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USPTO Changes Extension of Time Practice in Patent Reexamination & Supplemental Examination
Posted By Scott A. McKeown On 30 October 2013 @ 7:15 In Reexamination, supplemental examination | No Comments
Tucked away in last week’s Federal Register Notice is a significant change to patent reexamination/supplemental examination procedures at the USPTO. Currently, any extension of time sought in an ex parte patent reexamination (the only type of patent reexamination still in existence) requires a show of cause for the requested extension. This is not a trivial matter as the USPTO’s Central Reexamination Unit (CRU) can be quite strict in granting such requests. However, on December 18, 2013, this practice will change for some filers. (Federal Register Notice here )
Starting in December extensions of time for up to two months will no longer require a showing of cause in proceedings that were not initiated by a third party. That is, for Director/Patent Owner initiated reexaminations, extensions of time for up to two months will be available as a matter of right. This change would also apply to supplemental examinations, which are patentee requested and are largely conducted under the same reexamination rules. The version of 1.550(c) that takes effect on December 18, 2013 is shown below (applies to all filings in existence on that date).
§ 1.550 Conduct of ex parte reexamination proceedings.
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(c) The time for taking any action by a patent owner in an ex parte reexamination proceeding may be extended as provided in this paragraph.
(1) Any request for such an extension must specify the requested period of extension and be accompanied by the petition fee set forth in § 1.17(g).
(2) Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of such a request for extension will not effect the extension. A request for an extension in a third party requested ex parte reexamination will not be granted in the absence of sufficient cause or formore than a reasonable time.
(3) Any request for an extension in a patent owner requested or Director ordered ex parte reexamination for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested or Director ordered ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months from the time period set in the Office action will not effect the extension. The time for taking action in a patent owner requested or Director ordered ex parte reexamination will not be extended for more than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.
(4) The reply or other action must in any event be filed prior to the expiration of the period of extension, but in no situation may a reply or other action be filed later than the maximum time period set by statute.
(5) See § 90.3(c) of this title for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action.
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(e) If a response by the patent owner is not timely filed in the Office, a petition may be filed pursuant to § 1.137 to revive a reexamination prosecution terminated under paragraph (d) of this section if the delay in response was unintentional.
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