When is an application abandoned?

A rejection is mailed from the Office on June 1, 2011 and received by the attorney of record on June 11, 2011. The action sets a shortened three month statutory deadline to respond. The attorney never responds. When is the applications abandoned?

All deadlines in the Office, with one notable exception run from the date of mailing, not the date of receipt so the response is initially due on September 1, 2011, not September 11. If that days turns out to be a Saturday, Sunday or holiday, the deadline slides to the next day that the Office is open for business.

Your Office also has a thriving business selling extensions of time, one month at a time. Thus, the initial deadline can be extended until December 1, 2011 by buying three one month extensions of time. The extensions are typically obtained retroactively at the time a response is filed. Moreover, for Official Actions, and not other types of Office requirements, the response must be filed within six months, so the maximum extension available here is three months.

So does the application become abandoned on December 1, 2011, the last day a response could have been filed, or September 1, 2011, the day a response was initially die.

Answer – September 1, 2011, the day a response was initially due. One to memorize.

What is the difference between an interview and an oral hearing?

So asked a student by email earlier this week.

It’s a basic question that likely deserves a broader audience.

An interview is a session with an examiner who has given you a rejection. The session can be live or by phone. An Oral Argument is a session that you have with a panel of the Board of Patent Appeals and Interferences to discuss your appeal of a rejection. It can only be live.

Interviews are an opportunity to explore wit the examiner various alternatives to allowance and to build a relationship with the examiner that gets you the claims you want. While the arguments presented in the interview have to be summarized in a written paper filed after the interview, that summary can be pretty cursory. Thus, an interview is a chance in practice to have an off the record discussion with the examiner, and keeping that record “clean”

An Oral Argument must be elected within a non-extendable two month period following the Examiner’s Answer on Appeal. There is a healthy fee for an Oral Argument, and none for an interview.

Most attorneys routinely ask for Oral Arguments for one simple reason. If you don’t and your appeal is denied – most appeals are in fact denied – the client will attribute the loss to your laziness in avoiding that Oral Argument. Sometimes, it might be better for the client to forgo the Oral Argument and get a quicker decision from the Board. It’s a political decision, more than a strategic one.

Your Future in Patent Law

Becoming a patent attorney is neither easy nor cheap. In these tough economic times, everyone making that commitment must worry whether this is in fact a career that will both last and be good to me.

Recent events strongly suggest that becoming a patent attorney today is every bit as good a decision as it was thirty years ago. The future for patent law looks bright, and the future for patent attorneys similarly.

First, on August 16, 2011, the US Patent Office issued patent number 8,000,000. I suppose that fact but itself doesn’t mean much, but it got a lot of play in the media. More importantly the, Office has a huge backlog of pending applications and a serious intent to reduce that backlog. That means the world will need more patent attorneys to prosecute them.

Second, the odds are very high we will soon have a new patent law that will generate just tons of new work. On Tuesday, August 2, 2011, Sen. Harry Reid filed cloture on a motion to proceed to consider HR 1249, the America Invents Act (AIA). The Senate therefore agreed to end debate and will vote on HR 1249 (the Senate passed its version of the AIA earlier this year) when it reconvenes on September 6, 2011.

The new law will institute what amounts to oppositions before issuance and several other procedures that will require legions of patent attorneys to handle. More work.

Finally, we have just had two massive sales of patents for huge sums of money. Patents, particularly on smart phones and similar products are worth big bucks. This will only encourage more filings, more assertions of patent rights, more opinions and even more litigation.

More, more, more!

It’s a great time to be a patent attorney.

Sick of deadlines? This is the last and next time we turn to another subject.

The Office will under certain circumstances reset deadlines, but they hate like hell to do so. This is all covered in MPEP 710.06

In particular, the PTO will reset dates when the action was late in being received or defective as follows:

A. A citation is incorrect or an Office Action contains some other serious defect.

In this instance the PTO does not require a petition, but only that the error be called to the attention of the PTO within one month of the mail date, in which instance the entire previous period is reset. If the error is called to the attention of the PTO after more than one month, the PTO will set the new period substantially equal to the remaining time in the old period. Thus, if the error is called to the attention of the PTO five weeks after it is mailed, the PTO will set a period of two months in the corrected action. If an error is called to the attention of the PTO after the period set for response has run the period will not be reset and extension fees will be necessary to respond.

B. Late Receipt of an Office Action

The PTO will grant a petition to restart the previously set period for response to run from the date of receipt of the action if:

i. The petition is filed within two weeks of the date of receipt;
ii. A substantial portion of the reply period had elapsed by
the time of receipt (at least one month of a 2- or 3-month reply
period); and
iii.The petition contains evidence showing receipt on the day
alleged, a copy of the envelope in which the action arrived and a
statement explaining how the evidence establishes receipt on the
date claimed.

