Q) 2 Month Rule for Final Office Action

by patentbar on August 7, 2008 · 54 comments

in Exam Questions

“I had a question that asked about extension fees when the Applicant has replied to a final Office action before 2 months after the mailing date of the Office action. Know that the date of mailing of the Examiner Advisory action resets the 3 month date for calculating extensions of time.”

EDIT (8/31/07): Thats not quite right. If you respond to the final office action within 2 months and the examiner gives an advisory action after the 3 month deadline than the extensions basically run from that point. You must respond before 2 months though and he must respond after 3.

Edit: Also remember to look out for the 6 month statutory bar, which supercedes the 3 month deadline above. In the event that the Advisory Action is mailed out after the 6 mo. bar, it is too late (Applicant would have to have submitted an Notice of Appeal or file continuation before the AA). I doubt if this happens too often.

{ 54 comments… read them below or add one }

1 cindyNo Gravatar August 20, 2009 at 8:15 am

Does 2 months rule apply to file appeal brief?
(Please feel free to share your thoughts as well)

There is an old question in 2003-April-am test, #39 (see end for the question)
The answer said it should be (D), which means the extension of time starts counting when the advisory action is later mailed.
However, if you take a look of 1205.01, the rule has CHANGED. Under the new Appeal rules:
” 37 CFR 41.37(a) does not permit the brief to be filed within the time allowed for reply to the action rom which the appeal was taken even if such time is later. Once appellant timely files a notice of appeal in compliance with 37 CFR 41.31, the time period for
reply set forth in the last Office action is tolled and is no longer relevant for the time period for filing an appeal brief. For example, if appellant filed a notice of appeal within one month from the mailing of a final Office action which sets forth a 3-month shortened statutory period for reply, and then the appellant filed an appeal brief after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, a petition for an extension
of time for one month would be required. Similarly, if the appellant files an amendment or a request for continued examination (RCE) under 37 CFR 1.114, instead of an appeal brief, after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, the petition for an extension of time would be required.”

In this sense, the time to file appeal brief strictly starts after the notice of appeal is received in the USPTO. Cause the filling of a notice of appeal tolls the time of the final action.

============================

39.Applicant received a Final Rejection with a mail date of Tuesday, February 29, 2000.The Final Rejection set a 3 month shortened statutory period for reply. Applicant files an Amendment and a Notice of Appeal on Monday, March 27, 2000. The examiner indicates in an Advisory Action that the Amendment will be entered for appeal purposes, and how the individual rejection(s) set forth in the final Office action will be used to reject any added or
amended claim(s). The mail date of the examiner’s Advisory Action is Wednesday, May 31, 2000. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following dates is the last date for filing a Brief on Appeal without an extension of time?
(A) Saturday, May 27, 2000.
(B) Monday, May 29, 2000 (a Federal holiday, Memorial Day).
(C) Tuesday, May 30, 2000.
(D) Wednesday, May 31, 2000.
(E) Tuesday, August 29, 2000.

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2 lets goNo Gravatar June 17, 2010 at 7:10 pm

D is an answer.

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3 babyeaterNo Gravatar June 24, 2010 at 1:34 pm

No idea how you come to determine D is the correct answer. C is correct.

4 MJVNo Gravatar June 27, 2010 at 9:46 am

D is correct. This is a previous exam question verbatim

5 babyeaterNo Gravatar June 27, 2010 at 12:00 pm

*Palm to forehead* Jesus, that was some sloppy reading. Yes, D is correct.

6 patenttipsNo Gravatar March 17, 2011 at 5:17 pm

D is correct. SSP ends later of 3 months or mailing date of AA IF after final is filed within 2 months of final action.

7 narfNo Gravatar March 23, 2011 at 5:52 pm

no way hombres, 1205.01 says that once applicant files the Notice of Appeal, the only active deadline is 2-month period for filing the brief:

Once appellant timely files a notice of appeal in compliance with 37 CFR 41.31, the time period for reply set forth in the last Office action is tolled and is no longer relevant for the time period for filing an appeal brief. For example, if appellant filed a notice of appeal within one month from the mailing of a final Office action which sets forth a 3-month shortened statutory period for reply, and then the appellant filed an appeal brief after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, a petition for an extension of time for one month would be required.

