Q) Reexam Extension of Time (10.03.6a)

by patentbar on November 15, 2007 · 6 comments

in Exam Questions

Recent test takers report question #6 from the October 2003 (a) exam is in the Patent Bar database of tested questions.

6. In a reexamination proceeding a non-final Office action dated November 8, 2001 set a shortened statutory period of 2 months to reply. The patent owner, represented by a registered practitioner, filed a response on March 7, 2002, which included an amendment of the claims. No request for an extension of time was received. As of May 8, 2002, which of the following actions would be in accord with the patent laws, rules and procedures as related in the MPEP?

(A) The registered practitioner should file a request and fee for an extension of time of two months.

(B) The registered practitioner should file a petition for revival of a terminated reexamination proceeding showing the delay was unavoidable or unintentional, and the appropriate petition fee for entry of late papers.

(C) The primary examiner responsible for the reexamination should mail a Notice of Allowance and grant a new patent. The patent owner’s failure to timely respond to the outstanding Office action does not affect the allowability of the claims in the patent.

(D) The examiner should provide an Office action based upon the claims in existence prior to the patent owner’s late amendment, and mail a Final Office action.

(E) The registered practitioner should request an extension of time of four months, and file a Notice of Appeal.

ANSWER: (B) is the most correct answer. 37 CFR § 1.137; and MPEP § 2268. The patent owner will need to file a petition for entry of late papers in order to have their response entered, considered and acted upon. According to MPEP 2268, “[p]ursuant to 37 CFR 1.550(d), an ex parte reexamination proceeding is terminated if the patent owner fails to file a timely and appropriate response to any Office . . . An ex parte reexamination proceeding terminated under 37 CFR 1.550(d) can be revived if the delay in response by the patent . . . was unavoidable in accordance with 37 CFR 1.137(a), or unintentional in accordance with 37 CFR 1.137(b).” (A) is not the most correct answer. In a reexamination proceeding, requests for extensions of time must be filed on or before the day on which action by the patent owner is due pursuant to 37 CFR § 1.550(c). See MPEP § 2265. (C) is incorrect. (C) is inconsistent with MPEP § 2266, which states that if the patent owner fails to file a timely response to any Office action, the reexamination proceeding will be terminated, and after the proceeding is terminated, the Commissioner will proceed to issue a reexamination certificate. There is no provision for issuing a notice of allowance in a reexamination proceeding. Further, (C) is incorrect inasmuch as the examiner should not mail a Notice of Allowance and grant a new patent. (D) is not the most correct answer. In a reexamination proceeding where patent owner fails to file a timely and appropriate response to any Office action, the reexamination proceeding will be terminated via issuance of the Notice of Intent to Issue Reexamination Certificate. See MPEP § 2266. (E) is not the most correct answer. In a reexamination proceeding, requests for extensions of time must be filed on or before the day on which action by the patent owner is due pursuant to 37 C.F.R. § 1.550(c).

{ 6 comments… read them below or add one }

1 patentbarNo Gravatar August 19, 2008 at 8:17 pm

This question is also reported on a recent exam from 2008 (PatentBarQuestions) “Another one had to do with re-exam, choose what does not comport with PTO practice. I narrowed it down to: – Cannot get an extension of time to respond to a 2 month period for a response. (I chose this because you can get an extension under 1.55) – Can extend time up to 6 months to respond to Final office action. ( extensions were possible but I wasn’t sure about extending to 6 months).”

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2 Thank youNo Gravatar May 19, 2009 at 7:37 pm

The period for response may not, however, be extended to run past 6 months from the date of the final rejection.

pp.2272 from Chapter 2200

Reply

3 Big TexNo Gravatar December 8, 2009 at 6:35 pm

However, with regard to response 2, 2265 Extension of Time states:

An extension of time in an ex parte reexamination proceeding is requested pursuant to 37 CFR 1.550(c). Accordingly, a request for an extension (A) must be filed *on or before the day on which action by the patent owner is due* and (B) must set forth sufficient reason for the extension, and (C) must be accompanied by the petition fee set forth in 37 CFR 1.17(g).

If the request for extension of time was not made before the end of the 2 month period, the applicant cannot get the extension.

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4 KFNo Gravatar October 31, 2011 at 9:44 pm

Why is answer E wrong? Is it because you cannot Appeal in a Rexamination??

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5 maggieNo Gravatar October 31, 2011 at 9:46 pm

There is no extension of time in reexam. It is not prosecution.

Reply

6 maggieNo Gravatar October 31, 2011 at 9:50 pm

No automatic extension (request ON or before)

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