PTAB Strategies and Insights - June 2020: Purposely Picking Weekend or Holiday When Stipulating to New Due Dates May Void Next Business Day Rule

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Different Board panels have made inconsistent decisions on the next-business day rule under 35 U.S.C. § 21(b); 37 C.F.R. § 1.7 depending on whether the due date is statutory or stipulated by the parties.

For example, when the due date is a statutory bar date, the Board has more often than not adhered to the next business day rule. See, e.g., IPR2018-01468, Institution Decision, Paper 10, 13-19. In Samsung Petitioner filed the Petition on a Monday when the § 315(b) bar date was a Saturday. The Board held “§ 21(b)’s provisions regarding due dates for taking ‘any action’ before the PTO include the timing of filing petitions for inter partes review, and nothing in the Patent Act suggests that the filing of such petitions is exempt from the provisions of § 21(b)” and that “§ 21(b) creates a statutory grace period that applies to ‘any action’ in the PTO.” Id., 17-18.

In contrast, at least one panel found that when the due date was a date chosen by a party and submitted as a stipulation to move due dates during trial, the next business day rule did not apply. See IPR2014-00233, Final Written Decision, Paper 56, 42-44. The Board discussed that because the Board chose a day after Martin Luther King, Jr. Day for a due date and the parties stipulated to change the due date to fall on that holiday a late filing was not allowed. Id. The Board held “[w]e understand that the [§21(b)] statute applies to deadlines set by statute, rule or order; not to different dates stipulated to by the parties. Similarly, under 37 C.F.R. § 1.7(a), when a deadline falls on a Federal holiday, action may be taken ‘on the next succeeding business day.’ Section 1.7, however, applies to deadlines ‘fixed by statute or by or under this part’ of this chapter. See 37 C.F.R. § 42.1(a) (‘[Section 1.7] of this chapter also appl[ies] to proceedings before the Board, as do other sections of part 1 of this chapter that are incorporated by reference into this part.’)… Within these limits, the Board observes stipulated dates, and stipulated dates are binding on the parties by their agreement.” Id.

So be aware when choosing stipulated due dates that you may not get to take advantage of the next business day rule if you choose a weekend or holiday.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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