711 Abandonment of Patent Application [R-07.2015]
37 CFR 1.135 Abandonment for failure to reply within time period.
- (a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the application will become abandoned unless an Office action indicates otherwise.
- (b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
- (c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.
37 CFR 1.138 Express abandonment.
- (a) An application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office. Express abandonment of the application may not be recognized by the Office before the date of issue or publication unless it is actually received by appropriate officials in time to act.
- (b) A written declaration of abandonment must be signed by a party authorized under § 1.33(b)(1) or (b)(3) to sign a paper in the application, except as otherwise provided in this paragraph. A registered attorney or agent, not of record, who acts in a representative capacity under the provisions of § 1.34 when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application.
- (c) An applicant seeking to abandon an application to avoid publication of the application (see § 1.211(a)(1)) must submit a declaration of express abandonment by way of a petition under this section including the fee set forth in § 1.17(h) in sufficient time to permit the appropriate officials to recognize the abandonment and remove the application from the publication process. Applicant should expect that the petition will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication.
Abandonment may be either of the invention or of an application. This discussion is concerned with abandonment of the application for patent.
An abandoned application, in accordance with 37 CFR 1.135 and 1.138, is one which is removed from the Office docket of pending applications through:
- (A) formal abandonment
- (1) by the applicant,
- (2) by the attorney or agent of record , or
- (3) by a registered attorney or agent acting in a representative capacity under 37 CFR 1.34 when filing a continuing application; or
- (B) failure of applicant to take appropriate action within a specified time at some stage in the prosecution of the application.
711.01 Express or Formal Abandonment [R-07.2022]
The applicant or the attorney/agent of record, if any, can sign an express abandonment. It is imperative that the attorney or agent of record exercise every precaution in ascertaining that the abandonment of the application is in accordance with the desires and best interests of the applicant prior to signing a letter of express abandonment of a patent application. Moreover, special care should be taken to ensure that the appropriate application is correctly identified in the letter of abandonment.
A letter of abandonment properly signed becomes effective when an appropriate official of the Office takes action thereon. When so recognized, the date of abandonment may be the date of recognition or a later date if so specified in the letter itself. For example, where a continuing application is filed with a request to abandon the prior application as of the filing date accorded the continuing application, the date of the abandonment of the prior application will be in accordance with the request once it is recognized.
A letter of express abandonment or a petition under 37 CFR 1.138(c) for express abandonment to avoid publication of the application (see 37 CFR 1.211(a)(1)) accompanied by the petition fee set forth in 37 CFR 1.17(h) may be:
- (A) mailed to Mail Stop Express Abandonment, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450; or
- (B) filed electronically using EFS-Web.
Since a petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized and acted on by the Pre-Grant Publication Division in sufficient time to avoid publication, applicants should transmit the petition electronically using EFS-Web in all instances where the projected publication date is less than 3 months from the date of the petition. This will increase the chance of such petition being received by the appropriate officials in sufficient time to recognize the abandonment and remove the application from the publication process. If the issue fee has been paid, the letter of express abandonment should be directed to the Office of Petitions instead of the Pre-Grant Publication Division and be accompanied by a petition to withdraw an application from issue under 37 CFR 1.313(c). See subsection “I. After Payment of Issue Fee.”
Action in recognition of an express abandonment may take the form of an acknowledgment by the Publishing Division of the receipt of the express abandonment, indicating that it is in compliance with 37 CFR 1.138.
It is suggested that divisional applications be reviewed before filing to ascertain whether the prior application should be abandoned. Care should be exercised in situations such as these as the Office looks on express abandonments as acts of deliberation, intentionally performed.
Applications may be expressly abandoned as provided for in 37 CFR 1.138. When a letter expressly abandoning an application (not in issue) is received, the Office should acknowledge receipt thereof, and indicate whether it does or does not comply with the requirements of 37 CFR 1.138.
The filing of a request for a continued prosecution application (CPA) under 37 CFR 1.53(d) in a design application is considered to be a request to expressly abandon the prior application as of the filing date granted the continuing application.
If the letter expressly abandoning the application does comply with 37 CFR 1.138, the Office personnel should respond by using a “Notice of Abandonment” form PTO-1432, and by checking the appropriate box(es). If such a letter does not comply with the requirements of 37 CFR 1.138, a fully explanatory letter should be sent.
A letter of express abandonment which is not timely filed (because it was not filed within the period for reply), is not acceptable to expressly abandon the application. The letter of express abandonment should be placed in the application file but not formally entered.
The application should be pulled for abandonment after expiration of the maximum permitted period for reply (see MPEP § 711.04(a)) and applicant notified of the abandonment for failure to reply within the statutory period. See MPEP §§ 711.02 and 711.04(c).
An amendment canceling all of the claims is not an express abandonment. The Office will not enter any amendment that would cancel all of the claims in an application without presenting any new or substitute claims. See Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001). Such an amendment is regarded as nonresponsive and is not a bona fide attempt to advance the application to final action. The practice set forth in 37 CFR 1.135(c) does not apply to such amendment. Applicant should be notified as explained in MPEP §§ 714.03 to 714.05.
An attorney or agent not of record in an application may file a withdrawal of an appeal under 37 CFR 1.34 except in those instances where such withdrawal would result in abandonment of the application. In such instances the withdrawal of appeal is in fact an express abandonment.
I. AFTER PAYMENT OF ISSUE FEEIf a letter of express abandonment is being submitted in an allowed application after the payment of the issue fee, the express abandonment must be accompanied by a petition to withdraw from issue under 37 CFR 1.313(c) and the fee set forth in 37 CFR 1.17(h). Also see MPEP § 1308. The express abandonment may not be recognized by the Office unless it is actually received by appropriate officials in time to withdraw the application from issue. A petition under 37 CFR 1.313 will not be effective to withdraw the application from issue unless it is actually received and granted by the appropriate official before the date of issue. After the issue fee has been paid, the application will not be withdrawn upon petition by the applicant for any reason except those reasons listed in 37 CFR 1.313(c), which include express abandonment of the application. An application may be withdrawn from issue for express abandonment of the application in favor of a continuing application. The petition under 37 CFR 1.313(c) accompanied by the petition fee should be addressed to the Office of Petitions. If the petition and the letter of abandonment are received by appropriate officials in sufficient time to act on the petition and remove the application from the issue process, the letter of abandonment will be acknowledged by the Office of Data Management after the petition is granted. Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be:
- (A) mailed to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450;
- (B) transmitted by facsimile transmission to (571) 273-0025; or
- (C) hand-carried to the Office of Petitions, Madison West, 7th Floor, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call the Office of Petitions at (571) 272-3282 for delivery assistance; or
- (D) submitted electronically by EFS-Web.
