Q: How long do applicants have to respond after being notified of a patent practitioner's death?

According to MPEP 406 , when the USPTO notifies an applicant of their patent practitioner's death, the applicant is given a specific timeframe to respond. The MPEP states: "The period for reply to such a notice is normally set at 3 months." During this 3-month period, the applicant must take one of the following actions: Appoint a new registered patent practitioner File a change of correspondence address It's crucial to respond within this timeframe to prevent the application from being deemed abandoned. For more information on application abandonment, visit: application abandonment . For more information on patent practitioner death, visit: patent practitioner death . For more information on response time, visit: response time . For more information on USPTO notification, visit: USPTO notification .

Question 1

What is the time period given to respond to a notice of incomplete reply?

Accepted Answer

When an examiner issues a notice of incomplete reply using form paragraph 7.95, the applicant is typically given a shortened statutory period of TWO (2) MONTHS to respond. The form paragraph states:

"Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment."

It's important to note that extensions of this time period may be granted under 37 CFR 1.136(a), but the total period for reply cannot exceed SIX MONTHS from the mailing date of the original Office action, as set by 35 U.S.C. 133.

To learn more:

Question 2

What is the 'three-month shortened statutory period' in patent examination?

Accepted Answer

The 'three-month shortened statutory period' refers to the time frame given to applicants to respond to a final rejection in patent examination. According to MPEP 706.07, 'The Office action will set a shortened statutory period for reply to a final rejection, which is typically three months.' This period allows applicants to:

File a reply under 37 CFR 1.116
File a request for continued examination (RCE) under 37 CFR 1.114
Appeal the rejection to the Patent Trial and Appeal Board

Applicants can request extensions of time under 37 CFR 1.136(a), but these come with additional fees.

To learn more:

Question 3

What are the time limits for responding to an examiner's requirement for information under MPEP 704?

Accepted Answer

When an examiner issues a requirement for information under MPEP 704, applicants must adhere to specific time limits for their response. According to MPEP 704.12(b):

"The time limit for reply to a requirement for information is set at not less than two months from the date of the requirement."

Key points about the time limits:

The standard period is two months from the mailing date of the requirement.
Extensions of time may be available under 37 CFR 1.136(a).
Failure to reply within the time period may result in abandonment of the application.

It's crucial for applicants to respond promptly or request an extension if needed to avoid potential abandonment of their application.

To learn more:

Question 4

What are the time limits for responding to a requirement for information in patent applications?

Accepted Answer

What are the time limits for responding to a requirement for information in patent applications?

The time limits for responding to a requirement for information in patent applications are as follows:

For non-final Office actions: The response period is typically two months, which may be extended up to six months from the Office action mailing date.
For final Office actions: The response period is usually three months, which may be extended up to six months from the Office action mailing date.

According to MPEP 704.11(b): A requirement for information is subject to the provisions of 37 CFR 1.134, 1.135, and 1.136, and thus may be responded to by the applicant after expiration of the time period set in the requirement, as in the case of any Office action without a fixed response time.

It's important to note that extensions of time may require additional fees, and failure to respond within the set time limit may result in abandonment of the application.

To learn more:

Question 5

What are the time limits for responding to a notice under 37 CFR 1.251?

Accepted Answer

The time limits for responding to a notice under 37 CFR 1.251 vary depending on whether it's for an application or a patent:

For applications: The Office sets a three-month period for reply, which is extendable under 37 CFR 1.136(a) by up to three additional months, for a maximum of six months.
For patents: The Office sets a six-month period for reply, which is not extendable.

MPEP 508.04 states: "The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application." It also notes: "The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent."

Question 6

How should USPTO personnel respond to status inquiries about patent applications?

Accepted Answer

USPTO personnel are instructed to handle status inquiries about patent applications promptly and professionally. According to MPEP 203.08:

"Inquiries as to the status of applications, by persons entitled to the information, should be answered promptly. The examiner, correspondent, or other appropriate personnel should provide the information requested within the following time periods: (A) For information obtainable from PALM, within one business day. (B) For information not obtainable from PALM, within five business days unless such information is not readily available, in which case a date by which an answer will be provided should be given."

Personnel should verify the inquirer's right to receive information and provide appropriate status updates without disclosing confidential information to unauthorized parties.

To learn more:

Question 7

How long do I have to respond to a notice about an unlocatable file?

Accepted Answer

The time period for responding to a notice about an unlocatable file depends on whether it's for an application or a patent:

For applications: The USPTO typically sets a three-month period, which is extendable under 37 CFR 1.136(a) by up to three additional months, for a maximum of six months.
For patents: A six-month non-extendable period is set.

It's important to note that for applications, as stated in the MPEP, If, however, an applicant fails to reply to a notice under 37 CFR 1.251 within three months of its mailing date, any patent term adjustment under 35 U.S.C. 154(b) will be reduced by a period equal to the number of days (if any) beginning on the day after the date that is three months after the mailing date of the notice under 37 CFR 1.251 and ending on the date the reply to the notice under 37 CFR 1.251 was filed.

To learn more:

Question 8

How long do applicants have to respond after being notified of a patent practitioner's death?

Accepted Answer

According to MPEP 406, when the USPTO notifies an applicant of their patent practitioner's death, the applicant is given a specific timeframe to respond. The MPEP states:

"The period for reply to such a notice is normally set at 3 months."

During this 3-month period, the applicant must take one of the following actions:

Appoint a new registered patent practitioner
File a change of correspondence address

It's crucial to respond within this timeframe to prevent the application from being deemed abandoned.

For more information on application abandonment, visit: application abandonment.

For more information on patent practitioner death, visit: patent practitioner death.

For more information on response time, visit: response time.

For more information on USPTO notification, visit: USPTO notification.

Patent Law FAQ

Here’s the complete FAQ:

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

How should USPTO personnel respond to status inquiries about patent applications?

MPEP 400 - Representative of Applicant or Owner (1)

How long do applicants have to respond after being notified of a patent practitioner’s death?

MPEP 406 - Death of Patent Practitioner (1)

How long do applicants have to respond after being notified of a patent practitioner’s death?

MPEP 500 - Receipt and Handling of Mail and Papers (2)

What are the time limits for responding to a notice under 37 CFR 1.251?

How long do I have to respond to a notice about an unlocatable file?

MPEP 508 - Distribution (1)

What are the time limits for responding to a notice under 37 CFR 1.251?

Patent Law (4)

What are the time limits for responding to a notice under 37 CFR 1.251?

How should USPTO personnel respond to status inquiries about patent applications?

How long do I have to respond to a notice about an unlocatable file?

How long do applicants have to respond after being notified of a patent practitioner’s death?

Patent Procedure (4)

What are the time limits for responding to a notice under 37 CFR 1.251?

How should USPTO personnel respond to status inquiries about patent applications?

How long do I have to respond to a notice about an unlocatable file?

How long do applicants have to respond after being notified of a patent practitioner’s death?