You are here:  Basic Patent Training » Module V

Extensions of Time

Period for reply
Ideally, all applicants will want to take filing their reply to an Office Action seriously. But there are times when the allotted period to reply just isn't enough. Fortunately, applicants may be able to extend certain reply periods. There are two different types of periods for reply that examiners may set.

The first is called a shortened statutory period (SSP).

These periods for reply range from 1 to 6 months. All responses to a shortened statutory period must be filed within 6 months from the mailing date of the Office Action.

This 6 month time limit may not be extended any further. If the applicant misses the 6 month deadline, the application will likely be abandoned. For example, if the examiner sets an SSP for 2 months, the applicant may send in an extension of time and possibly gain another 4 months for a total of 6 months. If a 6 month SSP is set, the applicant will not be able to extend the period for reply any further and the reply will be due when the SSP expires.

The second type of period for reply is a reply for a specific time limit.

These may be extendable for an additional 5 months. That means the applicant can gain an additional 5 months on top of the original due date. Therefore, if the examiner sets a period for reply at 2 months, the applicant may file an extension of time and gain an extra 5 months, for a total of 7 months.

More Concerning Extensions
There are instances where the due date may not be extended at all, such as when the Office Action explicitly states that the time period is not extendable. In addition, extensions are never granted for applications involved in reexamination or interference proceedings as well as replies from the Patent Trial and Appeal Board.

Petitions for extensions of time always require a fee and in many cases, the more money paid, the longer the period for reply may be extended.

To make things even more complicated, there are two basic types of extensions. Remember, earlier we were discussing the two types of periods for reply.

The first type of extension is an automatic extension. An automatic extension must be filed before the reply period has expired. So, if the examiner sets a 2 month SSP and you know you can't file a reply by then, you may immediately file an automatic extension to try to get an extra 4 months.

The second type of extension is called an extension for cause. These may be used when the applicant has already let the original time limit expire or in cases where an automatic extension is prohibited.

Read Transcript ...

 

Click to Take Module V Quiz