Applicants are strongly encouraged to either transmit by EFS-Web, or facsimile or hand-carry the petition to the Office of Petitions to allow sufficient time to process the petition and if the petition can be granted, withdraw the application from issue.
See MPEP §§ 711.05 and 1308. In cases where 37 CFR 1.313 precludes giving effect to an express abandonment, the appropriate remedy is a petition, with fee, under 37 CFR 1.183, showing an extraordinary situation where justice requires suspension of 37 CFR 1.313.
II. TO AVOID PUBLICATION OF APPLICATIONA petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized and acted on by the Pre-Grant Publication Division in sufficient time to avoid publication. The petition will be granted when it is recognized in sufficient time to avoid publication of the application. The petition will be denied when it is not recognized in time to avoid publication. Generally, a petition under 37 CFR 1.138(c) will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication. It is unlikely that a petition filed within four weeks of the projected date of publication will be effective to avoid publication. Also note that withdrawal of an application from issue after payment of the issue fee may not be effective to avoid publication of an application under 35 U.S.C. 122(b). See 37 CFR 1.313(d).
III. TO OBTAIN REFUND OF SEARCH FEE AND EXCESS CLAIMS FEE37 CFR 1.138 Express abandonment.
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- (d) An applicant seeking to abandon an application filed under 35 U.S.C. 111(a) and § 1.53(b) on or after December 8, 2004, to obtain a refund of the search fee and excess claims fee paid in the application, must submit a declaration of express abandonment by way of a petition under this paragraph before an examination has been made of the application. The date indicated on any certificate of mailing or transmission under § 1.8 will not be taken into account in determining whether a petition under § 1.138(d) was filed before an examination has been made of the application. If a request for refund of the search fee and excess claims fee paid in the application is not filed with the declaration of express abandonment under this paragraph or within two months from the date on which the declaration of express abandonment under this paragraph was filed, the Office may retain the entire search fee and excess claims fee paid in the application. This two-month period is not extendable. If a petition and declaration of express abandonment under this paragraph are not filed before an examination has been made of the application, the Office will not refund any part of the search fee and excess claims fee paid in the application except as provided in § 1.26.
As provided in 37 CFR 1.138(d), refund of the search fee and excess claims fee paid in an application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) on or after December 8, 2004 may be obtained by submitting a petition and declaration of express abandonment before an examination has been made of the application.
A petition under 37 CFR 1.138(d) will be granted if it was filed before an examination has been made of the application and will be denied if it was not filed before an examination has been made of the application. This averts the situation in which an applicant files a declaration of express abandonment to obtain a refund of the search fee and excess claims fee, the request for a refund is not granted because the declaration of express abandonment was not filed before an examination has been made of the application, the applicant then wishes to rescind the declaration of express abandonment upon learning that the declaration of express abandonment was not filed before an examination has been made of the application, and the Office cannot revive the application (once the declaration of express abandonment is recognized) because the application was expressly and intentionally abandoned by the applicant.
An “examination has been made of the application” for purposes of 37 CFR 1.138(d) once an action (e.g., restriction or election of species requirement, requirement for information under 37 CFR 1.105, first Office action on the merits, notice of allowability or notice of allowance, or action under Ex parte Quayle, 1935 Dec. Comm’r Pat. 11 (1935)) is shown in the One Patent Service Gateway as having been counted. For purposes of 37 CFR 1.138(d), “before” means occurring earlier in time, in that if a petition under 37 CFR 1.138(d) is filed and an action is counted on the same day, the petition under 37 CFR 1.138(d) was not filed before an examination has been made of the application. In addition, the date indicated on any certificate of mailing or transmission under 37 CFR 1.8 is not taken into account in determining whether a petition under 37 CFR 1.138(d) was filed before an examination has been made of the application.
The Patent Data Portal (PDP) system maintains computerized contents records of all patent applications and reexamination proceedings. The PDP system will show a status higher than 031 once an action has been counted. If the status of an application as shown in PDP is higher than 031 before or on the day that the petition under 37 CFR 1.138(d) was filed, the petition under 37 CFR 1.138(d) will be denied and the search fee and excess claims fee will not be refunded except as provided in 37 CFR 1.26.
A petition under 37 CFR 1.138(d) may not be effective to stop publication of an application unless the petition under 37 CFR 1.138(d) is granted and the abandonment processed before technical preparations for publication of the application has begun. Technical preparations for publication of an application generally begin four months prior to the projected date of publication.
The Office recommends that petitions under 37 CFR 1.138(d) be submitted by EFS-Web. The use of form PTO/SB/24B (or PTO/AIA/24B), reproduced in MPEP § 711.01, subsection V., is recommended.
IV. APPLICATION IN INTERFERENCEAn express abandonment pursuant to 37 CFR 1.138 of an application involved in an interference under pre-AIA 35 U.S.C. 135 is considered an abandonment of the contest and it is construed as a request for entry of an adverse judgment against the applicant. See 37 CFR 41.127(b)(4).
V. FORMS FOR FILING EXPRESS ABANDONMENTForm PTO/AIA/24 (or PTO/SB/24 for applications filed before September 16, 2012) may be used for filing a letter of express abandonment or a letter of express abandonment in favor of a continuing application. Form PTO/AIA/24A (or PTO/SB/24A for applications filed before September 16, 2012) may be used for filing a petition for express abandonment under 37 CFR 1.138(c) to avoid publication of the application. Form PTO/AIA/24B (or PTO/SB/24B for applications filed before September 16, 2012) may be used for filing a petition for express abandonment under 37 CFR 1.138(d) to obtain a refund of the search fee and excess claims fee.
711.02 Failure To Take Required Action During Statutory Period [R-07.2022]
37 CFR 1.135(a) specifies that an application becomes abandoned if applicant “fails to reply” to an Office action within the fixed statutory period. This failure may result either from (A) failure to reply within the statutory period, or (B) insufficiency of reply, i.e., failure to file a “complete and proper reply, as the condition of the case may require” within the statutory period (37 CFR 1.135(b)).
To determine if an application is abandoned, it is essential that the examiner know the dates that mark the beginning and end of the statutory period under varying situations. Applicant’s reply must be considered timely filed within the set shortened statutory period for reply, or full statutory period for reply if applicable, dating from the notification or mail date on the Office letter or within the extended time period obtained under 37 CFR 1.136. See MPEP §§ 512, 513, and 710et seq. See MPEP § 711.04(a) for examples to illustrate the expiration of the shortened statutory period and corresponding date the abandonment in different situations.
When an amendment is filed after the expiration of the statutory period and is not considered timely under 35 U.S.C. 21 and 37 CFR 1.7, the application is abandoned and the remedy is to petition to revive it. The examiner should notify the applicant or the applicant's attorney or agent of record at once with notification that the application has been abandoned by using Notice of Abandonment form PTOL-1432. The proper boxes on the form should be checked and the blanks for the dates of the proposed amendment and the Office action completed. The late amendment is placed in the file wrapper but not formally entered. See MPEP § 714.17.
