Recently in a discussion with another Pittsburgh IP lawyer an issue arose regarding how many months of extension can be requested when responding to a Notice of Missing Parts in a Patent Application. The Notice of Missing Parts gives a two month response deadline and indicates Extensions of Time can be filed under 37 CFR 1.136. 37 CFR 1.136 allows for up to 5 months of extension. The five month extension plus the two months allowed to respond will give a total of 7 months to respond the Notice of Missing Parts.
35 U.S.C. 133 indicates that an Applicant must respond to an Office Action within 6 months. The 6 month limit creates a question. Can you file a 5 month extension or are you limited to 4 months so that you do not exceed the 6 month requirement?
Fortunately, The Manual of Patent Examination Procedure addresses this issue in 710.02(d) Difference Between Shortened Statutory Periods for Reply and Specified Time Limits. “The 2-month time period for reply to A Notice to File Missing Parts of an Application is not identified on the Notice as a statutory period subject to 35 U.S.C. 133. Thus, extensions of time of up to 5 months under 37 CFR 1.136(a), followed by additional time under 37 CFR 1.136(b), when appropriate, are permitted.”