Extension of Time Petitions in Reexamination: More to Them than Some Might Think

| July 12, 2012

Petitions for extension of time are the most common type of petition filed in reexamination proceedings.  Many patent practitioners, accustomed to the PTO’s practice of automatically granting extension of time requests in original prosecution, are sometimes surprised by extension of time practice in reexamination proceedings where it is not uncommon for a supervisory patent examiner to grant the petitioner only in-part or even to deny it.

We looked at a random pool of 150 petitions for extension of time, and found that 52% of the requests for extension of time were granted, 25% of requests, granted only in-part, and 23% denied.  One petitioner requested a one-month extension of time due to an unexpected withdrawal of counsel.  The examiner held that because the petitioner had been deprived of counsel for seven days, there was “sufficient cause” to afford the petitioner a corresponding seven day, not one-month, extension.  Such partial grants of extensions might not seem problematic, but where a party assumes or worse, relies on a specific extension to file a timely response.  While the median time-lag between a petition filing and decision is 6 days, it is sometimes two or three weeks before a decision is made.  Thus, a petitioner could find itself in a tough spot if it presumed that its petition would be granted, only to find there weeks later that its petition is only granted-in-part.

For the 23% of petitions which were either denied or dismissed, a common reason is that the petition is a second request for an extension of time with regard to a particular response.  In such cases, the examiner grants an extension only in “extraordinary circumstances,” e.g., death or incapacitation of the patent owner.  Accordingly, such second petitions are rarely granted.  Petitions are also dismissed as moot, as when a petitioner miscalculates the time to file a response.  For instance, a petitioner might not realize that an examiner’s re-mailing of an Office action resets the response time.  While such missteps are not costly per se, having a better understanding of response time helps expedite the reexamination process and lower the number of unnecessary petitions or filings.

It might be helpful to point out that patent examiners seem to be creatures of habit.  While some patent examiners routinely scrutinize petitions for extensions of time, granting only the precise time that is necessary, other patent examiners seem to grant petitions freely in full via a one-page standardized decision sheet.  For example, out of 39 petitions for a two-month extension (27 of which were granted-in-part for one month, 10 denied), only two petitions were granted in-full.  The same patent examiner not only granted these two petitions, but he also granted in-full all petitions for extension of time under his supervision in the sample pool. Thus, one can conduct a basic search on a specific patent examiner to gauge whether a petition will be subject to a higher or lower level of scrutiny.

So, what is needed for a successful petition?  In an inter partes reexamination proceeding, a patent owner must request an extension regarding a specific action in accordance with the CFR and MPEP.  Procedurally, the patent owner must (1) pay a $200.00 petition fee as required by 37 CFR 1.171(g) and (2) file the petition on or before the day on which the action by the petitioner is due as required by 37 CFR 1.956.

Substantively, the patent owner must fully state the reasons why an extension of time is necessary.  Under 37 CFR §1.956, an extension of time will be granted only for “sufficient cause” and for a “reasonable time” specified.  Under MPEP 2665, “sufficient cause” is shown where the desire to provide the patent owner with a fair opportunity to respond outweighs the desire to conduct the proceedings with “special dispatch.”  MPEP 2665 further notes that a petition for extension must include (A) a statement providing factual accounting of “reasonably diligent behavior” that the patent owner has taken to provide a response and (B) why, in spite of the action taken thus far, the requested additional time is needed.

Because it is presumed that the patent owner will exercise diligence, a patent examiner will find “sufficient cause” only for those circumstances beyond the ordinary or the anticipated.  Such circumstances include logistical issues (e.g., difficulty in conducting meeting due to remote locations of inventors) or complex issues resulting in longer-than-expected proceedings. Patent examiners often dismiss petitions that “unclearly” state the reasons for an extension. Thus, to be successful, the patent owner must clearly outline past diligence and present circumstances that would justify additional time. Furthermore, a patent owner should state why a refusal to grant an extension of time would unjustly prejudice the patent owner.

There is a heightened burden for petitions that

  1. are requests for more than a one-month extension or
  2. are second requests for extension regarding the same action.

In these circumstances, a petition will be granted only in “extraordinary situations.”  As noted earlier, an “extraordinary” circumstance would involve the death or incapacitation of the patent owner and would not include reasons such as pending petitions to terminate proceedings or a change in counsel.  In the petition sample, no second requests were granted, but as noted earlier, two requests for a two-month extension were granted.  The patent owners in these two cases argued that an inability to secure counsel and the complex issues involved in the proceedings warranted a two-month extension.  While the patent examiner granted the request in-full, other patent examiners did not find such reasons sufficient to constitute an “extraordinary” situation.  Thus, it seems that most patent examiners will almost never grant such requests.

Category: Petitions

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