C. The Postmark date is later than the PTO Mail Date

The PTO will grant a petition to restart the previously set period for response to run from the date of receipt of the action if:

i. The petition is filed within two weeks of the date of receipt;
ii.The reply period was for payment of the issue fee or was for one
month or thirty days, and
iii.The petition contains evidence showing receipt on the day
alleged, a copy of the envelope in which the action arrived and a
statement that the action was received in the envelope submitted.

No one can memorize all this minutia, so make sure you can find the proper MPEP section quickly, if need be, on your exam day.

We all know three holidays and the Office has questions requiring you to remember them on exam day.

Watch out for Christmas, New Years and The Fourth Of July.

Example – A Notice of Allowance is mailed on April 4, 2011. The fee is mailed to the PTO without any Certificate of Mailing on July 2, 2011, and arrives at the PTO on Monday, July 7, 2011. Since the deadline was on Friday, July 4, 2011, and that was a holiday, the next day the PTO was open was July 7, 2011. Thus, the fee was timely received.

We have reviewed in earlier blogs those deadlines that cannot be extended. The most important one of these is the three month deadline to pay the issue fee after mailing of a notice of allowance. The deadline for paying the issue fee cannot be extended, but it
can be paid late if, and only if, a mistake was made

The difference between an automatic extension under 37 CFR §1.136(a) and a revival or late payment under 37 CFR §1.137 is that an automatic extension can be obtained even after a deliberate decision to abandon an application has been made, provided that the deadline is one that can be extended by 37 CFR
§1.136(a), whereas a deliberate decision to abandon at the time an unextendable deadline is missed precludes revival or late payment.

Example – A restriction requirement is mailed October 13, 2001, setting a one-month period to respond. The client instructs you in writing on October 23, 2001, to abandon the application by not responding. On March 12, 2002, the client changes her mind and instructs you to respond. You may properly do so on March 13, 2002, with the response being accompanied by a request for a four-month extension of time and the required fee.

Example – A restriction requirement is mailed October 13, 2011, setting a one-month period to respond. The client instructs you in writing on October 23, 2011, to abandon the application by not responding. On April 14, 2012, (not a Monday) the client changes her mind and instructs you to respond. The application became abandoned as of midnight on April 13, 2011, and, because it was abandoned deliberately, cannot be revived.

Example – A Notice of Allowance is mailed on October 13, 2011. The client instructs you not to pay the issue fee. On January 14, 2011, (not a Monday) the client instructs you to pay the issue fee late. You cannot do so, because the application was abandoned deliberately, as of midnight on January 13, 2011.

Short deadlines bring another obscure rule into play, namely: One month means not less than thirty days; two months means not less than sixty days.

Damn February!

Example – A Restriction Requirement is mailed from the PTO on February 12, 2011, setting a one-month period for response. The actual deadline is not March 12, 2001, but thirty days from February 12, 2011, which is March 14, 2011.

Example – A restriction Requirement is mailed from your PTO on January 2, 2012, setting a one-month period to respond. A response filed February 2, 2012, or earlier is timely without any extension. A response filed on Monday March 4, 2012, only requires a one-month extension, because the last day to file with a one-month extension – March 2, 2012 – is a Saturday. A response filed on April 2, 2012, with a two-month extension. A response filed one day later on April 3, 2012 requires a three-month extension. A response filed on May 2, 2012, is timely with a three-month extension. A response filed June 2, 2012, is timely with a four-month extension. A response filed July 2, 2012, is timely with a five-month extension.

Reexamination extensions in some ways track the rules for extensions during run of the mill prosecution and in some ways do not. For example, filing a response to a final rejection in reexamination automatically extends the deadline for one month per MPEP 2272

In reexamination, there can be no filing of a continuation, and all extensions must be for cause, so the PTO is a bit easier after final rejection in reexamination than in prosecution.

Example – A Final Rejection in a reexamination proceeding is mailed September 3, 2012, setting a two-month period to respond. A response filed on November 3, 2012, is timely and automatically extends the deadline to file a Notice of Appeal to December 3, 2012. A response filed on December 4, 2002, together with a request for an extension of time under 37 CFR §1.136 is NOT timely, because extensions in reexamination must be prospective and must be for cause under 37 CFR §1.550(c). Thus, if a request for a one-month extension of time providing good cause is filed on Monday, November 4, 2012, a response filed on December 3, 2012, is timely, and the deadline for filing a Notice of Appeal is extended to January 3, 2013.

By now, you think that deadline determination is unduly complex, which it is. Now let me teach you something of breathtaking simplicity.

All deadlines on appeal are two months, with one possible
exception, and most can be extended under 37 CFR §1.136(a) up to five months.

That was easy!

Deadline for filing Appeal Brief – Two months from the date of filing of the Notice of Appeal (Extendable up to five months under 37 CFR §1.136(a)). THE SIX-MONTH RULE DOES NOT APPLY

Deadline for filing Reply Brief to Examiner’s Answer – Two Months from the date the Examiner’s answer is mailed (Extendable only for cause under 37 CFR §1.136(b)). THE SIX -MONTH RULE DOES NOT APPLY.

