Patent It Yourself - PDF Archive

ChaPter 13 | GETTING the Pto to DELIVER | 397
design as obvious over one or more references, you should
use the 102-then-103 attack as explained in Sections F and
J—that is, point out the differences in your design and then
argue their importance and significance, albeit from an
aesthetic viewpoint. To reject a design claim on two or more
references, one must look basically like the claimed design.
(In re Harvey, 29 USPQ 2d 1206 (Fed.Cir. 1993).)
If your design case is allowed, you must pay an issue fee
(see Appendix 4, Fee Schedule), which makes the design
patent effective for a term of 14 years from its date of issue.
There are no maintenance fees for a design patent. You can
convert a design application to a utility application, or vice
versa, by filing a continuing application under 35 USC 120.
However a design patent application may not claim priority
of a PPA.
calculate your total number of months from the date of
the OA; don’t add your extension months to your original
due date. For example, assume your OA was mailed 2011
May 12 and provided a three-month period to reply. Your
original period expired 2011 Aug 12. You buy a two-month
extension. Now, your total period for reply is five months
from May 12—that is, you have until 2011 Oct 12—not
two months from Aug 12. You should mail your response,
petition for extension, and petition fee (which can be quite
expensive) by midnight Oct 12. It does not have to go out
or be postmarked by Oct 12. Remember that by statute you
can’t extend any response period beyond six months. Also,
you can’t buy an extension to send in your issue fee; the
three-month statutory period from the Notice of Allowance
is not extendable.
Q. What to Do If You Miss or Want
to Extend a PTO Deadline
If you miss any PTO deadline—for example, the threemonth
period to reply to an OA—your application
technically becomes abandoned, but you can buy an
automatic extension. If your application goes abandoned, or
if you want more time to reply to an OA, it can be “revived”
or extended in any of three following ways:
• buy an extension
• file a Petition to Revive if delay was “unavoidable”
• file a Petition to Revive if delay was avoidable but
unintentional.
Let’s look at these separately and in more detail.
1. Buy an Extension Before the Six-Month
Period Ends (Rules 136(a) and 17(a)-(d))
Most substantive OAs give you three months from their
mailing date to reply. Most nonsubstantive OAs (e.g., a
requirement for restriction to one of two inventions) allow
only one month. If you don’t reply within your designated
period, you can send in your reply at any time up to the
end of the sixth month by buying an extension of up to five
months (if it won’t carry you over six months) at the prices
indicated in the Fee Schedule. To buy an extension in this
manner, eFile, fax, or mail your reply (amendment) by the
last day of the extension month, together with a “Petition
for Extension of Time under 37 CFR 1.136(a)” (PTO/SB/22
or Form 13-4), completed as necessary, and a check or
credit card charge. It is not necessary to apply in advance.
If you fax or mail, make sure you include a Certificate
of Faxing or Mailing on your amendment. You should
2. Petition to Revive If Delay Was
“Unavoidable” (Rule 137(a))
If you failed to send in your amendment or issue fee
within the regular three-month period and your delay
was “unavoidable”—for example, you never received the
OA, you had a death in the family that precluded your
drafting an amendment, you suffered a severe illness, or
your home burned down—you can petition to revive the
application. (While this petition can be used for any delay
beyond the three-month period, most applicants use it for
delays beyond the six-month period because the petition
for delays up to six months can be automatically obtained
using the Extension petition of the preceding paragraph.)
The fee is indicated in the Fee Schedule and you should file
the following papers: (a) your reply and (b) the petition to
revive with the fee. The petition (use Form PTO/SB/61 or
make your own petition using the heading of Form 13-1)
should petition to revive the above application, state that
the delay was unavoidable because (give the reason in
the declaration space or in an attached declaration). The
declaration should state in detail the specific facts that
caused the delay. Use numbered paragraphs and start it as
follows:
A.B. declares as follows:
1. I am the applicant in the above application.
Then, give your reasons in short, specific, numbered,
factual paragraphs. Refer to and attach copies of any
documents you feel are relevant. Your petition and paper
must be promptly filed after you become aware of the
abandonment. If your petition under this paragraph is
denied, you can still petition under the next paragraph if
you do so within three months.