Form paragraph 7.90 or 7.98.02 may also be used.
¶ 7.90 Abandonment, Failure to Reply
This application is abandoned in view of applicant’s failure to submit a proper reply to the Office action mailed on [1] within the required period for reply.
Examiner Note:
- 1. A letter of abandonment should not be mailed until after the period for requesting an extension of time under 37 CFR 1.136(a) has expired.
- 2. In pro se cases see form paragraph 7.98.02.
¶ 7.98.02 Reply Is Late, Petition To Revive Suggested, Pro Se
Applicant’s reply to the Office Action of [1] was received in the Patent and Trademark Office on [2], which is after the expiration of the period for reply set in the last Office Action. Since no time remains for applicant to obtain an extension of the period for reply by filing a petition under 37 CFR 1.136(a), this application is abandoned. Applicant is advised that the abandonment of this application may only be overcome by filing a petition to revive under 37 CFR 1.137. A petition to revive may be appropriate if applicant’s failure to reply was unintentional, as set forth below.
A petition to revive an abandoned application on the grounds that the failure to reply was unintentional (37 CFR 1.137) must be accompanied by: (1) the required reply (which has been filed); (2) 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 37 CFR 1.137 was unintentional; (3) any terminal disclaimer required pursuant to 37 CFR 1.137(d); and (4) the $[3] petition fee as set forth in 37 CFR 1.17(m). No consideration to the substance of a petition will be given until this fee is received. The Director may require additional information where there is a question whether the delay was unintentional.
The required items and fees must be submitted promptly under a cover letter entitled “Petition to Revive.”
Further correspondence with respect to this matter should be addressed as follows:
By mail:
Mail Stop Petition
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX:
571-273-8300
Attn: Office of PetitionsTelephone inquiries with respect to this matter should be directed to the Office of Petitions Staff at (571) 272-3282. For more detailed information, see MPEP § 711.03(c).
For a petition to withdraw a holding of abandonment based upon failure to receive an Office action, see MPEP § 711.03(c).
711.02(a) Insufficiency of Reply [R-08.2012]
Abandonment may result from a situation where applicant’s reply is within the period for reply but is not fully responsive to the Office action. But see MPEP § 710.02(c). See also MPEP § 714.02 to § 714.04.
¶ 7.91 Reply Is Not Fully Responsive, Extension of Time Suggested
The reply filed on [1] is not fully responsive to the prior Office action because: [2]. Since the period for reply set forth in the prior Office action has expired, this application will become abandoned unless applicant corrects the deficiency and obtains an extension of time under 37 CFR 1.136(a).
The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. In no case may an applicant reply outside the SIX (6) MONTH statutory period or obtain an extension for more than FIVE (5) MONTHS beyond the date for reply set forth in an Office action. A fully responsive reply must be timely filed to avoid abandonment of this application.
Examiner Note:
- 1. In bracket 2, set forth why the examiner considers there to be a failure to take “complete and proper action” within the statutory period.
- 2. If the reply appears to be a bona fide attempt to respond with an inadvertent omission, do not use this form paragraph; instead use form paragraph 7.95.
711.02(b) Special Situations Involving Abandonment [R-07.2015]
The following situations involving questions of abandonment often arise, and should be specially noted:
- (A) Copying claims from a patent when not suggested by the U.S. Patent and Trademark Office does not constitute a reply to the last Office action and will not save the application from abandonment, unless the last Office action relied solely on the patent for the rejection of all the claims rejected in that action.
- (B) An application may become abandoned through withdrawal of, or failure to prosecute, an appeal to the Patent Trial and Appeal Board. See MPEP §§ 1215.01 to 1215.04.
- (C) An application may become abandoned through dismissal of appeal to the Court of Appeals for the Federal Circuit or civil action, where there was not filed prior to such dismissal an amendment putting the application in condition for issue or fully responsive to the Board’s decision. Abandonment results from failure to perfect an appeal as required by the Court of Appeals for the Federal Circuit. See MPEP §§ 1215.04 and 1216.01.
- (D) Where claims are suggested for interference near the end of the period for reply running against the application. See MPEP Chapter 2300.
- (E) Where a continued prosecution application (CPA) under 37 CFR 1.53(d) is filed. See MPEP §§ 201.06(d) and 711.01.
- (F) Prior to a decision by the Board, an application on appeal that has no allowed claims may become abandoned when a Request for Continued Examination (RCE) is improperly filed without the appropriate fee or a submission (37 CFR 1.114(d)) in the application. The filing of an RCE will be treated as a withdrawal of the appeal by the applicant. See MPEP § 706.07(h), subsection X.
- (G) When a reply to a final Office action is outstanding, an application may become abandoned if an RCE is filed without a timely submission that meets the reply requirements of 37 CFR 1.111. The filing of an improper RCE will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application. See MPEP § 706.07(h), subsection VI.
- (H) Prior to payment of the issue fee, an allowed application may become abandoned if an RCE is improperly filed without the appropriate fee or a submission in the application. The improper RCE will not operate to toll the running of the time period for payment of the issue fee. See MPEP § 706.07(h), subsection IX.
711.02(c) Termination of Proceedings [R-11.2013]
“Termination of proceedings” is an expression found in 35 U.S.C. 120. As there stated, a second application is considered to be copending with an earlier application if it is filed before
- (A) the patenting,
- (B) the abandonment of, or
- (C) termination of proceedings on the earlier application.
“Before” has consistently been interpreted, in this context, to mean “not later than.”
In each of the following situations, proceedings are terminated:
- (A) When the issue fee is not paid and the application is abandoned for failure to pay the issue fee, proceedings are terminated as of the date the issue fee was due and the application is the same as if it were abandoned after midnight on that date (but if the issue fee is later accepted, on petition, the application is revived). See MPEP § 711.03(c).
- (B) If an application is in interference wherein all the claims present in the application correspond to the counts and the application loses the interference as to all the claims, then proceedings on that application are terminated as of the date appeal or review by civil action was due if no appeal or civil action was filed.
- (C) Proceedings are terminated in an application after decision by the Patent Trial and Appeal Board as explained in MPEP § 1214.06.
- (D) Proceedings are terminated after a decision by the court as explained in MPEP § 1216.01.
711.03 Reconsideration of Holding of Abandonment; Revival [R-08.2012]
When advised of the abandonment of his or her application, applicant may either ask for reconsideration of such holding, if he or she disagrees with it on the basis that there is no abandonment in fact; or petition for revival under 37 CFR 1.137.