Deadline for filing Request for Oral Hearing – Two Months from the date the Examiner’s answer is mailed (Extendable only for cause under 37 CFR §1.136(b)). THE SIX-MONTH RULE DOES NOT APPLY

Deadline for requesting a rehearing from the Board – Two Months from the date that the Board mails its decision (Extendable only for cause under 37 CFR §1.136(b)). THE SIX-MONTH RULE DOES NOT APPLY.

Deadline for Filing an Appeal to the CAFC or a Civil Action – Two Months from the date that the Board mails its decision OR the decision from the Board on rehearing, whichever is later (Extendable only for cause under 37 CFR §1.364(a)(3)). THE SIX-MONTH RULE DOES NOT APPLY

Now the exception. Only one deadline in the PTO is calculated from the date an attorney files a paper, and that is the Appeal Brief date. The PTO doesn’t actually put the date of mailing of a response or any paper in its docketing system even where that mailing date counts as the date of receipt using a Certificate of Mailing. Thus, the actual deadline when a Notice of Appeal is properly filed using a Certificate of Mailing is determined from the date that the PTO ACTUALLY gets the Notice. Of course the applicant doesn’t know that date and dockets from the mailing date so what happens in this circumstance is that the attorney has a couple more days to file the appeal brief than he or she thought.

In this blog, I will introduce you to what I call The Two-Month Rule. Please understand this is not what the Office calls it; they have no cute, easy to remember name. This name is my invention, unpatentable, unfortunately. It works like this

If a response is filed to a Final Rejection within two months from the mailing date, and the PTO fails to mail an Advisory Action within the period set for response, the deadline is automatically extended to the date the advisory action is mailed, or the six month deadline, whichever occurs first. MPEP 714.13.

Generations of test takers have struggled to master this simple rule. The key to it is to understand that it is nothing more than the PTO giving a break on extension fees after final rejection to those who get in a response early and the PTO doesn’t get an advisory action back promptly.

Bear in mind that you never have to file a response to a final rejection; you can instead file a continuation, or a Request for Continued Prosecution under 37 CFR §1.114, or just appeal. The Two Month Rule comes into play ONLY when you elect to file a response.

The PTO wants to encourage applicants to file responses to final rejections as early as possible. Of course such a response can be filed as late as six months from the mailing date with the required extensions of time. If you do that, however, you have to either file a Notice of Appeal with that fee being wasted if the application is allowed or don’t file it and take the risk that the application will be abandoned if it isn’t allowed (HINT – ALWAYS FILE THE NOTICE OF APPEAL IN THESE CIRCUMSTANCES). To encourage early filing, the PTO will give you a break on extension fees if you need to file a Notice of Appeal later.

First, the action must be a FINAL; the two-month rule doesn’t work for non-final actions. Second, you must file that response within two months from the date the Final Rejection is mailed. Third, the PTO must fail to get an advisory action to you by the end of the third month. If all three conditions apply, then the deadline is automatically extended to the date the PTO mails that advisory action. Finally, of course that deadline cannot go beyond six months because the Six- Month Rule controls.

The ONLY result of this rule is that you MAY pay less in extension fees than you would otherwise.

This is the ONLY circumstance where it matters what date an advisory action is mailed.

The general rule is that the date of receipt in the Office of any paper is its filing date. However, it is possible to get an earlier date using Express Mail or the Certificate of Mailing or Transmission procedure, in which case the date of mailing is treated as the filing date. Otherwise, the date of filing of any paper is that date it shows up at the PTO, no matter how it got there. Federal Express, hand delivery by attorney, or courier pigeon, it’s all the same, with three exceptions:

1) For most papers the date of filing is the date mailed by First Class mail to the PTO, PROVIDED that a proper Certificate of Mailing accompanies the paper. US Mail only, Federal express and every other form of transport do not count.

2) For some papers, like new applications, a Certificate of Mailing is not enough; new applications (including CPAs) must be sent by Express Mail to the PTO, or the filing date they get is the date they show up at the PTO.

3) Most papers can be filed by facsimile and the date of receipt is the date of transmission when a proper Certificate of Transmission is included.

Example – A non-final action is mailed from the PTO on November 13, 2011, setting a three-month period for response. On Monday May14, 2012, a response is sent to the PTO by first class mail using a proper certificate of Mailing, and including a proper request for a three month extension of time and a request to charge any necessary extension fees to a deposit account having adequate funds. The response is timely filed.

Example – A non-final action is mailed from the PTO on November 13, 2011, setting a three-month period for response. On Monday May14, 2012, a response is sent to the PTO by first class mail without a certificate of Mailing, but including a proper request for a three month extension of time and a request to charge any necessary extension fees to a deposit account having adequate funds and is received. The response is not timely filed, and the application stands abandoned.