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706.07(f) Time for Reply to Final Rejection [R-2] - 700 Examination of Applications
706.07(f) Time for Reply to Final Rejection [R-2]
The time for reply to a final rejection is as follows:
(A) All final rejections setting a 3-month shortened statutory period (SSP) for reply should contain one of form paragraphs 7.39, 7.40, 7.40.01, 7.41, 7.41.03, or 7.42.09 advising applicant that if the reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later. Thus, a variable reply period will be established. If the last day of "2 months of the date of the final Office action" falls on Saturday, Sunday, or a Federal holiday within the District of Columbia, and a reply is filed on the next succeeding day which is not a Saturday, Sunday, or a Federal holiday, pursuant to 37 CFR 1.7(a), the reply is deemed to have been filed within the 2 months period and the shortened statutory period will expire at 3 months from the date of the final rejection or on the mailing date of the advisory action, whichever is later (see MPEP § 710.05). In no event can the statutory period for reply expire later than 6 months from the >mailing< date of the final rejection.
(B) If the form paragraph setting a variable reply period is inadvertently not included in the final Office action, the SSP for reply will end 3 months from the date of the final Office action and cannot be extended other than by making a petition and paying a fee pursuant to 37 CFR 1.136(a). However, if an advisory action is mailed in such a case where the reply to the final action has been filed within 2 months, the examiner should vacate the original SSP and reset the period for reply to correspond with the Office policy set forth in the Notice entitled "Procedure for Handling Amendments Under 37 CFR 1.116," 1027 O.G. 71 (Feb. 8, 1983). See paragraph (F) below.
(C) This procedure of setting a variable reply period in the final rejection dependent on when applicant files a first reply to a final Office action does not apply to situations where a SSP less than 3 months is set, e.g., reissue litigation applications (1-month SSP) or any reexamination proceeding.
>I. < ADVISORY ACTIONS
(D) Where the final Office action sets a variable reply period as set forth in paragraph (A) above AND applicant files a complete first reply to the final Office action within 2 months of the date of the final Office action, the examiner must determine if the reply:
(1) places the application in condition for allowance - then the application should be processed as an allowance and no extension fees are due;
(2) places the application in condition for allowance except for matters of form which the examiner can change without authorization from applicant, MPEP § 1302.04 - then the application should be amended as required and processed as an allowance and no extension fees are due; or
(3) does not place the application in condition for allowance - then the advisory action should inform applicant that the SSP for reply expires 3 months from the date of the final rejection or as of the mailing date of the advisory action, whichever is later, by checking the appropriate box at the top portion of the Advisory Action form, PTOL-303.
If PTOL-303 is not used, then use Form Paragraph 7.67.01 on all advisory actions where a first complete reply has been filed within 2 months of the date of the final Office action.¶ 7.67.01 Advisory After Final, Heading, 1st Reply Filed Within 2 Months
The shortened statutory period for reply expires THREE MONTHS from the mailing date of the final rejection or as of the mailing date of this advisory action, whichever is later. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection.
Any extension fee required pursuant to 37 CFR 1.17 will be calculated from the date that the shortened statutory period for reply expires as set forth above.
Examiner Note
1. This form paragraph should be used in all advisory actions if:
it was the FIRST reply to the to the final rejection, and
it was filed within two months of the date of the final rejection.
2. If a notice of appeal has been filed, also use form paragraph 7.68.
3. DO NOT USE THIS FORM PARAGRAPH FOR REEXAMINATION PROCEEDINGS.
4. Follow with form paragraph 7.41.01 if transitional provisions of 37 CFR 1.129(a) are applicable.
(E) Where the final Office action sets a variable reply period as set forth in paragraph (A) above, and applicant does NOT file a complete first reply to the final Office action within 2 months, examiners should use form paragraph 7.67.
(F) Where the final Office action does not set a variable reply period as set forth in paragraph (A) above AND applicant does file a complete first reply to the final Office action within 2 months, and if an advisory action is necessary and cannot be mailed within 3 months of the final Office action, the examiner should vacate the original SSP and reset the reply period to expire on the mailing date of the advisory action by using form paragraph 7.67.02. In no case can the statutory period for reply expire later than 6 months from the date of the final Office action. Note that form paragraph 7.67.02 can be used with the advisory action (preferable) or after the advisory action is mailed to correct the error of not setting a variable reply period.
¶ 7.67.02 Advisory After Final, Heading, No Variable SSP Set in Final
Since the first reply to the final Office action was filed within TWO MONTHS of the mailing date of that action and the advisory action was not mailed within THREE MONTHS of that date, the THREE-MONTH shortened statutory period for reply set in the final Office action is hereby vacated and reset to expire as of the mailing date of this advisory action. See Notice entitled "Procedure for Handling Amendments Under 37 CFR 1.116," published in the Official Gazette at 1027 O.G. 71, February 8, 1983. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final Office action.
Any extension fee required pursuant to 37 CFR 1.17 will be calculated from the mailing date of the advisory action.
