Patent Law Treaty Sets Minimum Two Month Response Periods

21 January 2014 PharmaPatents Blog

Since the Patent Law Treaty Implementation Act took effect on December 18, 2013, applicants may have noticed that they are being given a longer period of time to respond to certain Office Actions, such as Restriction Requirements. This is because one of the “procedural” changes wrought by the Patent Law Treaty regulations is to require Patent Offices to give applicants at least two months to respond to most requirements.

Impacted Response Periods

As set forth in a December 13, 2013 Memo To Examiners:

This change primarily impacts Office actions containing only a requirement for restriction or an election of species, Office notices treating a reply by the applicant as non-responsive or noncompliant, and Office notices requiring compliance with the sequence regulations.

The USPTO has decided that “certain pilot programs are not encompassed by this requirement,” such as “the pre-appeal brief conference program and the pre-first Office action on the merits interview program.” Thus, those programs will continue to have response periods of “less than two months.”

As noted in the Memo, and in accordance with the effective date of the PLTIA, the requirement for a minimum two-month response period applies to Office Actions mailed on or after December 18, 2013, regardless of when the application was filed.

The Statutory Deadline

Applicants should be mindful that many responses are governed by the statutory six-month maximum response period. Thus, the longer initial response period mandated by the PLT may mean that fewer extensions of time are available.

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