The United States Patent & Trademark Office (USPTO) announced a substantial change in timing rules beginning December 3, 2022. Instead of the six months allowed under the current rules, applicants will now have three months to respond to an office action issued during examination, with a possible extension of an additional three months upon the payment of a fee.

According to the USPTO, the intention is to decrease the time it takes to get and maintain a registration while providing “the flexibility to request additional time to respond to more complex office actions.” Critically, the $125 extension fee must be paid at the three-month deadline, which is a departure from typical practice, where extension fees are generally paid at the time of filing the response.

There are advantages and disadvantages to this change. It should hopefully result in faster resolution of applications and provide applicants with greater clarity earlier in the process. It also hopefully helps to address the recent pronounced increase in applications that are causing delays at the USPTO. Under the current rules, suspended applications can take years to resolve. This change should be particularly helpful in speeding the examination of applications that are suspended on the basis of other pending applications.

However, applicants and their IP attorneys will need to adjust to this halving of the response time and be diligent in more rapidly making strategic decisions about how to proceed with their applications, particularly because of the necessity of requesting the extension at the three-month deadline.

As always, the Dentons team will remain cognizant of approaching deadlines and will continue to follow up with clients as deadlines approach.