8 narfNo Gravatar March 23, 2011 at 6:06 pm

UNLESS the real issue is computation of the 2-month reply period. If the rule for filing an appeal brief is 2 months from the Notice, but the 2 months is calculated from the date of the Notice to the END of the month, then D would be the right answer.

9 LostNo Gravatar March 23, 2011 at 6:20 pm

so what if the opposite happen – filing notice of appeal after 2 months from office action, and then filing the appeal brief after 2 additional months (still within the time frame for the appeal but outside the original SSP) – are extension fees due in this case?

10 narfNo Gravatar March 23, 2011 at 8:45 pm

from 1205.01:

In the event that the appellant finds that he or she is unable to file a brief within the time period allotted by the *>rule<, he or she may file a petition, with fee, to the Technology Center (TC), requesting additional time under 37 CFR 1.136(a). Additional time in excess of 5 months will not be granted unless extraordinary circumstances are involved under 37 CFR 1.136(b). The time extended is added to the calendar day of the original period, as opposed to being added to the day it would have been due when said last day is a Saturday, Sunday, or Federal holiday.

11 GregNo Gravatar October 11, 2011 at 5:22 pm

D is the answer!

MPEP 710.02(e), under the heading “Final Rejection-Time For Reply” states, “if an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3 month shortened statutory period for reply and the Office does not mail an Advisory Action until AFTER the end of the 3 month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the Advisory Action advising the applicant of the status of the application…”

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12 jkpatentlawNo Gravatar June 12, 2012 at 7:50 pm

But you still only get 6 months statutory limit to further prosecute even if the Advisory Action is AFTER the 6-month limit. So basically, if the 6-month statutory limit is approaching you need to start thinking about filing a notice of appeal or thinking about how you are going to continue this thing.

13 SarahNo Gravatar August 29, 2013 at 2:06 pm

C is the correct answer by PLI. The notice appeal tolls the previous reply time, and two months for appeal brief is due from the date of notice of appeal (May 27), then move to Tuesday, May 30 due to weekend and Holiday. Also see 1205.01 on page 1200-10.

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14 AshNo Gravatar October 19, 2009 at 12:26 pm

Hi Cindy

The two-month rule applies only if the Advisory action is mailed later than the 3-month shortened period for response set by the final office action. It is true for Appeal briefs too, in my opinion. In the 1205.01 para that you cited, there is no mention of Advisory action from the PTO.

I still believe the answer to the question is D, the date on which the Advisory action was mailed.

thanks

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15 TJNo Gravatar February 22, 2010 at 6:12 pm

The answer must be (C). Appeal brief should be filed within 2months from the date of Notice of Appeal.
Advisory action date is just for counting the extension time. Above question is for the last date of appeal brief without extension.

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16 patenttipsNo Gravatar March 17, 2011 at 5:18 pm

The question refers to fee calculation. SSP for fee calculation purposes ends the later of 3 months or mailing date of advisory action IF the after final response is filed within 2 months of final action. Hence, D is the correct answer.

17 narfNo Gravatar March 23, 2011 at 5:57 pm

TJ is right; the question asked about last date to file AA w/o fees for extension. MPEP E8R4. 1205.01.

18 Emily M.No Gravatar February 13, 2010 at 9:50 pm

I got a variant of this: applicant responded to final rejection within 2 months, advisory action is mailed within the 3 month shortened period. The question asked what date extensions would be measured from, which would be the end of the shortened statutory period.

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19 Chemist62No Gravatar March 17, 2010 at 3:17 pm

706.07 mentions Time for Reply twice in headings. It is a variable time window. What sets it is the date of the Advisory Action. If the mail date of the Advisory Action is after the SSP given in the Final Notice, then the mail date of the Advisory Action makes it the drop dead deadline. If the Advisory Action is mailed before the end of the SSP, then the SSP governs. Well explained in 706.7(f)

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20 MJVNo Gravatar June 27, 2010 at 9:45 am

Thanks, this makes the most sense.

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21 PCTmasterNo Gravatar July 17, 2010 at 6:01 pm

Yes, this is absolutely the simplest way of explaining it. Ignore everything else on this page. LOL.

22 toomuch23No Gravatar October 28, 2010 at 1:06 pm

Agreed, even after reading the older posts

23 calvinNo Gravatar March 21, 2010 at 10:51 pm

The above answer choices are not correct, so confusing. Here are the correct choices, including answer D:

(A) May 31, 2006.

