MPEP § 710.02(d) — Difference Between Shortened Statutory Periods for Reply and Specified Time Limits (Annotated Rules)
§710.02(d) Difference Between Shortened Statutory Periods for Reply and Specified Time Limits
This page consolidates and annotates all enforceable requirements under MPEP § 710.02(d), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Difference Between Shortened Statutory Periods for Reply and Specified Time Limits
This section addresses Difference Between Shortened Statutory Periods for Reply and Specified Time Limits. Primary authority: 35 U.S.C. 133, 35 U.S.C. 133), and 37 CFR 41.37(a)). Contains: 2 guidance statements, 2 permissions, and 4 other statements.
Key Rules
Reply Period and Extensions
Examiners and applicants should not lose sight of the distinction between a specified time for a particular action and a shortened statutory period for reply under 35 U.S.C. 133:
- (A) The penalty attaching to failure to take a particular action within a specified time is a loss of rights in regard to the particular matter (e.g., the failure to timely copy suggested claims results in a disclaimer of the involved subject matter). On the other hand, a failure to reply within the set statutory period under 35 U.S.C. 133 results in abandonment of the entire application. Abandonment of an application is not appealable, but a petition to revive may be granted if the delay was unintentional (37 CFR 1.137(a)).
- (B) As a specified time or time limit is not a shortened statutory period under 35 U.S.C. 133, the Office may specify a time for taking action (or a time limit) of less than the 30 day minimum specified in 35 U.S.C. 133. See MPEP § 103.
- (C) Where an applicant replies a day or two after the specified time, the delay may be excused by the examiner if satisfactorily explained. The examiner may use his or her discretion to request an explanation for the delay if the reason for the delay is not apparent from the reply. A reply 1 day late in an application carrying a shortened statutory period under 35 U.S.C. 133, no matter what the excuse, results in abandonment. Extensions of the statutory period under 35 U.S.C. 133 may be obtained under 37 CFR 1.136, provided the extension does not go beyond the 6-month statutory period from the date of the Office action (35 U.S.C. 133).
Examiners and applicants should not lose sight of the distinction between a specified time for a particular action and a shortened statutory period for reply under 35 U.S.C. 133:
…
(C) Where an applicant replies a day or two after the specified time, the delay may be excused by the examiner if satisfactorily explained.
Examiners and applicants should not lose sight of the distinction between a specified time for a particular action and a shortened statutory period for reply under 35 U.S.C. 133:
…
A reply 1 day late in an application carrying a shortened statutory period under 35 U.S.C. 133, no matter what the excuse, results in abandonment.
Abandonment – Missed Deadline
Examiners and applicants should not lose sight of the distinction between a specified time for a particular action and a shortened statutory period for reply under 35 U.S.C. 133 (A) The penalty attaching to failure to take a particular action within a specified time is a loss of rights in regard to the particular matter (e.g., the failure to timely copy suggested claims results in a disclaimer of the involved subject matter). On the other hand, a failure to reply within the set statutory period under 35 U.S.C. 133 results in abandonment of the entire application. Abandonment of an application is not appealable, but a petition to revive may be granted if the delay was unintentional (37 CFR 1.137(a)).
Examiners and applicants should not lose sight of the distinction between a specified time for a particular action and a shortened statutory period for reply under 35 U.S.C. 133 (A) The penalty attaching to failure to take a particular action within a specified time is a loss of rights in regard to the particular matter (e.g., the failure to timely copy suggested claims results in a disclaimer of the involved subject matter). On the other hand, a failure to reply within the set statutory period under 35 U.S.C. 133 results in abandonment of the entire application. Abandonment of an application is not appealable, but a petition to revive may be granted if the delay was unintentional (37 CFR 1.137(a)).