711.03(a) Holding Based on Insufficiency of Reply [R-08.2012]
Applicant may deny that the reply was incomplete.
While the primary examiner has no authority to act upon an application in which no action by applicant was taken during the period for reply, he or she may reverse his or her holding as to whether or not an amendment received during such period was responsive and act on an application of such character which he or she has previously held abandoned. This is not a revival of an abandoned application but merely a holding that the application was never abandoned. See also MPEP § 714.03.
711.03(b) Holding Based on Failure To Reply Within Period [R-08.2012]
When an amendment reaches the U.S. Patent and Trademark Office after the expiration of the period for reply and there is no dispute as to the dates involved, no question of reconsideration of a holding of abandonment can be presented.
However, the examiner and the applicant may disagree as to the date on which the period for reply commenced to run or ends. In this situation, as in the situation involving sufficiency of reply, the applicant may take issue with the examiner and point out to him or her that his or her holding was erroneous.
711.03(c) Petitions Relating to Abandonment [R-07.2022]
37 CFR 1.135 Abandonment for failure to reply within time period.
- (a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the application will become abandoned unless an Office action indicates otherwise.
- (b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
- (c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.
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.
- (c) Reply. In an application abandoned under § 1.57(a), the reply must include a copy of the specification and any drawings of the previously filed application. In an application or patent abandoned for failure to pay the issue fee or any portion thereof, the required reply must include payment of the issue fee or any outstanding balance. In an application abandoned for failure to pay the publication fee, the required reply must include payment of the publication fee. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In a nonprovisional utility or plant application filed on or after June 8, 1995, abandoned after the close of prosecution as defined in § 1.114(b), the required reply may also be met by the filing of a request for continued examination in compliance with § 1.114.
- (d) Terminal disclaimer.
- (1) Any petition to revive pursuant to this
section in a design application must be accompanied by a terminal
disclaimer and fee as set forth in §
1.321 dedicating to the public a terminal part
of the term of any patent granted thereon equivalent to the period of
abandonment of the application. Any petition to revive pursuant to
this section in either a utility or plant application filed before
June 8, 1995, must be accompanied by a terminal disclaimer and fee as
set forth in § 1.321 dedicating
to the public a terminal part of the term of any patent granted
thereon equivalent to the lesser of:
- (i) The period of abandonment of the application; or
- (ii) The period extending beyond twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s) under 35 U.S.C. 120, 121, 365(c), or 386(c) from the date on which the earliest such application was filed.
- (2) Any terminal disclaimer pursuant to paragraph (d)(1) of this section must also apply to any patent granted on a continuing utility or plant application filed before June 8, 1995, or a continuing design application, that contains a specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to the application for which revival is sought.
- (3) The provisions of paragraph (d)(1) of this section do not apply to applications for which revival is sought solely for purposes of copendency with a utility or plant application filed on or after June 8, 1995, to reissue applications, or to reexamination proceedings.
- (1) Any petition to revive pursuant to this
section in a design application must be accompanied by a terminal
disclaimer and fee as set forth in §
1.321 dedicating to the public a terminal part
of the term of any patent granted thereon equivalent to the period of
abandonment of the application. Any petition to revive pursuant to
this section in either a utility or plant application filed before
June 8, 1995, must be accompanied by a terminal disclaimer and fee as
set forth in § 1.321 dedicating
to the public a terminal part of the term of any patent granted
thereon equivalent to the lesser of:
- (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.
- (f) Abandonment for failure to notify the Office of a foreign filing. A nonprovisional application abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the filing of an application in a foreign country or under a multinational treaty that requires publication of applications eighteen months after filing, may be revived pursuant to this section. The reply requirement of paragraph (c) of this section is met by the notification of such filing in a foreign country or under a multinational treaty, but the filing of a petition under this section will not operate to stay any period for reply that may be running against the application.
- (g) Provisional applications. A provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to this section. Subject to the provisions of 35 U.S.C. 119(e)(3) and § 1.7(b), a provisional application will not be regarded as pending after twelve months from its filing date under any circumstances.
37 CFR 1.181 Petition to the Director.
- (a) Petition may be taken to the Director:
- (1) From any action or requirement of any examiner in the ex parte prosecution of an application, or in ex parte or inter partes prosecution of a reexamination proceeding which is not subject to appeal to the Patent Trial and Appeal Board or to the court;
- (2) In cases in which a statute or the rules specify that the matter is to be determined directly by or reviewed by the Director; and
- (3) To invoke the supervisory authority of the Director in appropriate circumstances. For petitions involving action of the Patent Trial and Appeal Board, see § 41.3 of this title.
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- (f) The mere filing of a petition will not stay any period for reply that may be running against the application, nor act as a stay of other proceedings. Any petition under this part not filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely, except as otherwise provided. This two-month period is not extendable.
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A petition to revive an abandoned application (discussed below) should not be confused with a petition from an examiner’s holding of abandonment. Where an applicant contends that the application is not in fact abandoned (e.g., there is disagreement as to the sufficiency of the reply, or as to controlling dates), a petition under 37 CFR 1.181(a) requesting withdrawal of the holding of abandonment is the appropriate course of action, and such petition does not require a fee. Where there is no dispute as to whether an application is abandoned (e.g., the applicant’s contentions merely involve the cause of abandonment), a petition under 37 CFR 1.137 (accompanied by the appropriate petition fee) is necessary to revive the abandoned application.
The procedure available for reviving an application that has become abandoned due to a failure to reply to an Office Action is a petition under 37 CFR 1.137 based on unintentional delay.
A. Petition To Withdraw Holding of Abandonment Based on Failure To Receive Office ActionIn Delgar v. Schuyler, 172 USPQ 513 (D.D.C. 1971), the court decided that the Office should mail a new Notice of Allowance in view of the evidence presented in support of the contention that the applicant’s representative did not receive the original Notice of Allowance. Under the reasoning of Delgar, an allegation that an Office action was never received may be considered in a petition to withdraw the holding of abandonment. If adequately supported, the Office may grant the petition to withdraw the holding of abandonment and remail the Office action. That is, the reasoning of Delgar is applicable regardless of whether an application is held abandoned for failure to timely pay the issue fee (35 U.S.C. 151) or for failure to prosecute (35 U.S.C. 133).
A showing by the applicant’s representative may not be sufficient if there are circumstances that point to a conclusion the Office action may have been lost after receipt rather than a conclusion that the Office action was lost in the mail (e.g., if the practitioner has a history of not receiving Office actions).