(B) Monday, May 29, 2006 (a Federal holiday, Memorial Day).

(C) May 27, 2006.

(D) May 30, 2006.

(E) Tuesday, August 29, 2006.

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24 MarianneNo Gravatar May 27, 2010 at 4:38 pm

714.13 Amendments and Other Replies After Final Rejection or Action, Procedure Followed

I. FINAL REJECTION – TIME FOR REPLY

If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection.

For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such a case, any extension fee would then be calculated from the end of the 3-month period. If the examiner, however, does not mail an advisory action until after the end of 3 months, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension fee may be calculated from that date. In the event that a first reply is not filed within 2 months of the mailing date of the final rejection, any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the end of the reply period set in the final rejection.

Failure to file a reply during the shortened statutory period results in abandonment of the application unless the time is extended under the provisions of 37 CFR 1.136.

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25 MarianneNo Gravatar May 27, 2010 at 4:48 pm

But I’m still not sure how the federal holiday and possible leap year issues move the date around. Tricky, or I’m missing something obvious. Thoughts?

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26 MarianneNo Gravatar May 27, 2010 at 5:05 pm

Found it.

710.01(a)Statutory Period, How Computed
….
For example, reply to an Office action with a 3-month shortened statutory period dated November 30 is due on the following February 28 (or 29 if it is a leap year), while a reply to an Office action dated February 28 is due on May 28 and not on the last day of May. Ex

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27 SNo Gravatar June 5, 2010 at 6:48 am

I got this. A repeat of an old exam where the answer choice was the date ends with the last date of the SSP.

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28 dotNo Gravatar August 1, 2010 at 3:09 am

The answer to the April 2003 AM #39 question is “Tuesday, May 30, 2000″ based on the version of the MPEP currently tested. See the discussion for the question under the “repeat questions” section of this website. Once a Notice of Appeal is filed, the two-month rule is no longer applicable.

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29 StephenNo Gravatar August 14, 2010 at 8:14 pm

There’s no guarantee this question has been updated in the Patent Bar question pool though.

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30 BrandonNo Gravatar February 2, 2011 at 5:27 pm

I agree with dot. The 2-month rule no longer exists for filing of an appeal brief. Appeal brief must be filed within 2-months from date PTO receives notice of appeal.

I find it hard to believe that the question would not have been updated in the question pool as this version of the MPEP has been the basis for questions for several years now.

31 GinNo Gravatar November 9, 2010 at 2:11 pm

If the applicant does file a complete first reply to the final Office action within 2 months, the MPEP 706.07(f) “shall” seems clear that the Examiner is obligated to send out an Advisory Action. However if the applicant does NOT file a complete first reply to the final Office action within 2 months, but does file a complete first reply to the final Office action within 2 months plus 1 day, is the examiner obligated to send out an advisory action before the application goes abandoned? MPEP 706.07(f) “should” seems to indicate tht there is no obligation on the examiner if a first reply is to the final Office action is filed after the 2 month date.

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32 LawrenceNo Gravatar December 12, 2010 at 10:08 pm

In this situation, the advisory action has no bearing on time limits and extensions because the applicant has not replied within 2 months of the final action (i.e. no variable reply period).

Not sure if this is what you’re getting at though.

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33 AnneNo Gravatar January 19, 2011 at 10:07 pm

Got this one today- reply to the final rejection filed within 2 months then advisory action mailed withing 3 months, then from when the extension of time necessary?

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34 BillNo Gravatar February 8, 2011 at 10:59 pm

I missed the exam by 1 question and so I reviewed my test at the PTO. The correct answer was “D”

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35 LostNo Gravatar March 23, 2011 at 6:23 pm

Did you protest? (assuming you answered C, which is the correct answer according to MPEP E8R4)

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36 SophieNo Gravatar February 9, 2011 at 9:16 pm

Bill: how did you set up the test review? I missed my exam by 2 questions and want to review it, but the PTO (OED) will not answer the phone or return my calls. How did you schedule it?

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37 patenttipsNo Gravatar March 17, 2011 at 5:22 pm

You have to call in the morning.

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38 CNo Gravatar February 20, 2011 at 1:04 pm

I have been concerned about this question since the law has apparently changed and the PTO does not seem to care.

