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|Top of Notices (266) December 27, 2011||US PATENT AND TRADEMARK OFFICE||Print This Notice 1373 CNOG 1258|
|Periods||Referenced Items (262, 263, 264, 265, 266)|
(266) Diligence in Filing Petitions to Revive and Petitions to Withdraw the Holding of Abandonment Once an application becomes inadvertently abandoned, it is incumbent on applicant to act with diligence in providing the response necessary to continue prosecution. Petitions to revive or to withdraw the holding of abandonment must be filed promptly after applicant is notified or otherwise becomes aware of the abandonment. Unless and until the Commissioner accepts applicant's response as sufficient and complete to revive the application or to withdraw the holding of abandonment, the application remains abandoned and the burden continues to rest with applicant to exercise diligence. Some practitioners have demonstrated a lack of diligence in filing or renewing a petition to revive or a petition to withdraw the holding of abandonment. This appears to have been a conscious decision on the practitioners' part based on the belief that any delay in filing or renewing a petition could be cured by filing a terminal disclaimer equivalent to the period of delay in prosecuting the application. While the Office does have a policy of requiring a terminal disclaimer in those situations where there has been a delay of more than six months in filing a grantable petition to revive an application that has become abandoned [37 CFR 1.137(c), 1.316(d) and 1.317(c)], the terminal disclaimer has never been authorized or set forth in the rules as a substitute for diligence. Indeed, such an interpretation would be contrary to the traditional concept of reasonable diligence and is contrary to the explicit requirement of 37 CFR 1.137(a), 1.155(b), 1.181(f), 1.316(b) and 1.137(b) that a petition to revive be filed promptly. See In re Application of Takao, 17 USPQ2d 1155 (Comm'r. 1990). JAMES E. DENNY Assistant Commissioner for Patents-designate [1124 OG 23]