Evidence of nonreceipt of an Office communication or action (e.g., Notice of Abandonment or an advisory action) other than that action to which reply was required to avoid abandonment would not warrant withdrawal of the holding of abandonment. Abandonment takes place by operation of law for failure to reply to an Office action or timely pay the issue fee, not by operation of the mailing of a Notice of Abandonment. See Lorenz v. Finkl, 333 F.2d 885, 889-90, 142 USPQ 26, 29-30 (CCPA 1964); Krahn v. Commissioner, 15 USPQ2d 1823, 1824 (E.D. Va. 1990); In re Application of Fischer, 6 USPQ2d 1573, 1574 (Comm’r Pat. 1988).
1. Showing of Nonreceipt Required of a PractitionerThe showing required to establish nonreceipt of an Office communication must include a statement from the practitioner describing the system used for recording an Office action received at the correspondence address of record with the USPTO. The statement should establish that the docketing system is sufficiently reliable. It is expected that the record would include, but not be limited to, the application number, attorney docket number, the mail date of the Office action and the due date for the response.
Practitioner must state that the Office action was not received at the correspondence address of record, and that a search of the practitioner’s record(s), including any file jacket or the equivalent, and the application contents, indicates that the Office action was not received. A copy of the record(s) used by the practitioner where the non-received Office action would have been entered had it been received is required.
A copy of the practitioner’s record(s) required to show non-receipt of the Office action should include the master docket for the firm. That is, if a three month period for reply was set in the nonreceived Office action, a copy of the master docket report showing all replies docketed for a date three months from the mail date of the nonreceived Office action must be submitted as documentary proof of nonreceipt of the Office action. If no such master docket exists, the practitioner should so state and provide other evidence such as, but not limited to, the following: the application file jacket; incoming mail log; calendar; reminder system; or the individual docket record for the application in question.
2. Showing of Nonreceipt Required of a Pro Se ApplicantWhen the petitioner is a pro se applicant, the Office understands the petitioner may not have developed a formal docket record system for tracking correspondence. Nevertheless, petitioner must provide some sort of showing explaining the manner in which petitioner receives mail from the USPTO, maintains files for patent matters, and treats mail received for such matter.
Specifically, petitioner must explain the system for keeping track of patent matters - where petitioner keeps the correspondence; where due dates are recorded; how petitioner knows replies are due, etc. In essence, petitioner must explain how he reminds himself of response due dates and shows that the due date for an Office action was not entered into that system. Petitioner should include any available documentary evidence of the mail received, covering a reasonable period after the mailing date of an Office action, to demonstrate non-receipt of an Office action. Petitioner should also provide the USPTO with copies of any records or other methods, which could serve as a reminder of the due date for a response to an Office action, and where petitioner would have entered the receipt date of the Office action if petitioner received it (for example, a copy of the outside of a file or a calendar maintained by petitioner), if these documents are available. Furthermore, petitioner must include a statement from himself, or any other person at the address who may have handled the Office action, indicating that a search was conducted of the location where the correspondence from the USPTO would have been kept; however, the Office action was not found. Lastly, petitioner must state that he was, in fact, residing at (or routinely checked) the correspondence address of record for a reasonable time after the mailing date of an Office action; the period when the Office action would have been received.
B. Petition To Withdraw Holding of Abandonment Based on Evidence That a Reply Was Timely Mailed or Filed37 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®. A petition to withdraw the holding of abandonment relying upon a timely reply placed in Priority Mail Express® must include an appropriate petition under 37 CFR 1.10(c), (d), (e), or (g) (see MPEP § 513). When a paper is shown to have been mailed to the Office using the “Express Mail” procedures, the paper must be entered in One Patent Service Gateway (via Patent Data Portal) with the Priority Mail Express® date.
Similarly, applicants may establish that a reply was filed with a postcard receipt that properly identifies the reply and provides prima facie evidence that the reply was timely filed. See MPEP § 503. For example, if the application has been held abandoned for failure to file a reply to a first Office action, and applicant has a postcard receipt showing that an amendment was timely filed in response to the Office action, then the holding of abandonment should be withdrawn upon the filing of a petition to withdraw the holding of abandonment. When the reply is shown to have been timely filed based on a postcard receipt, the reply must be entered into One Patent Service Gateway (via Patent Data Portal) using the date of receipt of the reply as shown on the post card receipt.
Where a certificate of mailing under 37 CFR 1.8, but not a postcard receipt, is relied upon in a petition to withdraw the holding of abandonment, see 37 CFR 1.8(b) and MPEP § 512. As stated in 37 CFR 1.8(b)(3) the statement that attests to the previous timely mailing or transmission of the correspondence must be on a personal knowledge basis, or to the satisfaction of the Director of the USPTO. If the statement attesting to the previous timely mailing is not made by the person who signed the Certificate of Mailing (i.e., there is no personal knowledge basis), then the statement attesting to the previous timely mailing should include evidence that supports the conclusion that the correspondence was actually mailed (e.g., copies of a mailing log establishing that correspondence was mailed for that application). When the correspondence is shown to have been timely filed based on a certificate of mailing, the correspondence is entered into One Patent Service Gateway (via Patent Data Portal) with the actual date of receipt (i.e., the date that the duplicate copy of the papers was filed with the statement under 37 CFR 1.8).
37 CFR 1.8(b) also permits applicant to notify the Office of a previous mailing or transmission of correspondence and submit a statement under 37 CFR 1.8(b)(3) accompanied by a duplicate copy of the correspondence when a reasonable amount of time (e.g., more than one month) has elapsed from the time of mailing or transmitting of the correspondence. Applicant does not have to wait until the application becomes abandoned before notifying the Office of the previous mailing or transmission of the correspondence. Applicant should check the private Patent Application Information Retrieval (PAIR) system for the status of the correspondence before notifying the Office. See MPEP § 512.
C. Treatment of Untimely Petition To Withdraw Holding of Abandonment37 CFR 1.181(f) provides that, inter alia, except as otherwise provided, any petition not filed within 2 months from the action complained of may be dismissed as untimely. Therefore, any petition (under 37 CFR 1.181) to withdraw the holding of abandonment not filed within 2 months of the mail date of a notice of abandonment (the action complained of) may be dismissed as untimely. 37 CFR 1.181(f).
Rather than dismiss an untimely petition to withdraw the holding of abandonment under 37 CFR 1.181(f), the Office may require a terminal disclaimer as a condition of granting an untimely petition to withdraw the holding of abandonment.
Where the record indicates that the applicant intentionally delayed the filing of a petition to withdraw the holding of abandonment, the Office may simply dismiss the petition as untimely (37 CFR 1.181(f)) solely on the basis of such intentional delay in taking action in the application without further addressing the merits of the petition. Obviously, intentional delay in seeking the revival of an abandoned application precludes relief under 37 CFR 1.137 (discussed below).
