When an Office action is issued by the USPTO, the time period for filing a reply begins. If a reply is not filed within the period specified in the Office action, the application is technically abandoned by operation of Rule. An applicant can usually buy an extension of up to five additional months, however, so long as the statutory limit of six months is not exceeded.
Extensions of time may be automatically authorized at the time an application is filed or requested as needed during prosecution via a petition. In only a few circumstances is an actual petition required, however, because in most circumstances the mere payment of the appropriate extension fee is treated as a constructive petition for an extension.
37 CFR 1.136 provides for two distinct procedures to request an extension. The appropriate procedure will depend upon the circumstances, but virtually all extensions are requested under 37 CFR 1.136(a), which permits extension of up to 5 months for a fee, with a few exceptions. When the provisions of 37 CFR 1.136(a) are not available, however, an extension must be sought under 37 CFR 1.136(b), which is far more burdensome (section (b) extensions are only granted for sufficient cause and for a reasonable time). Extensions under 37 CFR 1.136(b) are very rare, and the remainder of this post omits their discussion.
Regarding the need for a written request for an extension, 37 CFR 1.136(a)(3) provides that:
- a written request may be submitted in an application that is an authorization to treat any concurrent or future reply that requires a petition for an extension of time under 37 CFR 1.136(a) to be timely, as incorporating a petition for extension of time for the appropriate length of time;
- an authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under 37 CFR 1.136(a) to be timely; and
- submission of the fee set forth in 37 CFR 1.17(a) will be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under 37 CFR 1.136(a) to be timely.
Here, 37 CFR. 1.136(a)(3) serves as a “safety net” when the appropriate extension fee is paid but an actual petition is not submitted.
The Petition Process
The process of obtaining an extension during ex parte prosecution in the USPTO is a fairly informal one. It is only necessary to petition for the extension and to pay the appropriate fee. It is neither necessary to present reasons justifying the extension nor to request the extension in advance. Also, this petition may even be combined with a concurrently filed response/submission (examples below). Moreover, because of constructive petitions (discussed below), in most situations all that is required is the payment of the appropriate fee.
Petitions and Constructive Petitions
The necessity for an actual petition for extension turns on whether there is a concurrently filed reply.
When an applicant is only paying fees, an actual petition for an extension of time is required. (See USPTO Advisory of 28 June 2010).
When an applicant is filing a concurrent reply, an actual petition is not required. All that is necessary is the concurrent payment of the appropriate extension fee. This is because the Office treats the submission of the extension fee as a constructive petition for an extension of time, pursuant to 37 CFR 1.136(a)(3) (in the event that the applicant did not previously authorize the USPTO to treat any reply that requires a petition for an extension of time as incorporating a petition for the appropriate extension of time). A combined concurrent reply and petition may be prudent, however (see additional point #2 below).
Likewise, when filing a continuation application, a petition is not required. Any necessary extension fee must, however, be submitted in the parent application. This is because the filing of a continuing application within the extended time period is considered a concurrent reply. Thus, a submission of the extension of time fee in the parent application will be accepted as a constructive petition for an extension of time if a continuing application is filed within the extended period.
Examples of Petitions From the MPEP
1. The applicant herewith petitions the Director of the United States Patent and Trademark Office to extend the time for reply to the Office action dated ____ for ____ month(s) from ____ to ____. Submitted herewith is a check for $____ to cover the cost of the extension.
2. The applicant herewith petitions the Director of the United States Patent and Trademark Office to extend the time for reply to the Office action dated ____ for ____ month(s) from ____ to ____ . Please Charge my deposit account number ____ , in the amount of $ ____ to cover the cost of the extension. Any deficiency or overpayment should be charged or credited to the above numbered deposit account.
An Additional Example of Petition
3. Applicant hereby respectfully requests that the Office extend the period for filing a reply in the above identified application __ month(s), in accordance with the provisions of 37 CFR 1.136(a). Applicants have submitted concurrently herewith the necessary fee of ___ [the fee required by 37 CFR 1.17(a)].
Examples of Petitions Combined as Part of a Response
4. Applicant petitions to extend the time for response to the Office Action dated May 1, 2009, for two months from August 1, 2009, up to and including October 1, 2009. Payment of the required extension fee is submitted herewith. Please charge any deficiency or credit any overpayment to Deposit Account ____. In response to the Office Action, please amend the present application as follows.
5. In response to the Office Action issued in this application and dated 03/03/2010, having a two-month extended due date for response set to expire on 08/03/2010, the fee for a two-month extension of time being paid concurrently herewith, please amend the present application as follows.
A Few Additional Points
1. The USPTO strongly prefers the filing of an actual petition whenever an extension of time is necessary, despite the USPTO’s treatment of a fee submission as a constructive petition.
2. Consider including in every petition for extension of time an authorization to charge a deposit account for any additional fees required. If a petition for an extension of time requests an insufficient period of extension, but the period for reply may be further extended, it is Office practice to treat the petition for extension of time as requesting the correct period of extension – so long as the petition or application contains an authorization to charge extension fees or fees under 37 CFR 1.17 to a deposit account. See MPEP § 710.02(e).
3. When a request for extension of time is granted, the due date is computed from the date stamped or printed on the Office action, as opposed to the original due date. See MPEP § 710.01(a).
4. Extensions of time in reexamination proceedings are governed by 37 CFR. 1.550 and require a showing of cause and must be requested before the expiration of time period for response.
5. An extension of time under 37 CFR 1.136 is not necessary when submitting a supplemental reply to an Office action if a complete first reply was timely filed in reply to the Office action. 710.02(e)
Additional Resources/Related Links
1. The USPTO’s present fee schedule
2. The USPTO recent advisory about petitions for extensions of time and EFS-Web
3. The USPTO’s fillable Petition for Extension of Time form
© 2010, Michael E. Kondoudis
The Law Office of Michael E. Kondoudis
DC Patent Attorney