Shortened Statutory Period: Situations in Which Used

Under the authority given him or her by

35 U.S.C.

133

, the Director of the USPTO has directed the examiner to set

a shortened period for reply to every action. The length of the shortened statutory

period to be used depends on the type of reply required. Some specific cases of

shortened statutory periods for reply are given below. These periods may be changed

under special, rarely occurring circumstances.

A shortened statutory period may not be less than 30 days

(

35 U.S.C.

133

).

The Patent Law Treaty (PLT), which entered into force

with respect to the United States on December 18, 2013, provides for a time period of

at least two months for replies to most Office actions and other notices. The Office

has certain pilot programs that are not encompassed by this requirement of the PLT

and set a time period of less than two months for reply.

2 MONTHS

(A) Requirement for restriction or election of species only (no

action on the merits) ......

MPEP §§ 809.02(a)

and

817

.

(B) When a reply by an applicant for a nonfinal Office action is

bona fide

but includes an inadvertent omission, the

examiner may set a 2 month shortened statutory time period to correct the

omission ....

MPEP §§ 710.01

and

714.03

.

(C) Winning party in a terminated interference to reply to an

unanswered Office action ......

MPEP Chapter 2300

.

Where, after the termination of an interference

proceeding, the application of the winning party contains an

unanswered Office action, final rejection or any other action, the

primary examiner notifies the applicant of this fact. In this case

reply to the Office action is required within a shortened statutory

period running from the date of such notice. See

Ex parte

Peterson,

49 USPQ 119, 1941 C.D. 8, 525 OG 3 (Comm’r Pat.

1941).

(D) To reply to an

Ex parte

Quayle

Office action .........

MPEP §

714.14

n

unanswered Office action, final rejection or any other action, the

primary examiner notifies the applicant of this fact. In this case

reply to the Office action is required within a shortened statutory

period running from the date of such notice. See

Ex parte

Peterson,

49 USPQ 119, 1941 C.D. 8, 525 OG 3 (Comm’r Pat.

1941).

(D) To reply to an

Ex parte

Quayle

Office action .........

MPEP §

714.14

.

When an application is in condition for allowance,

except as to matters of form, such as correction of the specification,

a new oath, etc., the application will be considered special and

prompt action taken to require correction of formal matters. Such

action should include an indication on the Office Action Summary form

PTOL-326 that prosecution on the merits is closed in accordance with

the decision in

Ex parte Quayle,

25 USPQ 74, 453 OG

213 (Comm’r Pat. 1935). A 2-month shortened statutory period for reply

should be set.

(E) Multiplicity rejection — no other rejection ........

MPEP §

2173.05(n)

.

3 MONTHS

To reply to any Office action on the merits.

PERIOD FOR REPLY RESTARTED

Where the citation of a reference is incorrect or an Office

action contains some other defect and this error is called to the attention of the

Office within 1 month of the mail date of the action, the Office will restart the

previously set period for reply to run from the date the error is corrected, if

requested to do so by applicant. See

MPEP § 710.06

.