"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...."
Here, could "up to the earlier of the expiration" be read as "up to the end of the expiration", or just "up to the expiration"? The "earlier" is really confusing me. What does it mean? Does this basically mean file the extension before the prescribed period expires? That would, of course, make sense, but just want to be sure with the complex legalese. Thank you.
Yes, the language for sure is convoluted. Several issues here.
"Statutory" = governed by U.S.C. law, primarily 35 U.S.C. for patent law. Response times for some actions are governed by statutory limitation; some are not (nonstatutory).
"Expiration" = last day on which the response may be submitted (on or before stroke of midnight) while meeting prescribed conditions.
Examples:
(1) Response to Office Action dated Mar. 1, 2009. MAXIMUM response period subject to statutory limit of 6 mo from date of Office Action. Response time initially set by the Office Action at shortened statutory period (SSP) of 3 mo. Can file on or before Mar. 1 + 3 mo. = June 1 without extension fee. Maximum response period set by statutory period = Mar. 1 + 6 mo = Sept 1, 2009. Hence, a maximum 3 mo extension from the initial 3 mo SSP allowed (3 mo SSP + 3 mo ext = 6 mo statutory limit). Alternative calculation 3 mo + 5 mo. = 8 mo reply period. You get the shorter (earlier) of (6 mo or 8 mo, whichever governs) as the maximum response period. The 6 mo governs, so you get a max of 3 mo extension. Expiration of max response period = Sept 1.
(2) Response to Notice of Missing Parts, also dated Mar. 1, 2009. Response period initially set at 2 mo. Can file on or before Mar. 1 + 2mo = May 1 without extension fee. IF IT WERE SUBJECT TO THE STATUTORY LIMIT, max response period would be Mar. 1 + 6 mo = Sept 1 (as above). Alternative calculation 2 mo + 5 mo = 7 mo response period. Response to Notice of Missing Parts is NOT subject to statutory limit. You get the earlier of (6 mo or 7 mo, whichever governs). The 7 mo governs, so you get a max of 5 mo extension. Expiration of max period allowed = Oct. 1.
The extensions do not have to be requested in advance, as long as you file before expiration of max period allowed.
Example from above:
Response to Office Action due on June 1 without extension fee. File on June 2 along with request for 1 mo ext +$. OK. File on Sept 1 along with request for 3 mo ext + $. OK. File on Sept 2...too late, abandoned.
You will probably get several questions on response times and extensions. You need to understand the nuances (as usual, there are exceptions) Read MPEP 710. Modifications of the expiration date due to weekends, holidays, postal strikes, acts of God, etc ...frequently tested.
