June's advice article

Unintentional Abandonment

Did you miss the deadline for responding to an office action or pay a maintenance fee? Don't despair; you've got options.

At the United States Patent and Trademark Office (USPTO), we often speak with applicants on the telephone. Occasionally we hear, "Oh no, I missed the deadline for responding to an office action. Is the application considered abandoned?" To this, we unfortunately will have to respond with "Yes, see the Manual of Patent Examining Procedure, section 711.03(c)." While applicants often purposely abandon their applications, sometimes they don't mean to. Thankfully, they have options in this case, and their next question is "What can I do?"

Before December 18, 2013, applicants who missed the deadline for responding to an office action but wanted to continue prosecuting their application would have filed a petition to the Commissioner for Patents requesting that the application be reinstated and pay the applicable fee. Sounds simple enough; however, there were two different petitions that could be filed. The first one was a petition under the "unavoidable" standard, and the second was a petition under the "unintentional" standard. The two petitions are similar but have very different standards. The unavoidable standard was less expensive, but the showing to be made was more rigorous. Thus very few of these were granted. The unintentional standard was less rigorous and thus easier to get approved, but it was more expensive.

On December 18, 2013, changes to the law eliminated the unavoidable standard. But the process for getting an application reinstated has been simplified, and the great news for independent inventors is that fees have been reduced. The America Invents Act of 2011 gave the USPTO the ability to set its own fees. As a result, the USPTO lowered the cost for petitioning to revive an abandoned application. For someone filing as a small or a micro-entity, the petition filing fee is less than the old unintentional standard petition fee. The current fee schedule should always be consulted to ensure that petitioners are submitting the proper fees. To make the process even easier, we created an electronic petition, or e-Petition, a Web-based form that allows filers to enter the relevant data and, in most circumstances, get a decision as soon as they press the submit button. Note that users must be registered EFS-Web filers to make use of e-Petition.

Additionally, the standard for reinstatement of a patent for failure to pay a maintenance fee has also changed. Similar to the petition for revival, there is now only one standard for reinstating a patent: the unintentional standard with a lower fee for small and micro-entity filers. Yes, there is an e-Petition for this situation as well.

While missing a deadline for responding to an office action or paying a maintenance fee is frustrating, the solution for getting back on track is now easier and more-affordable for independent inventors. If you unfortunately find yourself in this situation, you can give us a call at 800-786-9199 to discuss the matter further.

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The USPTO gives you useful information and non-legal advice in the areas of patents and trademarks. The patent and trademark statutes and regulations should be consulted before attempting to apply for a patent or register a trademark. These laws and the application process can be complicated. If you have intellectual property that could be patented or registered as a trademark, the use of an attorney or agent who is qualified to represent you in the USPTO is advised.