“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.
{ 16 comments… read them below or add one }
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.
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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.
D is an answer.
No idea how you come to determine D is the correct answer. C is correct.
D is correct. This is a previous exam question verbatim
*Palm to forehead* Jesus, that was some sloppy reading. Yes, D is correct.
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
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.
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.
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)
Thanks, this makes the most sense.
Yes, this is absolutely the simplest way of explaining it. Ignore everything else on this page. LOL.
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.
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.
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?
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
I got this. A repeat of an old exam where the answer choice was the date ends with the last date of the SSP.