorry I guess.
On 3/12/2025 12:39 PM, David Boundy via Patentpractice wrote:
> Justice Gorsuch (while still on the Tenth Circuit) explained that one
> relies on PTO subregulatory guidance to override a statute at one's
> peril. I couldn't remember the case until I hit send, then it came to
> me https://scholar.google.com/scholar_case?case=3098648296141854653
> The PTO doesn't have authority to waive the six month deadline just by
> giving it an oddball name. "Any action" means "any action." Whatever
> authority the PTO had to torture statutes ended with Loper Bright last
> summer. The PTO structures its practices to maximize fee income, not
> to give value to applicants. When it comes to a choice between fee
> revenue and the law, the law can go to hell. So don't trust these
> representations -- your opposing defendant won't.
>
>
> 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
> 17^th 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 <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> *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 + lortzLLP <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.
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
>
>
> --
>
> *Image removed by sender.Image removed by sender.
> Cambridge Technology Law LLC
> <https://www.iam-media.com/strategy300/individuals/david-boundy>*
>
> Listed as one of the world's 300 leading intellectual
> property strategists
> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>
> Articles at http://ssrn.com/author=2936470
> <http://ssrn.com/author=2936470>
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
> Click here to add me to your contacts.
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
> *David Boundy
> <https://www.iam-media.com/strategy300/individuals/david-boundy>***
>
> DBoundy at cambridgetechlaw.com
> <mailto:dboundy at cambridgetechlaw.com> / +1 646.472.9737
> <tel:%2B1%206464729737>
>
> *Cambridge Technology Law LLC*
> 686 Massachusetts Avenue #201, Cambridge MA 02139
> http://www.CambridgeTechLaw.com
> <http://www.CambridgeTechLaw.com>
> http://www.linkedin.com/in/DavidBoundy
>
> mailing address
>
> PO Box 590638
>
> Newton MA 02459
>
>
> This communication is a confidential attorney-client
> communication intended only for the person named above or
> an authorized representative. Any dissemination,
> distribution, or copying of this communication is strictly
> prohibited, whether by the author or recipients. Any
> legal, business or tax information contained in this
> communication, including attachments and enclosures, is
> not intended as a thorough, in-depth analysis of specific
> issues, nor a substitute for a formal opinion, nor is it
> sufficient to avoid legal or other adverse consequences to
> the recipient. Unless you are the addressee (or authorized
> to receive for the addressee), you may not copy, use,
> disclose or distribute this communication or attribute to
> the Firm any information contained in this communication.
> If you have received this communication in error, please
> advise the sender by replying to this message or by
> telephone, and then promptly delete it.
>
>
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
>
>
> --
>
> **
>
> *Cambridge Technology Law LLC
> <https://www.iam-media.com/strategy300/individuals/david-boundy>*
>
> **
>
> Listed as one of the world's 300 leading intellectual property
> strategists
> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>
> Articles at http://ssrn.com/author=2936470
> <http://ssrn.com/author=2936470>
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
> Click here to add me to your contacts.
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
> *
>
> David Boundy
> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>
> *
>
> DBoundy at cambridgetechlaw.com
> <mailto:dboundy at cambridgetechlaw.com> / +1 646.472.9737
> <tel:%2B1%206464729737>
>
> Cambridge Technology Law LLC
> 686 Massachusetts Avenue #201, Cambridge MA 02139
> http://www.CambridgeTechLaw.com <http://www.CambridgeTechLaw.com>
> http://www.linkedin.com/in/DavidBoundy
>
> mailing address
> PO Box 590638
> Newton MA 02459
>
> This communication is a confidential attorney-client communication
> intended only for the person named above or an authorized
> representative.Any dissemination, distribution, or copying of this
> communication is strictly prohibited, whether by the author or
> recipients.Any legal, business or tax information contained in
> this communication, including attachments and enclosures, is not
> intended as a thorough, in-depth analysis of specific issues, nor
> a substitute for a formal opinion, nor is it sufficient to avoid
> legal or other adverse consequences to the recipient. Unless you
> are the addressee (or authorized to receive for the addressee),
> you may not copy, use, disclose or distribute this communication
> or attribute to the Firm any information contained in this
> communication. If you have received this communication in error,
> please advise the sender by replying to this message or by
> telephone, and then promptly delete it.
>
>
>
> --
>
>
> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>
> *David Boundy *| Partner |Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA 02459
>
> Tel (646) 472-9737| Fax: (202) 318-7707
>
> _dboundy at potomaclaw.com_ __| _www.potomaclaw.com
> <http://www.potomaclaw.com>_
>
> Articles at http://ssrn.com/author=2936470
> <http://ssrn.com/author=2936470>
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
> Click here to add me to your contacts.
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250312/2bd844b1/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 35578 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250312/2bd844b1/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.jpg
Type: image/jpeg
Size: 422 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250312/2bd844b1/attachment.jpg>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.jpg
Type: image/jpeg
Size: 823 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250312/2bd844b1/attachment-0001.jpg>
More information about the Patentpractice
mailing list