37 C.F.R. § 1.136

Extensions of time

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(a)(1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) or (u) are filed, unless:

(i) Applicant is notified otherwise in an Office action;

(ii) The reply is a reply brief submitted pursuant to § 41.41 of this title;

(iii) The reply is a request for an oral hearing submitted pursuant to § 41.47(a) of this title;

(iv) The reply is to a decision by the Patent Trial and Appeal Board pursuant to § 41.50 or § 41.52 of this chapter or to § 90.3 of this chapter; or

(v) The application is involved in a contested case (§ 41.101(a) of this title) or a derivation proceeding (§ 42.4(b) of this title).

(2) The date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The expiration of the time period is determined by the amount of the fee paid. A reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application (§ 1.135), but in no situation may an applicant reply later than the maximum time period set by statute, or be granted an extension of time under paragraph (b) of this section when the provisions of paragraph (a) of this section are available.

(3) A written request may be submitted in an application that is an authorization to treat any concurrent or future reply, requiring a petition for an extension of time under this paragraph for its timely submission, as incorporating a petition for extension of time for the appropriate length of time. An authorization to charge all required fees, fees under § 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under this paragraph for its timely submission. Submission of the fee set forth in § 1.17(a) will also be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under this paragraph for its timely submission.

(b) When a reply cannot be filed within the time period set for such reply and the provisions of paragraph (a) of this section are not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under this paragraph must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension under this paragraph. In no situation can any extension carry the date on which reply is due beyond the maximum time period set by statute. Any request under this paragraph must be accompanied by the petition fee set forth in § 1.17(g).

(c) If an applicant is notified in a “Notice of Allowability” that an application is otherwise in condition for allowance, the following time periods are not extendable if set in the “Notice of Allowability” or in an Office action having a mail date on or after the mail date of the “Notice of Allowability”:

(1) The period for submitting the inventor's oath or declaration;

(2) The period for submitting formal drawings set under § 1.85(c); and

(3) The period for making a deposit set under § 1.809(c).

(d) See § 1.550(c) for extensions of time in ex parte reexamination proceedings, § 1.956 for extensions of time in inter partes reexamination proceedings; §§ 41.4(a) and 41.121(a)(3) of this chapter for extensions of time in contested cases before the Patent Trial and Appeal Board; § 42.5(c) of this chapter for extensions of time in trials before the Patent Trial and Appeal Board; and § 90.3 of this chapter for extensions of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action.

[62 FR 53194, Oct. 10, 1997, as amended at 65 FR 54674, Sept. 8, 2000; 65 FR 76773, Dec. 7, 2000; 66 FR 21092, Apr. 27, 2001; 69 FR 50000, Aug. 12, 2004; 69 FR 56543, Sept. 21, 2004; 70 FR 3891, Jan. 27, 2005; 72 FR 46842, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009; 77 FR 46625, Aug. 6, 2012; 77 FR 48821, Aug. 14, 2012; 78 FR 62405, Oct. 21, 2013; 89 FR 92008, Nov. 20, 2024]

Notes of Decisions

Cited in 15 cases (3 in the last 5 years), 1970–2024 · leading case: Pfizer, Inc. v. Lee

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Pfizer, Inc. v. Lee (2016) cafc · cites it 4× “At the time of filing, pursuant to 37 C.F.R. § 1.136 (a)(3), Wyeth filed an authorization for the PTO to charge all required fees necessary for it to qualify automatically for all authorized extensions of time during the pendency of the ’894 application.”

Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Inc. (2010) cafc “Cir. May 4, 2010), available at http:// oralarguments.”

In Re Stephen B. Bogese II (2002) cafc “103 (request for suspension of prosecution); 37 CFR § 1.136 (request for extension of time to respond).”

Bender v. Dudas (2007) cafc “1 While such an explanation might justify advising the client to seek an extension of time under 37 C.F.R. § 1.136 or a stay of proceedings pending resolution of the test case, it does not justify an absolute failure to notify the client at all that a final rejection had issued,…”

Enzo Therapeutics, Inc. v. Yeda Research & Development Co. (2007) vaed · cites it 3× “37 C.F.R. § 1.136 (a)(1) (2006) (emphasis added).”

Personalized Media Communications, LLC v. Apple Inc. (2023) cafc “The office action specified a three-month period during which PMC could reply, while also noting that extensions might be available under 37 C.F.R. § 1.136 (a), adding that in no event could a reply be filed more than six months af- ter the July 31, 2002 mailing date of the…”

General Foods Corporation v. Perk Foods Co. (1970) ca7 · cites it 2× “6 On April 23, 1962 (two days prior to the expiration of the six-month period of abandonment for failure to prosecute an application, 37 C.F.R. 1.136), the inventors filed a second application for patent, which was assigned Serial No.”

Aristocrat Technologies Australia PTY Ltd. v. International Game Technology and IGT (2007) cand “Extensions of time may be obtained under 37 CFR 1.136(a). (Id. at ¶ 15, Ex. 3.) The PTO determined that Mr.”

Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Inc. (2009) txwd “On February 28, 1994, Britanniea submitted a Petition for Extension of Time pursuant to 37 C.F.R. § 1.136 (a). The Petition for Extension of Time noted that “[a]ny fees should be charged to Deposit Account No.”

Pfizer, Inc. v. Lee (2014) vaed “) As part of its application, and pursuant to 37 C.F.R. § 1.136 (a)(3), Plaintiffs filed an authorization for the extension of time for its timely submission for the appropriate length of time during the pendency of the '894 application.”

Fleming v. Coward (2013) cafc “It also explained that extensions of time may be obtained under 37 C.F.R. § 1.136 (a). Mr. Fleming did not file any such document.”

Urologix, Inc. v. PROSTALUND AB (2002) wied · cites it 2× “37 C.F.R. § 1.136 (a); see also 35 U.S.C.”

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— 37 C.F.R. § 1.136(a) — 3 cases

Enzo Therapeutics, Inc. v. Yeda Research & Development Co. (2007) vaed “37 C.F.R. § 1.136 (a)(1) (2006) (emphasis added).”

Astellas Pharma Inc. v. Ascent Pharmaceuticals, Inc. (2024) ded

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