07 - Withdrawal of abandonment based on evidence that a reply was timely mailed or filed

Deciding Office:  Office of Petitions

The criteria for a grantable petition requesting withdrawal of abandonment based on evidence that a reply was timely mailed or filed is set forth in MPEP § 711.03(c)(I)(B). The petition should be filed under 37 CFR 1.181.

In general, these are the steps to follow when filing a petition requesting withdrawal of abandonment based on evidence that a reply was timely mailed or filed:

  • A petition to withdraw the holding of abandonment based on evidence that a reply was timely mailed or filed, must be accompanied by a showing to establish that applicant did, in fact, timely file a response to the outstanding office action. The showing must consist of the following:

(1) a statement from applicant or practitioner attesting to the fact that a reply to the outstanding office action was, in fact, filed or mailed by applicant;

(2) an exact copy of the reply that was filed including each item that was filed with the reply, a statement from the applicant or practitioner attesting to the fact that such exact copy is a complete copy of the filed or mailed reply; and

(3) a copy of any evidence, documentary or otherwise, that supports the conclusion that a reply was filed or mailed. This documentary evidence may include, but is not limited to,

  • copies of any mailing logs that are typically maintained by the person who filed or mailed the reply showing where the subject reply was entered at the time it was being filed or mailed,
  • a copy of any mailing label used to file or mail the subject reply,
  • an itemized certificate of mailing in compliance with 37 CFR 1.8(a),
  • a properly itemized return receipt postcard date stamped by the United States Patent and Trademark Office that sufficiently identifies the items being filed, or
  • a copy of the acknowledgement receipt, in the event the reply was filed via EFS-Web.

Further information concerning the use and content of return receipt postcards or EFS-Web acknowledgement receipts may be obtained by consulting MPEP §§ 503, and 502.05.

Fees:

No fee is required for filing a petition requesting withdrawal of abandonment based on failure to receive an office action.

How to file: 

This petition may be filed using any of these delivery methods.

For the relevant patent laws and rules applicable to withdrawal of abandonment based on evidence that a reply was timely mailed or filed, please see:

  • 37 CFR 1.181, Petition to the Director;
  • 37 CFR 1.8(a) and (b), Certificate of mailing or transmission
  • MPEP § 512, Certificate of mailing or transmission
  • 37 CFR 1.10(c) through 1 .10(e) and 1 .10(g) set forth procedures for petitioning the Director of the USPTO to accord a filing date to correspondence as of the date of deposit of the correspondence as Priority Mail Express®
  • MPEP § 513Deposit as Priority Mail Express® with U.S. Postal Service
  • MPEP § 502.05, Correspondence transmitted by EFS-Web;
  • MPEP § 503, Application number and filing receipt; and
  • MPEP § 711.03(c), Petitions relating to abandonment.

Forms: 

No form available.  Submit a signed request that includes information listed in Requirements of a petition.

For further assistance, please contact the Petitions Help Desk between 8:30 AM - 5 PM (EDT).