Comments on: Q) 37 CFR 1.8 and 1.10 (4.02.16a) http://mypatentbar.com/2008/09/04/q-37-cfr-18-and-110-40216a/ Patent Bar Review and Study Guide Tue, 22 May 2012 00:33:43 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: GDB http://mypatentbar.com/2008/09/04/q-37-cfr-18-and-110-40216a/#comment-38565 GDB Mon, 16 Apr 2012 17:49:10 +0000 http://patentbar.wordpress.com/?p=814#comment-38565 Actually, reading 151 again, which relates to notices of allowances and issue fees, it states that the director CAN grant the patent for an unavoidable delay. But as you say, here there doesn't seem to be an unavoidable delay, so it's irrelevant! Actually, reading 151 again, which relates to notices of allowances and issue fees, it states that the director CAN grant the patent for an unavoidable delay. But as you say, here there doesn’t seem to be an unavoidable delay, so it’s irrelevant!

]]> By: GDB http://mypatentbar.com/2008/09/04/q-37-cfr-18-and-110-40216a/#comment-38564 GDB Mon, 16 Apr 2012 17:30:46 +0000 http://patentbar.wordpress.com/?p=814#comment-38564 Thanks Bfusion! Thanks Bfusion!

]]> By: Bfusion http://mypatentbar.com/2008/09/04/q-37-cfr-18-and-110-40216a/#comment-38533 Bfusion Mon, 16 Apr 2012 09:23:39 +0000 http://patentbar.wordpress.com/?p=814#comment-38533 GDB, Sadly, in Jill's case, because she is responding to a Notice of Allowance (which falls under 1.311(b), she only gets 3 months to reply. That's it, that 3 months is NEVER extendable, for any reason, and thus, 35 USC 151 cannot be applied). The fire information is included to try and divert your attention away from the "real" problem. Instead of looking at it from Jills perspective, put yourself in the examiner's shoes. They demand a response by "X" date, and this date, is NOT extendable, for ANY reason. Period. Thus, IF, response is not given by "X" date, the mailing is considered untimely, and her app is abandoned. Period. 37 CFR 1.311 states: "The notice of allowance shall specify a sum constituting the issue fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. The sum specified in the notice of allowance may also include the publication fee, in which case the issue fee and publication fee (§ 1.211(e)) must both be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable." now, let's say (for the sake of argument) she "could" extend the time. 1) Noting in the letter mentioned that she had had an unavoidable delay. this is all we know about the letter she sent: --> Nothing in the letter authorized payment of the publication fee --> no petition for an extension of time was filed, --> and an Office-provided issue fee transmittal form was not filed (so, you would be tempted to chose (C) as the answer, right? Again, sadly, the 3 month time period as set under 1.311 is NEVER extendable, for any reason...including an office fire.) So, you are "correct" in that an office fire, under other circumstances, would be a valid reason for an unavoidable delay. but, because she is responded to a NoA, she's out of luck. GDB,

Sadly, in Jill’s case, because she is responding to a Notice of Allowance (which falls under 1.311(b), she only gets 3 months to reply. That’s it, that 3 months is NEVER extendable, for any reason, and thus, 35 USC 151 cannot be applied).

The fire information is included to try and divert your attention away from the “real” problem. Instead of looking at it from Jills perspective, put yourself in the examiner’s shoes. They demand a response by “X” date, and this date, is NOT extendable, for ANY reason. Period. Thus, IF, response is not given by “X” date, the mailing is considered untimely, and her app is abandoned. Period.

37 CFR 1.311 states:
“The notice of allowance shall specify a sum constituting the issue fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. The sum specified in the notice of allowance may also include the publication fee, in which case the issue fee and publication fee (§ 1.211(e)) must both be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable.”

now, let’s say (for the sake of argument) she “could” extend the time.

1) Noting in the letter mentioned that she had had an unavoidable delay. this is all we know about the letter she sent:
–> Nothing in the letter authorized payment of the publication fee
–> no petition for an extension of time was filed,
–> and an Office-provided issue fee transmittal form was not filed

(so, you would be tempted to chose (C) as the answer, right? Again, sadly, the 3 month time period as set under 1.311 is NEVER extendable, for any reason…including an office fire.)

So, you are “correct” in that an office fire, under other circumstances, would be a valid reason for an unavoidable delay. but, because she is responded to a NoA, she’s out of luck.

]]> By: GDB http://mypatentbar.com/2008/09/04/q-37-cfr-18-and-110-40216a/#comment-38506 GDB Mon, 16 Apr 2012 03:05:13 +0000 http://patentbar.wordpress.com/?p=814#comment-38506 USC 35 151 states as follows: "If any payment required by this section is not timely made, but is submitted with the fee for delayed payment and the delay in payment is shown to have been unavoidable, it may be accepted by the Director as though no abandonment or lapse had ever occurred." Jill has a fire in her office so I would have thought that the delay would have been unavoidable, in which case she is able to submit late. Is that not true? I guess, if she retrieved the docs on the day they were due she could still mail them in accordance with 37 1.8 and 1.10. Any thoughts? USC 35 151 states as follows:
“If any payment required by this section is not timely made, but is submitted with the fee for delayed payment and the delay in payment is shown to have been unavoidable, it may be accepted by the Director as though no abandonment or lapse had ever occurred.”

Jill has a fire in her office so I would have thought that the delay would have been unavoidable, in which case she is able to submit late. Is that not true? I guess, if she retrieved the docs on the day they were due she could still mail them in accordance with 37 1.8 and 1.10.

Any thoughts?

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