Q: What is the standard period for replying to a patent office action?

According to 35 U.S.C. 133 , the standard period for replying to a patent office action is six months. The statute states: '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... the application shall be regarded as abandoned by the parties thereto.' This means that applicants typically have up to six months to respond to an office action before their application is considered abandoned. To learn more: Office Action Reply Period Patent Application USPTO

Question 1

What is the time period for reply to a first action final rejection?

Accepted Answer

When a first action final rejection is issued, the applicant is given a specific time period to reply. According to the form paragraphs provided in MPEP 706.07(b), the standard time period is as follows:

"A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action."

This time period allows applicants to respond to the final rejection while also providing flexibility in case an advisory action is mailed late in the process.

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Question 2

What is the time period for reply to a final rejection in patent examination?

Accepted Answer

The time period for reply to a final rejection in patent examination is typically three months from the mailing date of the final action, with possible extensions. Specifically:

The shortened statutory period is set to expire THREE MONTHS from the mailing date of the final action.
Extensions of time may be obtained under 37 CFR 1.136(a).
The maximum period for reply is SIX MONTHS from the mailing date of the final action.

As stated in MPEP 706.07(a) using form paragraph 7.40: "A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action."

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Question 3

What is the standard time for reply to a final rejection?

Accepted Answer

The standard time for reply to a final rejection is typically a 3-month shortened statutory period (SSP). However, the MPEP states that "All final rejections setting a 3-month shortened statutory period (SSP) for reply should contain one of form paragraphs 7.39, 7.40, 7.40.01, 7.40.02.fti, 7.40.02.aia, 7.41, 7.41.03, 7.42.03.fti, 7.42.031.fti, or 7.42.09 advising applicant that if the first reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later." This establishes a variable reply period.

It's important to note that "In no event can the statutory period for reply expire later than 6 months from the mailing date of the final rejection."

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Question 4

What is the standard period for replying to a patent office action?

Accepted Answer

According to 35 U.S.C. 133, the standard period for replying to a patent office action is six months. The statute states:

'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... the application shall be regarded as abandoned by the parties thereto.'

This means that applicants typically have up to six months to respond to an office action before their application is considered abandoned.

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Question 5

What is the reply period for an Ex parte Quayle action?

Accepted Answer

The reply period for an Ex parte Quayle action is typically shorter than a regular Office action. According to the form paragraph provided in MPEP 714.14:

A shortened statutory period for reply to this action is set to expire TWO (2) MONTHS from the mailing date of this letter.

However, it's important to note that extensions of time may be available. The MPEP further states:

Extensions of time may be granted under 37 CFR 1.136 but in no case can any extension carry the date for reply to this Office action beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133).

Therefore, while the initial period is two months, it can be extended up to a maximum of six months from the mailing date of the Ex parte Quayle action.

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Question 6

What is a 'holding of abandonment' in patent applications?

Accepted Answer

A 'holding of abandonment' in patent applications occurs when the USPTO determines that an application has been abandoned due to the applicant's failure to respond within the specified time period. As implied in MPEP 711.03(b), this can happen when:

An amendment or reply is received after the expiration of the period for reply
There is no dispute about the dates involved

In such cases, the MPEP states:

When an amendment reaches the U.S. Patent and Trademark Office after the expiration of the period for reply and there is no dispute as to the dates involved, no question of reconsideration of a holding of abandonment can be presented.

This means the application is considered abandoned, and typically, no further action can be taken unless the applicant can prove an error in the USPTO's determination.

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Question 7

What happens if an applicant fails to reply to a patent office action within the given period?

Accepted Answer

If an applicant fails to reply to a patent office action within the given period, the application is considered abandoned. According to 35 U.S.C. 133:

'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.'

This means that if no response is received within the specified time frame (either six months or a shorter period set by the USPTO), the application is abandoned, and the applicant loses their filing date and any priority claims.

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Question 8

What happens if an amendment is received after the reply period expires?

Accepted Answer

If an amendment reaches the U.S. Patent and Trademark Office (USPTO) after the expiration of the period for reply, and there's no dispute about the dates involved, the application will be considered abandoned. As stated in MPEP 711.03(b):

When an amendment reaches the U.S. Patent and Trademark Office after the expiration of the period for reply and there is no dispute as to the dates involved, no question of reconsideration of a holding of abandonment can be presented.

In such cases, there's no opportunity to reconsider the abandonment decision.

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Question 9

What does it mean if a patent application has a status of "rejected"?

Accepted Answer

A nonprovisional patent application is designated as "rejected" if, during prosecution before allowance, it contains an examiner's action that has not been replied to by the applicant. As stated in MPEP 203.02:

A nonprovisional application which, during its prosecution in the examining group and before allowance, contains an unanswered examiner's action is designated as a "rejected" application. Its status as a "rejected" application continues as such until acted upon by the applicant in reply to the examiner's action (within the allotted reply period), or until it becomes abandoned.

Question 10

How is the reply period computed for USPTO Office actions?

Accepted Answer

The reply period for USPTO Office actions is computed from the notification or mail date printed on the Office action to the date of receipt by the Office of the applicant's reply. The MPEP provides specific guidance:

"No cognizance is taken of fractions of a day and applicant's reply is due on the corresponding day of the month 6 months or any lesser number of months specified after the Office action."

