Nexus Concordat
⏱️ Timing & Deadlines
Critical Time Periods for Patent Prosecution
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📬 Response Period Deadlines

Triggering Event Deadline Extendable? Authority
Non-Final Office Action 3 months from mailing ✅ Yes, up to 6 months total (fees apply) 37 CFR 1.111, 1.136
Final Office Action 3 months from mailing ✅ Yes, up to 6 months total (fees apply) 37 CFR 1.113, 1.136
Restriction Requirement Shortened statutory period (typically 1-2 months) ❌ No 37 CFR 1.144
Missing Parts Notice 2 months from notice ❌ No 37 CFR 1.53
Notice of Allowance (Issue Fee) 3 months from NOA ✅ Yes, up to 3 additional months 37 CFR 1.311
Ex Parte Quayle Action 2 months from mailing ✅ Yes 37 CFR 1.111

⚠️ Critical Rule:

If deadline falls on Saturday, Sunday, or federal holiday, extended to next business day (37 CFR 1.7). This can save an application from abandonment!

💡 Extension Fees (Small Entity):

1st month: $200 | 2nd month: $600 | 3rd month: $1,400

Large entity: Double these amounts | Micro entity: Half these amounts

📝 Filing & Priority Deadlines

Earlier Filing Deadline to Claim Priority/Benefit Authority
Provisional Application 12 months from provisional filing 35 USC § 119(e)
Foreign Application 12 months from foreign filing 35 USC § 119(a)-(d)
PCT Application (National Stage) 30 months from PCT filing (or earliest priority) 35 USC § 371
Parent Application (Continuation/Divisional) Before parent issues or goes abandoned 35 USC § 120
Reissue (Broadening) Within 2 years of patent grant 35 USC § 251
Reissue (Narrowing) Anytime during patent term 35 USC § 251

⚠️ Copendency Requirement (§ 120):

Parent and child applications must be copending for at least one day. If parent issues or abandons before child is filed, no benefit of earlier filing date. This is a strict requirement - no exceptions.

Provisional → Non-Provisional Timeline

Day 1

Provisional Filed

Specification and drawings submitted. No claims required. No examination. 12-month clock starts.

Month 11

⚠️ Warning Zone

One month remaining. Prepare non-provisional application with claims, formal drawings, oath/declaration.

Month 12

🚨 Deadline

Non-provisional must be filed. After 12 months, provisional expires. No extensions available.

Day 366+

❌ Too Late

Cannot claim benefit of provisional filing date. Provisional is abandoned. Would need to file new application with later filing date.

⚖️ Appeal Deadlines

Stage Deadline Authority
Notice of Appeal 6 months from Final Rejection 37 CFR 41.31
Appeal Brief 2 months from Notice of Appeal 37 CFR 41.37
Reply Brief (optional) 2 months from Examiner's Answer 37 CFR 41.41
Oral Hearing Request In Brief OR within 2 months of Answer 37 CFR 41.47
Appeal to Federal Circuit 63 days from PTAB decision 35 USC § 141

💡 New Ground of Rejection in Examiner's Answer:

If Examiner's Answer contains new ground of rejection, applicant has two options:

  • Option 1: Request reopening of prosecution to respond
  • Option 2: Maintain appeal and file reply brief addressing new ground

🔄 Post-Grant Review Deadlines

Proceeding When Can File Bar Date (Cannot File After) Authority
Post-Grant Review (PGR) Anytime after grant 9 months from grant 35 USC § 321
Inter Partes Review (IPR) 9 months after grant (or after PGR terminates) 1 year after served with infringement complaint 35 USC § 311
Ex Parte Reexamination Anytime during patent term Patent expiration 35 USC § 302

Post-Grant Timeline

Grant Date

Patent Issues

20-year term begins (from filing date, not grant date). Post-grant challenge periods start.

0-9 Months

PGR Window (Any Invalidity Ground)

Can challenge on §§ 101, 102, 103, 112. Broadest grounds available.

9+ Months

IPR Available (§§ 102/103 Only)

Can only challenge on novelty/obviousness based on patents and printed publications. No § 101 or § 112 challenges.

Anytime

Ex Parte Reexamination

Can file during entire patent term. Limited to §§ 102/103 based on patents/publications. Patent owner participation only (requester has minimal role).

💰 Maintenance Fee Deadlines

Fee Stage Due Date Grace Period Consequence if Not Paid
First Maintenance Fee 3.5 years after grant 6 months (with late fee surcharge) Patent expires
Second Maintenance Fee 7.5 years after grant 6 months (with late fee surcharge) Patent expires
Third Maintenance Fee 11.5 years after grant 6 months (with late fee surcharge) Patent expires

⚠️ No Maintenance Fees for Design Patents:

Design patents do NOT require maintenance fees. Only utility patents require maintenance fees at 3.5, 7.5, and 11.5 years.

💡 Revival After Non-Payment:

If maintenance fee not paid and patent expires, can petition for revival if:

  • Unintentional delay: Within 2 years of expiration (easier standard)
  • Unavoidable delay: Immediately upon discovery (harder standard, strict requirements)

🔄 Abandonment & Revival Timing

Situation When Abandonment Occurs Revival Deadline Authority
Missed Response Deadline Day after deadline expires 2 years (unintentional) or immediately (unavoidable) 37 CFR 1.137
Missed Issue Fee Payment Day after 3-month deadline (or extended deadline) expires 2 years (unintentional) or immediately (unavoidable) 37 CFR 1.137
Express Abandonment Date of express abandonment filing Generally cannot revive express abandonment 37 CFR 1.138
Failure to Prosecute After notice from USPTO + deadline passes 2 years (unintentional) or immediately (unavoidable) 37 CFR 1.137

⚠️ Unintentional vs. Unavoidable:

Unintentional (37 CFR 1.137(a)): Lower bar, 2-year window, petition fee + terminal disclaimer if revived

Unavoidable (37 CFR 1.137(b)): Higher bar (despite reasonable care), must file immediately upon discovery, petition fee required

📋 Quick Timing Reference Card

🎯 Most Critical Deadlines to Memorize:

  • 3 months: Standard response period (Office Actions)
  • 6 months max: Maximum response period with extensions
  • 12 months: Provisional → non-provisional, foreign priority
  • 30 months: PCT national stage entry
  • 6 months: Notice of Appeal deadline from Final Rejection
  • 2 months: Appeal Brief from Notice, Reply Brief from Answer
  • 63 days: Federal Circuit appeal from PTAB decision
  • 2 years: Broadening reissue window
  • 9 months: PGR filing window
  • 3.5, 7.5, 11.5 years: Maintenance fee due dates