1. Design Applications, Utility Applications Filed Before June 8, 1995, and Plant Applications Filed Before June 8, 1995(a) Applicant Receives Notice of AbandonmentIn any design application, any utility application filed before June 8, 1995, or any plant application filed before June 8, 1995, if applicant receives a notice of abandonment, any petition to withdraw the holding of abandonment that is not filed within two months of the mail date of the notice of abandonment will not (absent extraordinary circumstances) be treated on its merits unless accompanied by a terminal disclaimer under 37 CFR 1.321(a), and the required fee set forth in 37 CFR 1.20(d). The period to be disclaimed is the terminal part of the term of any patent granted on the application, or of any patent granted on any utility or plant application that claims the benefit of the filing date of the application under 35 U.S.C. 120, 121, or 365(c), equivalent to the period between:
- (A) the date that is two months after the mail date of the notice of abandonment; and
- (B) the filing date of a grantable petition to withdraw the holding of abandonment.
See MPEP § 711.03(c), subsection II.G.
(b) Applicant Does Not Receive Notice of AbandonmentIn any design application, any utility application filed before June 8, 1995, or any plant application filed before June 8, 1995, if applicant never receives the notice of abandonment, any petition to withdraw the holding of abandonment that is not filed within twelve months from the date of applicant’s filing (or date of submission, if the correspondence was never received by the Office) of correspondence with the Office for which further action by the Office can reasonably be expected, will not (absent extraordinary circumstances) be treated on its merit unless accompanied by a terminal disclaimer under 37 CFR 1.321(a), and the required fee set forth in 37 CFR 1.20(d). The period to be disclaimed is the terminal part of the term of any patent granted thereon, or of any patent granted on any utility or plant application that claims the benefit of the filing date of the application under 35 U.S.C. 120, 121, or 365(c), equivalent to the period between:
- (A) the date that is twelve months from the date of applicant’s filing or submission of correspondence with the Office, for which further action by the Office can reasonably be expected; and
- (B) the filing date of a grantable petition to withdraw the holding of abandonment.
See MPEP § 711.03(c), subsection II.G.
2. Utility and Plant Applications Filed on or After June 8, 1995 but Before May 29, 2000In utility and plant applications filed on or after June 8, 1995, but before May 29, 2000, a terminal disclaimer should not be required as a condition of granting an untimely petition to withdraw the holding of abandonment. However, the Office of Patent Legal Administration (OPLA) must be consulted in such situations if the holding of abandonment involves a period during: (A) appellate review by the Patent Trial and Appeal Board; (B) an interference or derivation proceeding under 35 U.S.C. 135, including any suspension due to an interference or derivation proceeding; or (C) which the application was in a sealed condition or prosecution was suspended due to a secrecy order under 35 U.S.C. 181. This is because it is necessary to effect (if appropriate) a reduction of patent term extension under the “due diligence” provisions of 37 CFR 1.701(d)(2).
3. Utility and Plant Applications Filed on or After May 29, 2000In utility and plant applications filed on or after May 29, 2000, a terminal disclaimer should not be required as a condition of granting an untimely petition to withdraw the holding of abandonment. This is because any patent term adjustment is automatically reduced under the provisions of 37 CFR 1.704(c)(4) in applications subject to the patent term adjustment provisions of the American Inventors Protection Act of 1999 (AIPA) if a petition to withdraw a holding of abandonment is not filed within two months from the mailing date of the notice of abandonment, and if applicant does not receive the notice of abandonment, any patent term adjustment is reduced under the provisions of 37 CFR 1.704(a) by a period equal to the period of time during which the applicant “failed to engage in reasonable efforts to conclude prosecution” (processing or examination) of the application.
II. PETITIONS TO REVIVE AN ABANDONED APPLICATION, OR ACCEPT LATE PAYMENT OF ISSUE FEEEffective December 18, 2013, the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, amended the patent laws to implement the provisions of the Patent Law Treaty (PLT) in title II. Notable changes to the law included the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments. Section 201(b) of the PLTIA specifically added new 35 U.S.C. 27, providing 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. The PLTIA eliminated the provisions of the patent statutes relating to revival of abandoned applications or acceptance of delayed maintenance fee payments on the basis of a showing of “unavoidable” delay.
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.
37 CFR 1.137 provides for the revival of abandoned applications, or terminated or limited reexamination prosecution on the basis of unintentional delay for the failure:
- (A) to timely reply to an Office requirement in a provisional application;
- (B) to timely prosecute in a nonprovisional application;
- (C) to timely pay the issue fee for a design application;
- (D) to timely pay the issue fee for a utility or plant application; and
- (E) to provide copendency between the abandoned application and a subsequently filed application.
A petition under 37 CFR 1.137 requires:
- (A) the required reply, unless previously filed;
- (B) the petition fee as set forth in 37 CFR 1.17(m);
- (C) any terminal disclaimer (and fee as set forth in 37 CFR 1.20(d)) required pursuant to 37 CFR 1.137(d); and
- (D) 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 37 CFR 1.137 was unintentional.
The Director of the USPTO may require additional information where there is a question whether the delay was unintentional. In particular, any applicant filing a petition to revive an abandoned application more than two years after the date of abandonment must provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional.
A. Reply RequirementUnlike a petition to withdraw the holding of abandonment, a petition to revive under 37 CFR 1.137 must be accompanied by, inter alia, the required reply. Generally, the required reply is the reply sufficient to have avoided abandonment, had such reply been timely filed. A petition for an extension of time under 37 CFR 1.136 and a fee for such an extension of time are not required to be included with the reply.
37 CFR 1.137(c) applies to the reply requirement for a petition under 37 CFR 1.137. In an application abandoned under 37 CFR 1.57(a), the reply must include a copy of the specification and any drawings of the previously filed application. In an application or patent abandoned for failure to pay the issue fee or any portion thereof, the required reply must include payment of the issue fee or any outstanding balance. In an application abandoned for failure to pay the publication fee, the required reply must include payment of the publication fee. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In a nonprovisional utility or plant application filed on or after June 8, 1995, abandoned after the close of prosecution as defined in 37 CFR 1.114(b), the required reply may also be met by the filing of a request for continued examination (RCE) in compliance with 37 CFR 1.114. See below for more details on the reply requirement in specific situations of abandonment.
1. Abandonment for Failure To Timely Submit A Copy of the Specification and Any Drawings In An Application Filed By Reference Under 35 U.S.C. 111(c) and 37 CFR 1.57(a)In an application abandoned under 37 CFR 1.57(a), the required reply must include a copy of the specification and any drawings of the previously filed application. Although not required as a condition for revival, a certified copy of the previously filed application may be required for an application filed by reference. If the certified copy is required and is not filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17 are required. For more details regarding an application filed by reference under 35 U.S.C. 111(c) and 37 CFR 1.57(a), see MPEP § 601.01(a), subsection III.