Grounds for Dismissal of Appeal
The 2-month time period for filing an appeal brief on appeal to the Patent Trial and Appeal Board (37 CFR 41.37(a)) and the 1-month time period for filing a new appeal brief to correct the deficiencies in a defective appeal brief (37 CFR 41.37(d)) are time periods, but are not (shortened) statutory periods for reply set pursuant to 35 U.S.C. 133. Thus, these periods are, unless otherwise provided, extendable by up to 5 months under 37 CFR 1.136(a), and, in an exceptional situation, further extendable under 37 CFR 1.136(b) (i.e., these periods are not statutory periods subject to the 6-month maximum set in 35 U.S.C. 133). In addition, the failure to file an appeal brief (or a new appeal brief) within the time period set in 37 CFR 41.37(a) (or (d)) results in dismissal of the appeal. The dismissal of an appeal results in abandonment, unless there is any allowed claim(s) (see MPEP § 1215.04), in which case the examiner should cancel the nonallowed claims and allow the application.
The 2-month time period for filing an appeal brief on appeal to the Patent Trial and Appeal Board (37 CFR 41.37(a)) and the 1-month time period for filing a new appeal brief to correct the deficiencies in a defective appeal brief (37 CFR 41.37(d)) are time periods, but are not (shortened) statutory periods for reply set pursuant to 35 U.S.C. 133. Thus, these periods are, unless otherwise provided, extendable by up to 5 months under 37 CFR 1.136(a), and, in an exceptional situation, further extendable under 37 CFR 1.136(b) (i.e., these periods are not statutory periods subject to the 6-month maximum set in 35 U.S.C. 133). In addition, the failure to file an appeal brief (or a new appeal brief) within the time period set in 37 CFR 41.37(a) (or (d)) results in dismissal of the appeal. The dismissal of an appeal results in abandonment, unless there is any allowed claim(s) (see MPEP § 1215.04), in which case the examiner should cancel the nonallowed claims and allow the application.
Petition to Revive (37 CFR 1.137)
Examiners and applicants should not lose sight of the distinction between a specified time for a particular action and a shortened statutory period for reply under 35 U.S.C. 133 (A) The penalty attaching to failure to take a particular action within a specified time is a loss of rights in regard to the particular matter (e.g., the failure to timely copy suggested claims results in a disclaimer of the involved subject matter). On the other hand, a failure to reply within the set statutory period under 35 U.S.C. 133 results in abandonment of the entire application. Abandonment of an application is not appealable, but a petition to revive may be granted if the delay was unintentional (37 CFR 1.137(a)).
Shortened Statutory Period
Examiners and applicants should not lose sight of the distinction between a specified time for a particular action and a shortened statutory period for reply under 35 U.S.C. 133:
…
(B) As a specified time or time limit is not a shortened statutory period under 35 U.S.C. 133, the Office may specify a time for taking action (or a time limit) of less than the 30 day minimum specified in 35 U.S.C. 133. See MPEP § 103.
Response to Office Action Requirements (37 CFR 1.111)
Examiners and applicants should not lose sight of the distinction between a specified time for a particular action and a shortened statutory period for reply under 35 U.S.C. 133:
…
The examiner may use his or her discretion to request an explanation for the delay if the reason for the delay is not apparent from the reply.
Six Month Statutory Period
Examiners and applicants should not lose sight of the distinction between a specified time for a particular action and a shortened statutory period for reply under 35 U.S.C. 133:
…
Extensions of the statutory period under 35 U.S.C. 133 may be obtained under 37 CFR 1.136, provided the extension does not go beyond the 6-month statutory period from the date of the Office action (35 U.S.C. 133).
PTAB Jurisdiction
The 2-month time period for filing an appeal brief on appeal to the Patent Trial and Appeal Board (37 CFR 41.37(a)) and the 1-month time period for filing a new appeal brief to correct the deficiencies in a defective appeal brief (37 CFR 41.37(d)) are time periods, but are not (shortened) statutory periods for reply set pursuant to 35 U.S.C. 133. Thus, these periods are, unless otherwise provided, extendable by up to 5 months under 37 CFR 1.136(a), and, in an exceptional situation, further extendable under 37 CFR 1.136(b) (i.e., these periods are not statutory periods subject to the 6-month maximum set in 35 U.S.C. 133). In addition, the failure to file an appeal brief (or a new appeal brief) within the time period set in 37 CFR 41.37(a) (or (d)) results in dismissal of the appeal. The dismissal of an appeal results in abandonment, unless there is any allowed claim(s) (see MPEP § 1215.04), in which case the examiner should cancel the nonallowed claims and allow the application.
