A patent extension of time request is a common occurrence during the prosecution of a patent application because of the complexity and cost for filing a patent.

If you have filed a patent application and received an Office action from a patent examiner, you usually are given a time period to submit a reply to the examiner’s noted deficiencies in your application. If you are unable to prepare a response over that time, you may often file for an extension to file a response (and pay applicable fees) that may not exceed six months after the mailing date on the Office action.

However, there are instances when it is not possible to file for an extension of time. These are:

  • Filing a
  • Filing a US national stage application under the

When to File a Patent Extension of Time Request

If you receive an Office action from a patent examiner with the U.S. Patent and Trademark Office (USPTO), it means that you have received a notification in writing from the examiner that one or more deficiencies have been found in your patent application. In most cases, you have three months to respond to the Office action without having to pay any extension fees.

If you need more time to prepare your response, you can receive an additional three months by submitting a request for extension. There are important factors to be taken into consideration regarding filing extension requests:

  • You don’t have to file an extension request if you are able to respond to the patent examiner within the initial three-month response period.
  • If you need more time, file your extension request and pay the fee for filing an extension request at the same time you file your response to the Office action.
  • You must designate the number of months you have required beyond the initial three months in your extension request.
  • If the extension deadline (which is six months from the mailing date of the Office action) falls on a weekend, the next business day is considered the deadline date.
  • The fees for filing an extension request increase with each month that is requested in the extension request. For instance, your fee for a one-month extension request is $50 if you are a , $100 if you are a , and $200 if you are a large entity. A two-month extension will cost you $150, $300, and $600 respectively, and a three-month extension will cost you $350, $700, and $1400, respectively.
  • If the deadline to file a response to an Office action is less than three months from the mailing date of the action, you will still have up to six months to file your response. So if for instance, you are only given one month to respond, you have five additional months over which you can file an extension. Of course, the fees for filing in the fourth and fifth month increase. The fees for a four-month extension are $550 (micro entity), $1,100 (small entity), and $2,200 (large entity), and for a five-month extension are $750, $1500, and $3,000, respectively.

How to File a Patent Extension Request

The technical term for filing an extension request with the USPTO is “petitioning” for a patent application extension. However, a formal petition is seldom required because the USPTO deems the payment of the extension fees as a constructive petition for a patent extension.

The period for filing a response to an Office action starts with the mailing date on the Office action. If a response is not submitted before the response due date, the application is technically considered abandoned. However, extensions of time are authorized within a period of six months after the mailing date if the required fees are paid when the response is filed or, in some cases, an actual petition for an extension is filed. There is no fee to file the petition, but the extension fees must be paid at the time the actual past-due response is filed.

Responses to Office actions may be filed in the following manner:

  • Electronically on the USPTO website (only for registered E-filers)
  • US mail
  • Facsimile
  • Hand-delivery

You should do your best to file within the allotted time indicated on the Office action in order to avoid paying additional fees for what can already be an expensive application process.

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