Extensions Of Time In Patent Prosecution

Sometimes clients ask if it’s possible to obtain an extension of time to do something such as reply to an Office Action issued by the Patent Office.

Although the answer should be straight forward, it’s not quite as easy as that.

Here’s how it works:

Subsection 3(1) of the Patent Rules does permit the Commissioner to extend periods of time fixed by the Patent Rules providing the extension is applied for before expiration of the existing (ie current or present) period of time (to do whatever task is required), the necessary fee is paid, and the Commissioner considers that the circumstances justify the requested extension.

In order to consider whether the circumstances justify an extension of time, the Commissioner has to be made aware of the circumstances that resulted in the applicant requesting an extension.

If no reasons are provided, the Commissioner will most likely automatically refuse the request.

The Commissioner is willing to consider a reasonable and detailed explanation as to why the applicant was incapable (note the threshold – incapable) of fulfilling prescribed requirements within the prescribed time.

While the Patent Office does not offer specific guidelines and concrete examples per se, regarding the content of the explanation, the explanation really needs to be specific to the patent application in question, and should ideally provide sufficient information for the Commissioner to make an informed decision.

Some circumstances that may justify an extension of time are as follows (note there is not guarantee the Commissioner will automatically accept these types of explanations, but they are some of the “best chance” examples):

A recent transfer of the rights to the application;

a recent change in the appointed patent agent;

any health issues impacting the applicant or patent agent;

specific logistical issues effecting communication between the applicant and the patent agent;

specific additional efforts that an applicant must take in order to comply with an outstanding Office action; and

any other unforeseen issues (emphasis on the unforeseen aspect).

If a request to extend a period of time does not include a description of the circumstances, the request will almost certainly be refused.

A request that includes a “simple” statement indicating that more time is required to respond to an outstanding Office action or to obtain instructions from an applicant etc. (these are statements that were offered under the older Patent Act and Patent Rules and were, at the time considered acceptable), but does not include a description of the circumstances, will also be refused.

Following a refusal of a request for an extension of time, an applicant may subsequently provide a supplemental communication, which contains a description of the circumstances, but must do so before the expiry of the existing (current / present) deadline.

As long as the required fee was submitted along with the original request for an extension of time, a supplemental communication will not be subject to any fee (but there is still no guarantee the supplemental communication will be considered sufficient to grant an extension).

In any supplemental communication that additional justifications for the previously requested extension of time are being provided, an applicant must include the date of the original request, in order to clarify that the communication is supplemental to an earlier request and that the required fee for requesting the extension has already been paid.

If a request for extension of time has been refused and the existing deadline has expired, the patent application may have already been deemed abandoned.

An application that has been deemed abandoned may be reinstated in accordance with the Patent Act and Patent Rules.

Reinstatement requires  an applicant, within the prescribed time,

(i) makes a request for reinstatement to the Commissioner,

(ii) states, in the request, the reasons for the failure to take the action that should have been taken in order to avoid the abandonment,

(iii) takes the action that should have been taken in order to avoid the
abandonment,

(iv) pays the prescribed fee; and

(vi) the Commissioner determines that the failure occurred in spite of the due care required by the circumstances having been taken and informs the applicant of this determination.

As you can see, it’s not as straight forward as you might have thought, although there is some reasonably clear direction on how to get to where you want to be.

Based on all the above though, one thing is clear, and that is applicants should not assume they can readily obtain an extension of time to comply with a requirement from the Patent Office.

A best-practice for both patent agents and clients is to be very pro-active in reporting and reviewing Office Actions, as well as preparing responses as far in advance as reasonably practicable.

Visit our Services page to learn more about Pnc IP Group’s Patent services. If you have questions regarding the above, feel free to contact us.

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Questions regarding this article can be directed to Tapas Pain.

Pnc IP Group are licensed lawyers and registered patent and trademark agents with a history of serving the greater York Region, greater Toronto area since 2003.

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These articles and opinions do not express or constitute legal advice.