Period Computation Rules
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. Thus, extensions of time of up to 5 months under 37 CFR 1.136(a), followed by additional time under 37 CFR 1.136(b), when appropriate, are permitted.
Citations
| Primary topic | Citation |
|---|---|
| Abandonment – Missed Deadline Grounds for Dismissal of Appeal PTAB Jurisdiction Period Computation Rules Petition to Revive (37 CFR 1.137) Reply Period and Extensions Response to Office Action Requirements (37 CFR 1.111) Shortened Statutory Period Six Month Statutory Period | 35 U.S.C. § 133 |
| Reply Period and Extensions Response to Office Action Requirements (37 CFR 1.111) Six Month Statutory Period | 37 CFR § 1.136 |
| Grounds for Dismissal of Appeal PTAB Jurisdiction Period Computation Rules | 37 CFR § 1.136(a) |
| Grounds for Dismissal of Appeal PTAB Jurisdiction Period Computation Rules | 37 CFR § 1.136(b) |
| Abandonment – Missed Deadline Petition to Revive (37 CFR 1.137) Reply Period and Extensions | 37 CFR § 1.137(a) |
| Grounds for Dismissal of Appeal PTAB Jurisdiction | 37 CFR § 41.37(a) |
| Grounds for Dismissal of Appeal PTAB Jurisdiction | 37 CFR § 41.37(d) |
| Reply Period and Extensions Shortened Statutory Period | MPEP § 103 |
| Grounds for Dismissal of Appeal PTAB Jurisdiction | MPEP § 1215.04 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 710.02(d) — Difference Between Shortened Statutory Periods for Reply and Specified Time Limits
Source: USPTO710.02(d) Difference Between Shortened Statutory Periods for Reply and Specified Time Limits [R-07.2015]
Examiners and applicants should not lose sight of the distinction between a specified time for a particular action and a shortened statutory period for reply under 35 U.S.C. 133:
- (A) The penalty attaching to failure to take a particular action within a specified time is a loss of rights in regard to the particular matter (e.g., the failure to timely copy suggested claims results in a disclaimer of the involved subject matter). On the other hand, a failure to reply within the set statutory period under 35 U.S.C. 133 results in abandonment of the entire application. Abandonment of an application is not appealable, but a petition to revive may be granted if the delay was unintentional (37 CFR 1.137(a)).
- (B) As a specified time or time limit is not a shortened statutory period under 35 U.S.C. 133, the Office may specify a time for taking action (or a time limit) of less than the 30 day minimum specified in 35 U.S.C. 133. See MPEP § 103.
- (C) Where an applicant replies a day or two after the specified time, the delay may be excused by the examiner if satisfactorily explained. The examiner may use his or her discretion to request an explanation for the delay if the reason for the delay is not apparent from the reply. A reply 1 day late in an application carrying a shortened statutory period under 35 U.S.C. 133, no matter what the excuse, results in abandonment. Extensions of the statutory period under 35 U.S.C. 133 may be obtained under 37 CFR 1.136, provided the extension does not go beyond the 6-month statutory period from the date of the Office action (35 U.S.C. 133).
The 2-month time period for filing an appeal brief on appeal to the Patent Trial and Appeal Board (37 CFR 41.37(a) ) and the 1-month time period for filing a new appeal brief to correct the deficiencies in a defective appeal brief (37 CFR 41.37(d) ) are time periods, but are not (shortened) statutory periods for reply set pursuant to 35 U.S.C. 133. Thus, these periods are, unless otherwise provided, extendable by up to 5 months under 37 CFR 1.136(a), and, in an exceptional situation, further extendable under 37 CFR 1.136(b) (i.e., these periods are not statutory periods subject to the 6-month maximum set in 35 U.S.C. 133). In addition, the failure to file an appeal brief (or a new appeal brief) within the time period set in 37 CFR 41.37(a) (or (d)) results in dismissal of the appeal. The dismissal of an appeal results in abandonment, unless there is any allowed claim(s) (see MPEP § 1215.04), in which case the examiner should cancel the nonallowed claims and allow the application.
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. Thus, extensions of time of up to 5 months under 37 CFR 1.136(a), followed by additional time under 37 CFR 1.136(b), when appropriate, are permitted.