uspto.gov
Skip over navigation

2268    Petition for Entry of Late Papers for Revival of Reexamination Proceeding [R-07.2015]

35 U.S.C. 27  Revival of applications; reinstatement of reexamination proceedings.

The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing each patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner.

35 U.S.C. 41   Patent fees; patent and trademark search systems.

  • (a) GENERAL FEES. — The Director shall charge the following fees:
    • *****
    • (7) REVIVAL FEES. — On filing each petition for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, for the delayed response by the patent owner in any reexamination proceeding, for the delayed payment of the fee for maintaining a patent in force, for the delayed submission of a priority or benefit claim, or for the extension of the 12-month period for filing a subsequent application, $1,700. The Director may refund any part of the fee specified in this paragraph, in exceptional circumstances as determined by the Director.

*****

35 U.S.C. 133   Time for prosecuting application.

Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto.

37 CFR 1.137  Revival of abandoned application, or terminated or limited reexamination prosecution.

  • (a) Revival on the basis of unintentional delay. If the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to this section to revive an abandoned application or a reexamination prosecution terminated under § 1.550(d) or § 1.957(b) or limited under § 1.957(c).
  • (b) Petition requirements. A grantable petition pursuant to this section must be accompanied by:
    • (1) The reply required to the outstanding Office action or notice, unless previously filed;
    • (2) The petition fee as set forth in § 1.17(m);
    • (3) Any terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section; and
    • (4) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

*****

  • (e) Request for reconsideration. Any request for reconsideration or review of a decision refusing to revive an abandoned application, or a terminated or limited reexamination prosecution, upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under:
    • (1) The provisions of § 1.136 for an abandoned application;
    • (2) The provisions of § 1.550(c) for a terminated ex parte reexamination prosecution, where the ex parte reexamination was filed under § 1.510; or
    • (3) The provisions of § 1.956 for a terminated inter partes reexamination prosecution or an inter partes reexamination limited as to further prosecution, where the inter partes reexamination was filed under § 1.913.

*****

Pursuant to 37 CFR 1.550(d), the prosecution of an ex parte reexamination proceeding is terminated if the patent owner fails to file a timely and appropriate response to any Office action or any written statement of an interview required under 37 CFR 1.560(b). An ex parte reexamination prosecution terminated under 37 CFR 1.550(d) can be revived if the delay in response by the patent owner (or the failure to timely file the interview statement) was unintentional in accordance with 37 CFR 1.137 .

The failure to timely file a statement pursuant to 37 CFR 1.530 or a reply pursuant to 37 CFR 1.535, however, would not (under ordinary circumstances) constitute adequate basis to justify a showing of unintentional delay regardless of the reasons for the failure, since failure to file a statement or reply does not result in a “termination” of the reexamination prosecution, to which 37 CFR 1.137 is directed.

All petitions in reexamination proceedings to accept late papers and to revive the proceedings will be decided in the Office of Patent Legal Administration.

I.PETITION BASED ON UNAVOIDABLE DELAY IS NO LONGER AVAILABLE

37 CFR 1.137 was revised to implement the changes in the Patent Law Treaties Implementation Act of 2012 (PLTIA) to eliminate revival of an abandoned application and reexamination prosecution terminated under § 1.550(d) under the ‘‘unavoidable’’ standard, and to provide for the revival of abandoned applications and the acceptance of delayed responses in reexamination by patent owners on the basis of unintentional delay. Specifically, section 201(b) of the PLTIA added new 35 U.S.C. 27, which provides that the Director may establish procedures to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing a patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner. Accordingly, 37 CFR 1.137(a) was amended to eliminate the provisions pertaining to petitions on the basis of unavoidable delay. These changes were effective on December 18, 2013 and apply to all any patent application filed before, on, or after December 18, 2013, to any patent resulting from an application filed before, on, or after December 18, 2013, to any reexamination proceeding filed before, on, or after December 18, 2013, and to any reexamination proceeding resulting from a supplemental examination proceeding filed before, on, or after December 18, 2013.

II.PETITION BASED ON UNINTENTIONAL DELAY

As discussed in paragraph I above, section 201(b) of the PLTIA added new 35 U.S.C. 27, which provides that the Director may establish procedures to accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the patent owner. The patent laws formerly provided for revival of an unintentionally abandoned application only in the patent fee provisions of 35 U.S.C. 41(a)(7). See Public Law 97–247, section 3(a), 96 Stat. 317–18 (1982). The unintentional delay fee provisions of 35 U.S.C. 41(a)(7) were imported into, and were applicable to, all ex parte reexamination proceedings by section 4605 of the American Inventors Protection Act of 1999. The unintentional delay provisions of 35 U.S.C. 41(a)(7) became effective in reexamination proceedings on November 29, 2000. However, this statutory structure raised questions concerning the Office’s authority to revive an unintentionally abandoned application (without a showing of unavoidable delay) in certain situations. See e.g., Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 543 F.3d 657 (Fed. Cir. 2008).

37 CFR 1.137(a), as amended in the final rule to implement the PLTIA, provides that if the delay in reply by patent owner was unintentional, a petition may be filed pursuant to 37 CFR 1.137 to revive a reexamination prosecution terminated under 37 CFR 1.550(d). 37 CFR 1.137(b) states the petition requirements. Specifically, for ex parte reexamination proceedings, 37 CFR 1.137(b) provides that a grantable petition pursuant to 37 CFR 1.137 must be accompanied by: (1) The reply required to the outstanding Office action or notice, unless previously filed; (2) the petition fee as set forth in 37 CFR 1.17(m); and (3) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. 37 CFR 1.137 continues to provide that the Director may require additional information where there is a question whether the delay was unintentional.

III.RENEWED PETITION

Reconsideration may be requested of a decision dismissing or denying a petition under 37 CFR 1.137 to revive a terminated reexamination prosecution. The request for reconsideration must be submitted within two months from the mail date of the decision for which reconsideration is requested. An extension of time may be requested only under 37 CFR 1.550(c); extensions of time under 37 CFR 1.136 are not available in reexamination proceedings. The extension of time provisions of 37 CFR 1.550(c) also apply to any request for an extension filed in a reexamination proceeding ordered under 35 U.S.C. 257 as a result of a supplemental examination proceeding. Any reconsideration request which is submitted should include a cover letter entitled “Renewed Petition under 37 CFR 1.137”.

IV.FURTHER DISCUSSION OF THE PETITION REQUIREMENTS

See also MPEP § 711.03(c) for a detailed discussion of the requirements of petitions filed under 37 CFR 1.137.

[top]

 

United States Patent and Trademark Office
This page is owned by Patents.
Last Modified: 11/04/2015 11:01:46