Terms and Concepts
Extensions of Time
In reexamination proceedings, deadlines for filing responses or third party papers are generally extremely short, particularly in cases involving a concurrent litigation. However, the PTO is cognizant that a patent owner must be provided with a fair opportunity to present an argument against any attack on the patent [MPEP §§ 2265 and 2665] and has granted requests for extension of time in a number of cases. If a patent owner is faced with an action presenting extensive and complex rejections or an action requiring development of factual affidavits, the patent owner should consider filing a request for an extension of time. Such a request should be detailed and provide sufficient cause to justify the extension. When deciding such requests, the PTO must balance the interest of the parties against the statutory mandate that reexaminations be conducted with special dispatch.
The inter partes reexamination rules allow for the patent owner to request an extension of time to reply to an Office action (or any action) for sufficient cause [37 C.F.R. § 1.956]. However, the rules explicitly prohibit the third party from receiving an extension of time for submitting written comments to the patent owner’s Office action response [37 C.F.R. § 1.947]. Many practitioners argue that this rule is unfair to the third party requester, particularly in cases where the patent owner has received an increase in the page limit for reply or submits voluminous factual evidence. One recommendation being circulated is to remove the prohibition against the third party requester and allow the third party requester to request extensions of time using the same standards applied to the patent owner.
Reexaminations must be carried out with “special dispatch” [35 U.S.C. §§ 305 and 314(c)]. For this reason, patent owners are uniformly given shortened periods of time to respond to Office actions on the merits—typically two months instead of the usual three allowed during original prosecution. Further, because reexaminations are not “applications”, the ability to obtain extensions of time under 37 C.F.R. § 1.136 is foreclosed. Instead, patent owners seeking an extension of time are bound by reexamination Rules 1.560 and 1.956. Under those rules, extensions of time are only given if sufficient cause is demonstrated. Even then, extensions are typically available for only one month barring a showing of extraordinary circumstances [MPEP §§ 2265 and 2665].
That said, well-supported requests are often granted. Factors that appear to warrant extensions of time include, for example, on-going parallel discovery in a co-pending district court or ITC action. Discovery such as expert reports or inventor depositions that are due during the two-month window for responding to the Office action may necessitate added time for review and consideration. Other factors include the availability of declarants, the need to obtain evidence in support of patentability arguments and whether reexamination is new to the proceedings. For instance, extensions of time have been granted when reexamination counsel needs to investigate obtaining evidence to support a declaration under Rule 131 to swear behind the date of a reference or needs to obtain evidence to support a declaration of non-obviousness under Rule 132. The same is true when the need arises to obtain evidence of secondary considerations in rebutting an obviousness rejection.
An important aspect of any request to extend time is an affirmative showing of what steps the patent owner has taken in responding to the Office action [MPEP § 2265]. A detailed showing of theses steps is required. Only with this showing may the CRU properly balance the need to proceed with special dispatch against the ability of the patent owner to fully respond to the rejections in the Office action and to adequately defend its patent right.
It should also be noted that filing a request for an extension of time does NOT toll the time to respond. Therefore, any requests should be made well in advance of the deadline. The CRU responds to requests in a fairly prompt manner. One recent evaluation shows a mean decision time of two weeks, with a median time of 11 days. The CRU has acted in as little as five days from the request.
If an extension of time is secured for responding to a particular action, any subsequent request to extend for the same action will only be granted if there are extraordinary circumstances, such as incapacitation of reexamination counsel [MPEP §§ 2265 and 2665]. For responses to subsequent actions, the standard reverts to sufficient cause. Put differently, the term “second or subsequent requests” refers to a second or subsequent request in the context of the particular deadline for which an extension is sought, and not to second or subsequent requests over the course of the entire reexamination. This is important because “second or subsequent” requests are only granted under “extraordinary circumstances.”
However, based on conversations with two CRU Supervisory Patent Examiners (”SPEs”), if the PTO perceives a pattern of delay, such as where an applicant requests an extension of time for every deadline, subsequent requests over the course of an entire reexamination receive closer and closer attention. While not reviewed under the “extraordinary circumstances” standard, these subsequent extension of time requests will get closer inspection and may require additional proof than would have been required for a first request.