2. Abandonment for Failure To Pay the Issue Fee or Publication FeeIn an application abandoned for failure to timely pay the issue fee, the required reply must include the issue fee (and any required publication fee).
Section 202(b)(6) of the PLTIA amended 35 U.S.C. 151 to provide that: (1) if it appears that an applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant; (2) the notice of allowance shall specify a sum, constituting the issue fee and any required publication fee, which shall be paid within three months thereafter; and (3) upon payment of this sum, the patent may issue, but if payment is not timely made, the application shall be regarded as abandoned. Under the changes to 35 U.S.C. 151 in the PLTIA, the sum specified in the notice of allowance will constitute the issue fee and any required publication fee, and the Office will proceed to issue a patent when the applicant pays the sum specified in the notice of allowance, regardless of the issue fee and/or publication fee in effect on the date the sum specified in the notice of allowance is paid.
Section 201(b) of the PLTIA specifically added new 35 U.S.C. 27, providing that the Director may establish procedures to revive an unintentionally abandoned application for a 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.
35 U.S.C. 27 authorizes the acceptance of an “unintentionally delayed payment of the fee for issuing each patent.” Thus, 35 U.S.C. 27 requires payment of the issue fee as a condition of reviving an application abandoned for failure to pay the issue fee. Therefore, the filing of a continuing application without payment of the issue fee is not an acceptable reply in an application abandoned for failure to pay the issue fee.
The issue fee due with the petition to revive is the issue fee specified in the notice of allowance. If the notice of allowance also specified a publication fee, then the publication fee must also be paid in the amount specified on the notice of allowance. An applicant may change the entity status with the filing of the petition to revive, if appropriate, and pay the petition fee in the new entity status amount, but the issue fee (and any publication fee) must be paid in the amount specified in the notice of allowance.
In an application abandoned for failure to pay the publication fee, the required reply must include payment of the publication fee. Even if an application abandoned for failure to pay the publication fee is being revived solely for purposes of continuity with a continuing application, the petition to revive under 37 CFR 1.137 must include payment of the publication fee.
3. Abandonment for Failure To Provide Required DrawingsIn an application abandoned for failure to provide required drawings, a petition to revive the application will be dismissed unless the required drawings are filed before or with the petition to revive the application.
4. Abandonment for Failure To Reply in a Nonprovisional Application(a) Abandonment for Failure To Reply to a Non-Final ActionThe required reply to a non-final action in a nonprovisional application abandoned for failure to prosecute may be either:
- (A) an argument or an amendment under 37 CFR 1.111;
- (B) the filing of a continuing application under 37 CFR 1.53(b) (or a continued prosecution application (CPA) under 37 CFR 1.53(d) if the application is a design application).
The grant of a petition under 37 CFR 1.137 is not a determination that any reply under 37 CFR 1.111 is complete. Where the proposed reply is to a non-final Office action, the petition may be granted if the reply appears to be bona fide. After revival of the application, the patent examiner may, upon more detailed review, determine that the reply is lacking in some respect. In this limited situation, the patent examiner should send out a letter giving a 2-month shortened statutory period under 37 CFR 1.135(c) for correction of the error or omission. Extensions of time under 37 CFR 1.136(a) are permitted. If applicant does not correct the omission within the time period set in the letter (including any extension), the application is again abandoned.
(b) Abandonment for Failure To Reply to a Final ActionA reply under 37 CFR 1.113 to a final action must include a request for continued examination (RCE) under 37 CFR 1.114 or cancellation of, or appeal from the rejection of, each claim so rejected. Accordingly, in a nonprovisional application abandoned for failure to reply to a final action, the reply required for consideration of a petition to revive must be:
- (A) a Notice of Appeal and appeal fee;
- (B) an amendment under 37 CFR 1.116 that cancels all the rejected claims or otherwise prima facie places the application in condition for allowance;
- (C) the filing of an RCE (accompanied by a submission that meets the reply requirements of 37 CFR 1.111 and the requisite fee) under 37 CFR 1.114 for utility or plant applications filed on or after June 8, 1995 (see paragraph (d) below); or
- (D) the filing of a continuing application under 37 CFR 1.53(b) (or a CPA under 37 CFR 1.53(d) if the application is a design application).
When a notice of appeal is the reply filed pursuant to 37 CFR 1.137(b)(1), the time period under 37 CFR 41.37 for filing the appeal brief will be set by the Director of the USPTO in the decision granting the petition.
An application subject to a final action in which a proposed amendment under 37 CFR 1.116 is filed as the required reply will normally be routed by the Office of Petitions to the Technology Center (TC) to determine whether a proposed amendment places the application in condition for allowance prior to granting any petition to revive such application. The examiner is instructed that if the reply places the application in condition for allowance, the examiner should use the typewriter tool in Adobe Acrobat to write in the margin of the reply “OK to enter upon revival.” If the petition is otherwise grantable and the examiner indicates that the reply places the application in condition for allowance, the petition will be granted. If, on the other hand, the reply would not place the application in condition for allowance, the examiner is instructed to complete form PTOL-303 and return the form to the Office of Petitions with the application. Form PTOL-303 should not be mailed to the applicant by the examiner. In this situation, the Office of Petitions will not grant the petition. A copy of the form PTOL-303 is marked with the notation “Courtesy Copy” by the Office of Petitions. The courtesy copy is sent as an attachment with the decision on the petition. The advisory form PTOL-303 merely serves as an advisory notice to the Office of Petitions regarding the decision of the examiner on the amendment after final rejection.
(c) Abandonment for Failure To File an Appeal BriefIn those situations where abandonment occurred because of the failure to file an appeal brief, the reply required pursuant to 37 CFR 1.137(b)(1) must be either:
- (A) an appeal brief in compliance with 37 CFR 41.37(c);
- (B) the filing of an RCE accompanied by a submission and the requisite fee in compliance with 37 CFR 1.114 for utility or plant applications filed on or after June 8, 1995, abandoned after the close of prosecution as defined in 37 CFR 1.114(b) (see paragraph (d) below); or
- (C) the filing of a continuing application under 37 CFR 1.53(b) (or a CPA under 37 CFR 1.53(d) if the application is a design application).
For utility or plant applications abandoned for failure to reply to a final Office action or for failure to file an appeal brief, the required reply may be the filing of an RCE accompanied by a submission and the requisite fee. When an RCE is the reply filed pursuant to 37 CFR 1.137(b)(1) to revive such an application, the submission accompanying the RCE must be a reply responsive within the meaning of 37 CFR 1.111 to the last Office action. Consideration of whether the submission is responsive within the meaning of 37 CFR 1.111 to the last Office action is done without factoring in the “final” status of such action. The submission may be a previously filed amendment after final or a statement that incorporates by reference the arguments in a previously filed appeal or reply brief. See MPEP § 706.07(h), subsection II.