For example, a 3-month reply period for an Office action dated November 30 would end on February 28 (or 29 in a leap year). It's important to note that if the last day falls on a weekend or federal holiday, the reply is due on the next business day.

To learn more:

reply period
Office action
date computation
USPTO

Question 11

How does the reply period differ for patent applications under appeal or court review?

Accepted Answer

The reply period for patent applications under appeal or court review may differ from the standard periods. The MPEP Section 710 states:

'See MPEP Chapter 1200 for period for reply when appeal is taken or court review sought.'

This reference to MPEP Chapter 1200 indicates that special rules and timeframes may apply when an application is under appeal or court review. Applicants should consult this chapter for specific guidance on reply periods in these situations.

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Question 12

How does filing a reply within 2 months affect the reply period?

Accepted Answer

Filing a complete first reply within 2 months of the final Office action can affect the reply period in several ways:

If the reply places the application in condition for allowance, it will be processed as an allowance with no extension fees due.
If the reply nearly places the application in condition for allowance, except for minor formal matters, the examiner can make the necessary changes and process it as an allowance with no extension fees due.
If the reply does not place the application in condition for allowance, an advisory action will be issued, and "the SSP for reply expires 3 months from the date of the final rejection or as of the mailing date of the advisory action, whichever is later."

This variable reply period gives applicants an opportunity to potentially avoid extension fees while still allowing for a full 3-month reply period if needed.

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Question 13

How does a supplemental amendment affect the time period for reply to an Office action?

Accepted Answer

How does a supplemental amendment affect the time period for reply to an Office action?

A supplemental amendment does not affect the time period for reply to an Office action. The MPEP 714.03(a) clearly states:

"The filing of a supplemental amendment does not affect the time period for reply to an Office action which may be outstanding."

This means that even if you file a supplemental amendment, you must still respond to any outstanding Office action within the original deadline. The supplemental amendment does not extend or reset the response period. Applicants should be careful to ensure they meet all required deadlines, regardless of any supplemental filings.

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Question 14

Can the USPTO set a shorter reply period for patent office actions?

Accepted Answer

Yes, the USPTO can set a shorter reply period for patent office actions. According to 35 U.S.C. 133:

'...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.'

This provision allows the USPTO to set a reply period shorter than six months, but not less than 30 days, for responding to office actions. The specific time frame will be indicated in the office action itself.

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Question 15

Can the period for reply to an Office action be extended?

Accepted Answer

Can the period for reply to an Office action be extended?

Yes, the period for reply to an Office action can be extended in many cases. According to MPEP 710:

"Unless otherwise provided, the maximum statutory period for reply to an Office action is SIX MONTHS. The examiner may set a shorter time for reply, not less than 30 days (35 U.S.C. 133)."

Extensions of time are generally available under the following conditions:

A request for an extension must be filed before the expiration of the original period for reply.
The appropriate fee must be paid.
Extensions are typically granted in one-month increments, up to a maximum of five months.
Some actions, such as final rejections, may have different extension policies.

It's important to note that while extensions are often available, they should be used judiciously as they can increase the overall cost and duration of the patent prosecution process.

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Question 16

Can the period for reply in a patent application be extended?

Accepted Answer

Can the period for reply in a patent application be extended?

Yes, the period for reply in a patent application can be extended, but with certain limitations. According to MPEP 710:

The maximum statutory period of 6 months specified in 35 U.S.C. 133 may not be extended. See MPEP § 710.02(e). However, the period of time set in the Office action (1, 2, or 3 months) may be extended up to the maximum 6-month statutory period under appropriate circumstances and upon payment of any required fee.

Extensions of time are governed by 37 CFR 1.136. While shorter periods can be extended, it's important to note that the overall six-month statutory limit cannot be exceeded.

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Question 17

Can an applicant dispute the USPTO's determination of reply period dates?

Accepted Answer

Yes, an applicant can dispute the USPTO's determination of reply period dates. According to MPEP 711.03(b):

However, the examiner and the applicant may disagree as to the date on which the period for reply commenced to run or ends. In this situation, as in the situation involving sufficiency of reply, the applicant may take issue with the examiner and point out to him or her that his or her holding was erroneous.

If there's a disagreement about when the reply period started or ended, the applicant has the right to challenge the examiner's decision and provide evidence supporting their claim.

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Question 18

Are extensions of time available for responding to USPTO Office actions?

Accepted Answer

Yes, extensions of time are generally available for responding to USPTO Office actions. The MPEP refers to 37 CFR 1.136(a), which provides for extensions of time:

"Since extensions of time are available pursuant to 37 CFR 1.136(a), it is incumbent upon applicants to recognize the date for reply so that the proper fee for any extension will be submitted."

However, it's important to note that extensions may not be available in all cases. The MPEP advises that the date for reply will typically be indicated only when the provisions of 37 CFR 1.136(a) are not available. Applicants should carefully review each Office action to determine if and how extensions can be obtained.

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Patent Law FAQ

Here’s the complete FAQ:

MPEP 200 - Types and Status of Application; Benefit and Priority Claims (1)

What does it mean if a patent application has a status of “rejected”?

MPEP 203 - Status of Applications (1)

What does it mean if a patent application has a status of “rejected”?

Patent Law (1)

What does it mean if a patent application has a status of “rejected”?

Patent Procedure (1)

What does it mean if a patent application has a status of “rejected”?