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(Message started by: 1st time on May 4th, 2007, 9:26am)

Title: office action deadline and fee calculation
Post by 1st time on May 4th, 2007, 9:26am
I need to respond to an office action. Mailing date was 4-5-07, with 30 days. I have until 5-5-07 at midnight? (or is it today 5-4-07 at midnight?

Assuming I miss the deadline, is the extra month extension fee for small entities $60?

Title: Re: office action deadline and fee calculation
Post by Isaac on May 4th, 2007, 10:02am

on 05/04/07 at 09:26:21, 1st time wrote:
I need to respond to an office action. Mailing date was 4-5-07, with 30 days. I have until 5-5-07 at midnight? (or is it today 5-4-07 at midnight?


If you have one month or 30 days to respond from the day of mailing, your response isn't late until after 5-7-07 because 5-5-07 is Saturday.


Title: Re: office action deadline and fee calculation
Post by stillstudying on May 6th, 2007, 6:21pm
Would using a "certificate of mailing", "certificate of transmission", or "Express Mail" be a good idea (or essential) in this sort of case?


Quote:
Sending Petition Papers
The filing date of a document in the USPTO is the date of receipt in the Office, not the date of deposit in the mail. 37 C.F.R. 2.195. However, a petition that is mailed to the USPTO before the expiration of the deadline discussed above will be considered to have been timely filed if (1) it is properly addressed and deposited with the U.S. Postal Service with postage sufficient for first class mail, and (2) the petition includes a certificate of mailing that identifies the date the petition was mailed, and the address to which it was mailed. 37 C.F.R. 2.197(a). You are encouraged to use a certificate of mailing (see sample below) to ensure the timeliness of the petition. Please keep a photocopy of the petition and the signed certificate. If the petition is filed and then lost, a photocopy of the petition and the certificate of mailing may help to establish that the petition was timely filed. The following is a sample certificate if mailing:

...


I can't post a link, but a Google search on ("certificate of mailing" office action response) (without the parentheses, but including the quotes as shown) turns that up as the first link.

Title: Re: office action deadline and fee calculation
Post by Isaac on May 7th, 2007, 10:32am

on 05/06/07 at 18:21:59, stillstudying wrote:
Would using a "certificate of mailing", "certificate of transmission", or "Express Mail" be a good idea (or essential) in this sort of case?


Good idea, but there are other options (noting of course that express mail means using a specific service and procedure at the US Post Office and not using some other express mail service such as UPS or DHL).  You can also file a response electronically or even hand deliver the response if you are local to the USPTO.  (I'm in DC).  


Title: Re: office action deadline and fee calculation
Post by LF on May 15th, 2007, 6:39am
I think it is $60 late fee (small entity) for the 1st month, $225 for the second?

Title: Re: office action deadline and fee calculation
Post by Bill Richards on May 19th, 2007, 4:14am
LF is correct.  Check here (http://www.uspto.gov/web/offices/ac/qs/ope/fee2007february01.htm#patapp).

Title: Re: office action deadline and fee calculation
Post by LF on May 22nd, 2007, 9:03am
Bill, et al.

If one petitions to revive unintentionally abandoned (small entity) it's $750. Must you also pay the 6 month late fee for any office action? (Typically the 6 months passed before the abandonment).

LuF

Title: Re: office action deadline and fee calculation
Post by zippy on Oct 19th, 2007, 8:24am
Can anyone answer LuF's last question?  I think he is correct, but I am not 100% sure.  

Title: Re: office action deadline and fee calculation
Post by TataBoxInhibitor on Oct 19th, 2007, 8:45am

on 10/19/07 at 08:24:59, zippy wrote:
Can anyone answer LuF's last question? I think he is correct, but I am not 100% sure.



He is correct.   The response must include a complete response to the previous office action, which includes the extension fees.

Regards,


Title: Re: office action deadline and fee calculation
Post by Isaac on Oct 19th, 2007, 7:57pm

on 10/19/07 at 08:45:50, TataBoxInhibitor wrote:
He is correct. The response must include a complete response to the previous office action, which includes the extension fees.


Actually, I'm pretty sure you don't owe any extension fees.   37 CFR 1.137 and MPEP section 711.03(c) describe what's required.



Title: Re: office action deadline and fee calculation
Post by Agent_Smiley on Oct 24th, 2007, 10:46pm
I agree with Isaac. No extension fees are required to revive an abandoned application (I know from experience because I knew an attorney that would rather abandon an application and revive it rather than pay the expensive extensions). Of course, you run the risk of malpractice and lose claim to any extensions of patent term.

Please correct me if I'm wrong.

Title: Re: office action deadline and fee calculation
Post by Isaac on Oct 25th, 2007, 9:17am
I don't believe electing to revive versus paying the 3 month extention fee is a rational decision.  

First the fee with a petition to revive an unintentionally abandoned application is higher than the fee for a 3 month extension  (1540/770  vs. 1050/525).  The petition for an unavoidable abandoned applicaiton is less, but the showing for such a petition is quite high.

More importantly, if the attorney elects not to file the 3 month extension, then it would seem that the resulting abandonment was intentional, and that attempting to revive an application under those circumstances would involve lying that might invalidate the patent and might result in discipline and/or jail time for the practioner.


Title: Re: office action deadline and fee calculation
Post by TataBoxInhibitor on Oct 25th, 2007, 9:50am
Yes.  You are correct.   No extension fees are required for a complete response to the previous office action.

Why is there such a disparity in cost between unavoidable and unintentional abandonment?  I am assuming unavoidable is the more difficult one to obtain?

Regards,


Title: Re: office action deadline and fee calculation
Post by biopico on Oct 25th, 2007, 10:48am

on 10/25/07 at 09:17:43, Isaac wrote:
More importantly, if the attorney elects not to file the 3 month extension, then it would seem that the resulting abandonment was intentional, and that attempting to revive an application under those circumstances would involve lying that might invalidate the patent and might result in discipline and/or jail time for the practioner.


To prove it, it would be a big challenge.  Maybe that is what motivated the said attorney not to file the 3 month extension.  



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