Examiner Note
1. This form paragraph should be used in all advisory actions where:
the reply is a first reply to the final action;
the reply was filed within two months of the mailing date of the final; and
the final action failed to inform applicant of a variable SSP beyond the normal three month period, as is set forth in form paragraphs 7.39 to 7.41.
2. If the final action set a variable SSP, do not use this form paragraph, use form paragraph 7.67.01 instead.
3. If a notice of appeal has been filed, also use form paragraph 7.68.
4. Follow with form paragraph 7.41.01 if transitional provisions of 37 CFR 1.129(a) are applicable.
(G) When an advisory action properly contains either form paragraph 7.67.01 or 7.67.02, the time for applicant to take further action (including the calculation of extension fees under 37 CFR 1.136(a)) begins to run 3 months from the date of the final rejection, or from the date of the advisory action, whichever is later. Extension fees cannot be prorated for portions of a month. In no event can the statutory period for reply expire later than 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 case, if a petition for extension of time is granted, the due date for a reply is computed from the date stamped or printed on the Office action with the final rejection. See MPEP § 710.01(a). If the examiner, however, does not mail an advisory action until after the end of the 3-month period, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension of time fee would be calculated from the mailing date of the advisory action.
>II. < EXAMINER'S AMENDMENTS
(H) Where a complete first reply to a final Office action has been filed within 2 months of the final Office action, an examiner's amendment to place the application in condition for allowance may be made without the payment of extension fees even if the examiner's amendment is made more than 3 months from the date of the final Office action. Note that an examiner's amendment may not be made more than 6 months from the date of the final Office action, as the application would be abandoned at that point by operation of law.
(I) Where a complete first reply to a final Office action has not been filed within 2 months of the final Office action, applicant's authorization to make an amendment to place the application in condition for allowance must be made either within the 3 month shortened statutory period or within an extended period for reply that has been petitioned and paid for by applicant pursuant to 37 CFR 1.136(a). However, an examiner's amendment correcting only formal matters which are identified for the first time after a reply is made to a final Office action would not require any extension fee, since the reply to the final Office action put the application in condition for allowance except for the correction of formal matters, the correction of which had not yet been required by the examiner.
(J) An extension of time under 37 CFR 1.136(a) requires a petition for an extension and the appropriate fee provided for in 37 CFR 1.17. Where an extension of time is necessary to place an application in condition for allowance (e.g., when an examiner's amendment is necessary after the shortened statutory period for reply has expired), applicant may file the required petition and fee or give authorization to the examiner to make the petition of record and charge a specified fee to a deposit account. Office employees may not accept oral (telephonic) instructions to complete the Credit Card Payment Form or otherwise charge a patent process or trademark process fee (as opposed to information product or service fees) to a credit card. When authorization to make a petition for an extension of time of record is given to the examiner, the authorization must be given before the extended period expires. The authorization must be made of record in an examiner's amendment by indicating the name of the person making the authorization, when the authorization was given, the deposit account number to be charged, the length of the extension requested and the amount of the fee to be charged to the deposit account. Form Paragraph 13.02.02 should be used.
**>¶ 13.02.02 Extension of Time and Examiner's Amendment Authorized by Telephone
An extension of time under 37 CFR 1.136(a) is required in order to make an examiner's amendment which places this application in condition for allowance. During a telephone conversation conducted on [1], [2] requested an extension of time for [3] MONTH(S) and authorized the Director to charge Deposit Account No. [4] the required fee of $ [5] for this extension and authorized the following examiner's amendment. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
Examiner Note
See MPEP § 706.07(f), item (J) which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance.III. < PRACTICE AFTER FINAL
(K) Replies after final should be processed and considered promptly by all Office personnel.
(L) Replies after final should not be considered by the examiner unless they are filed within the SSP or are accompanied by a petition for an extension of time and the appropriate fee ( 37 CFR 1.17 and 37 CFR 1.136(a)). See also MPEP § 710.02(e). This requirement also applies to supplemental replies filed after the first reply.
(M) Interviews may be conducted after the expiration of the shortened statutory period for reply to a final Office action but within the 6-month statutory period for reply without the payment of an extension fee.
(N) Formal matters which are identified for the first time after a reply is made to a final Office action and which require action by applicant to correct may be required in an Ex parte Quayle action if the application is otherwise in condition for allowance. No extension fees would be required since the reply puts the application in condition for allowance except for the correction of formal matters - the correction of which had not yet been required by the examiner.
(O) If prosecution is to be reopened after a final Office action has been replied to, the finality of the previous Office action should be withdrawn to avoid the issue of abandonment and the payment of extension fees. For example, if a new reference comes to the attention of the examiner which renders unpatentable a claim indicated to be allowable, the Office action should begin with a statement to the effect: "The finality of the Office action mailed is hereby withdrawn in view of the new ground of rejection set forth below." Form paragraph 7.42 could be used in addition to this statement. See MPEP § 706.07(d).
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