1108.01 Time for Filing Requests for Extensions of Time to File the Statement of Use
Under 15 U.S.C. §1051(d), the applicant must file an extension request within six months of the issuance date of the notice of allowance, or before the expiration of a previously granted extension; otherwise the application is abandoned. 15 U.S.C. §1051(d)(4); 37 C.F.R. §§2.65(c), 2.88(k), 2.89(a)–(b).
Extensions of time are granted in six-month increments. 37 C.F.R. §2.89(a)-(c). Only one extension request may be filed in each six-month extension period that has been granted. See id. The first extension request must be filed within six months of the date the notice of allowance issued. 37 C.F.R. §2.89(a). The second and subsequent extension requests must be filed before the expiration of the previously granted extension period. 37 C.F.R. §2.89(b). The total time available for filing the statement of use may not be extended beyond thirty-six months from the issuance date of the notice of allowance. 15 U.S.C. §§1051(d)(1)–1051(d)(2); 37 C.F.R. §2.89(e)(1). If a statement of use is not filed by the end of thirty-six months, the application will be abandoned and cannot be revived. See 37 C.F.R. §2.88(k).
One extension request may be filed with or after a statement of use is filed (sometimes called an "insurance" extension request), if there is time remaining in the existing six-month period during which the statement of use was filed. 37 C.F.R. §2.89(e). Granting the extension request may not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. 37 C.F.R. §2.89(e)(1). See TMEP §1108.03 regarding filing an "insurance" extension request.
An applicant will receive the full benefit of each extension period before a subsequent extension period will begin to run. The six-month period following the issuance of the notice of allowance, or any subsequent six-month extension period, will not be cut short by the grant of an extension request. No extension will be granted for more than six months. 37 C.F.R. §2.89(a), (c).
Example: The following table presents an example of the complete timeline for filing five extension requests that meet the requirements of 15 U.S.C. §1051(d) and 37 C.F.R. §2.89.
| Document | Issue/Filing Date | Period Covered |
|---|---|---|
| Notice of allowance | Issued June 7, 2010 | Through December 7, 2010 (1st 6 months provided by statute) |
| First extension request | File from June 8, 2010 through December 7, 2010 | Through June 7, 2011 |
| Second extension request | File from December 8, 2010 through June 7, 2011 | Through December 7, 2011 |
| Third extension request | File from June 8, 2011 through December 7, 2011 | Through June 7, 2012 |
| Fourth extension request | File from December 8, 2011 through June 7, 2012 | Through December 7, 2012 |
| Fifth and last extension request | File from June 8, 2012 through December 7, 2012 | Through June 7, 2013 |
| Statement of use | File from December 7, 2012 through June 7, 2013 | N/A |
The USPTO will notify the applicant of the grant or denial of an extension request, and of the reasons for a denial. However, failure to notify the applicant of the grant or denial of an extension request before the expiration of the requested extension does not relieve the applicant of the duty to file a statement of use or further extension request. 37 C.F.R. §2.89(g).
Under 37 C.F.R. §2.195(a)(2), an extension request filed through TEAS is considered to have been filed on the date the USPTO receives the transmission (Eastern Time), regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. When an extension request is filed electronically, TEAS almost immediately displays a "Success" page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the extension request, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.
A paper extension request is considered timely if it is received in the USPTO by the due date or mailed or transmitted by the due date with a certificate of mailing or facsimile transmission under 37 C.F.R. §2.197. See TMEP §§305.02–305.02(h) and §§306.05–306.05(d) for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.