That said, I found this:
“If the notice of appeal is filed before September 13, 2004, the time period for filing an appeal brief will be the time period set forth in former § 1.192(a) which provides that the appellant must file an appeal brief: (1) within two months from the date of filing of the notice of appeal;
or (2) within the time allowed for reply to the action from which the appeal was taken, if such time is later.”
http://www.uspto.gov/ip/boards/bpai/procedures/og/bpai91304.pdf

This seems to suggest that as long in the dates in the question have not changed, that answer choice (D) would still be correct. Any thoughts?

[Xposted to the other page this question appears on]

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39 JamieNo Gravatar July 20, 2012 at 3:31 pm

I agree with C.
The answer is D if the exact the same question shows up because it uses old rules. However, if the year in the question is changed, then we adopt new rules.

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40 OverworkkedNo Gravatar April 28, 2011 at 2:55 pm

Variant on 4/27/2011 E8R8

Know all the variants on this. Mailings before/after. Submissions before/after.

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41 LAPNo Gravatar May 3, 2011 at 12:19 pm

It appears that, once a Notice of Appeal is filed, the “extra free time” that may have been granted from the 2-month rule (where an Advisory Action is mailed after 3 months) is no longer relevant base on the E8R8 of the MPEP. MPEP 1205.01 states:

37 CFR 41.37(a) does not permit the brief to be filed within the time allowed for reply to the action from which the appeal was taken even if such time is later. Once appellant timely files a notice of appeal in compliance with 37 CFR 41.31, the time period for reply set forth in the last Office action is tolled and is no longer relevant for the time period for filing an appeal brief. For example, if appellant filed a notice of appeal within one month from the mailing of a final Office action which sets forth a 3-month shortened statutory period for reply, and then the appellant filed an appeal brief after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, a petition for an extension of time for one month would be required. Similarly, if the appellant files an amendment or a request for continued examination (RCE) under 37 CFR 1.114, instead of an appeal brief, after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, the petition for an extension of time would be required.

Does this sound correct?

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42 SarahNo Gravatar May 18, 2011 at 4:14 pm

Got this question today 5/18/11.

I think I got 2 of them actually. One was when would date start for fee calculations where the Advisory Action was mailed BEFORE the 3 month (so starts at end of SSP).

Another one involved knowing that filing Notice of appeal tolls the period and starts a new deadline.

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43 maggieNo Gravatar August 26, 2011 at 12:18 am

Got the 2 Month Rule for Final Office Action, Fee calculations for the one where Advisory Action was mailed BEFORE the 3 month (so starts at end of SSP). on 8/24

Thanks chemists. I got it correct If the Advisory Action is mailed before the end of the SSP, then the SSP governs. 706.7(f)

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44 patentgeekchickNo Gravatar September 22, 2011 at 8:43 pm

Got maggie’s today 9.22.11

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45 KFNo Gravatar November 2, 2011 at 7:14 pm

What does SSP stand for? Did the law change for this rule?

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46 KFNo Gravatar November 2, 2011 at 7:18 pm

Ahhh…shortened statutory period. Thank you Greg for your easy to understand explanation!

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47 BagelmanNo Gravatar January 20, 2012 at 12:08 pm

Got this 1/18/12.

Watch out for variants. I almost went with the advisory date as the date resetting the deadline but then I looked and saw that the date the advisory action was sent was BEFORE the three month statutory period was up. In that case, the deadline for responding without any fees is the end of the statutory period, not the advisory date.

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52 SolNo Gravatar April 6, 2012 at 11:59 pm

Notice of Appeal is not really a reply to the final OA, so under the NEW rules, NOA tolls the SSP and the 2-month rule no longer controls. So the Answer should be C now.

Under old rules, NOA does not toll the SSP, so 2-month rule controls, the Answer is D

But if you file arguement/amendment as a reply to the final OA, I believe the 2-month rule still controls.

I hope the answer is updated in the database.

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53 MattzNo Gravatar April 13, 2012 at 11:07 pm

You are right! here is the text from 706.07
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).

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.

It only applies to Amendment/Reply not NOA

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54 RandomNo Gravatar October 15, 2012 at 8:46 pm

Got this one today. Had to determine if extension runs from end of SSP or end of AA that is filed before the end of the SSP.

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