PTO Applies Extension Rules Strictly

Scott Daniels | August 21, 2009

The Director of the Central Reexamination Unit at the PTO has shown again that the rules for extensions of time in reexaminations are strictly applied.

The reexamination request was filed by Microsoft in November 2008, asserting that claims of U.S. Patent No. 5,787,449 were invalid over an earlier patent and article. The ‘449 patent was the subject of i4i v. Microsoft (CA No. 6:07CV113, E.D. Tex.), in which Judge Leonard Davis permanently enjoined Microsoft from infringement of the patent on August 11, 2009.

Reexamination was granted this January, and the PTO issued an Office Action, rejecting all pending claims on June 15, 2009. The ‘449 patentee petitioned that the two-month period for replying to the Action be extended by two months to October 15, 2009. The ‘449 patentee explained that reexamination counsel had not been obtained until July 15.

The Reexamination Director granted the petition in part and denied it in part. The Director first noted that Rule 1.550 (c) permits extensions “only for sufficient cause and for a reasonable time.” Further, “second and subsequent requests for extensions of time or requests for more than 1 month will be granted only in extraordinary situations.” MPEP § 2265. The Director therefore extended the period for replying to the Action to September 15, stating that there had been no explanation for the need for a second month.

The ‘449 patentee then petitioned that the deadline be extended to October 15, as it had originally requested. The ‘449 patentee explained that the case was now before the CAFC for expedited briefing on the permanent injunction issued by Judge Davis, with oral argument scheduled for September 22, 2009. This activity at the CAFC, the ‘449 patentee argued, did not permit it to interview the examiner and prepare an appropriate written response in the reexamination.

The Director dismissed the petition, essentially stating that the ‘449 patentee had failed to explain why it had not taken adequate steps to answer the Action in June and July.

UPDATE

(September 3, 2009)

The CAFC has stayed the injunction – the stay presumably lasting until the CAFC’s resolution of the appeal.

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