The petition may be granted if the submission appears to be a bona fide attempt to provide a complete reply to the last Office action. After revival of the application, the examiner may, upon a more detailed review, determine that the reply is lacking in some respect. In this limited situation, the examiner should send out a letter giving a 2-month shortened statutory period under 37 CFR 1.135(c) for correction of the error or omission. Extensions of time under 37 CFR 1.136(a) are permitted. If the applicant does not correct the omission within the time period set in the letter (including any extension), the application is again abandoned.
(e) A Continuing Application or RCE May Be Required by the OfficeThe Office may require the filing of a continuing application or an RCE (if the prosecution prior to abandonment was closed) (or request for further examination pursuant to 37 CFR 1.129(a)) to meet the reply requirement of 37 CFR 1.137(b)(1) where, under the circumstances of the application, treating a reply under 37 CFR 1.111 or 1.113 would place an inordinate burden on the Office. Exemplary circumstances of when treating a reply under 37 CFR 1.111 or 1.113 may place an inordinate burden on the Office are where:
- (A) an application has been abandoned for an inordinate period of time;
- (B) an application file contains multiple or conflicting replies to the last Office action; or
- (C) the reply or replies submitted under 37 CFR 1.137(b)(1)) are questionable as to compliance with 37 CFR 1.111 or 1.113.
If an applicant makes a nonpublication request upon filing with the appropriate certifications, the utility or plant application filed on or after November 29, 2000 will not be published under 35 U.S.C. 122(b)(1). See 35 U.S.C. 122(b)(2)(B)(i). If an applicant makes a nonpublication request and then rescinds, pursuant to 35 U.S.C. 122(b)(2)(B)(ii), the nonpublication request before or on the date a counterpart application is filed in a foreign country, or under a multilateral international agreement, that requires eighteen-month publication, the nonpublication request will be treated as annulled and the application will be treated as if the nonpublication request were never made. See MPEP §§ 1123 and 1124. An applicant who has made a nonpublication request, but who subsequently files an application directed to the invention disclosed in the U.S. application in a foreign country, or under a multilateral international agreement, that requires eighteen-month publication before the nonpublication request is rescinded, must, in addition to the rescission, notify the Office of such filing within forty-five days after the date of such filing. The requirement in 35 U.S.C. 122(b)(2)(B)(iii) for notice of the foreign filing is in addition to any rescission of the nonpublication request under 35 U.S.C. 122(b)(2)(B)(ii). If an applicant files a counterpart application in a foreign country after having filed an application in the USPTO with a nonpublication request, filing a rescission of the nonpublication request under 35 U.S.C. 122(b)(2)(B)(ii) without also providing a notice of the foreign filing in a timely manner will result in the abandonment of the U.S. application under 35 U.S.C. 122(b)(2)(B)(iii). 37 CFR 1.137(f), however, provides that an application abandoned as a result of the failure to timely provide such a notice to the Office is subject to revival pursuant to 37 CFR 1.137 if the delay in submitting the notice was unintentional.
A nonprovisional application abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the filing of an application in a foreign country or under a multinational treaty that requires eighteen-month publication may be revived only on the basis of unintentional delay pursuant to 37 CFR 1.137. The reply requirement of 37 CFR 1.137(c) is met by the notification of such filing in a foreign country or under a multinational treaty, but the filing of a petition under 37 CFR 1.137 will not operate to stay any period for reply that may be running against the application. Since the Office cannot ascertain whether an application is abandoned under 35 U.S.C. 122(b)(2)(B)(iii), the Office may continue to process and examine the application until the Office is notified of applicant’s failure to meet the forty-five days notice requirement of 35 U.S.C. 122(b)(2)(B)(iii). Therefore, the filing of a petition under 37 CFR 1.137 to revive such an application will not operate to stay any period for reply that may be running against the application. Applicants may use form PTO/SB/64a to file a petition for revival under 37 CFR 1.137.
B. Petition Fee Requirement35 U.S.C. 41(a)(7) provides that the Office shall charge $1,700.00 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. 35 U.S.C. 41(a)(7) also provides that the Director may refund any part of the fee, in exceptional circumstances as determined by the Director. This provision permits the Office to refund (or waive) the fee specified in 35 U.S.C. 41(a)(7) in situations in which the failure to take the required action or pay the required fee was due to a widespread disaster, such as a hurricane, earthquake, or flood, in the manner that the Office would waive surcharges that are not required by statute. The “exceptional circumstances” provision does not permit applicants to request a refund on the basis of there being exceptional circumstances.
The phrase “[o]n filing” in 35 U.S.C. 41(a)(7) means that the petition fee is required for the filing (and not merely the grant) of a petition under 37 CFR 1.137. See H.R. Rep. No. 542, 97th Cong., 2d Sess. 6 (1982), reprinted in 1982 U.S.C.C.A.N. 770 (“[t]he fees set forth in this section are due on filing the petition”). Therefore, the Office: (A) will not refund the petition fee required by 37 CFR 1.17(m), regardless of whether the petition under 37 CFR 1.137 is dismissed or denied (unless there are exceptional circumstances as determined by the Director); and (B) will not reach the merits of any petition under 37 CFR 1.137 lacking the requisite petition fee.
C. Unintentional DelayThe Office usually relies upon the applicant’s duty of candor and good faith and accepts the 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 37 CFR 1.137 was unintentional” without requiring further information in the vast majority of petitions under 37 CFR 1.137. This is because the applicant is obligated under 37 CFR 11.18 to inquire into the underlying facts and circumstances when a practitioner provides this statement to the Office. In addition, providing an inappropriate statement in a petition under 37 CFR 1.137 to revive an abandoned application may have an adverse effect when attempting to enforce any patent resulting from the application. See Lumenyte Int’l Corp. v. Cable Lite Corp., Nos. 96-1011, 96-1077, 1996 U.S. App. LEXIS 16400, 1996 WL 383927 (Fed. Cir. July 9, 1996)(unpublished)(patents held unenforceable due to a finding of inequitable conduct in submitting an inappropriate statement that the abandonment was unintentional). An extended period of delay (i.e., more than two years from the date the application became abandoned) in filing a petition to revive an application, however, raises a question as to whether the entire delay was unintentional. This may create uncertainty and unpredictability relating to patent rights in that there is a greater likelihood that the entire delay may not be "unintentional" within the meaning of 37 CFR 1.137 as compared to a petition that was filed within a shorter time period after the abandonment of the application. An applicant or patentee cannot meet the "unintentional delay" standard in 37 CFR 1.137(a) if the entire delay is not unintentional. See Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR 12222-24 (March 2, 2020).
The Office is almost always satisfied as to whether “the entire delay…was unintentional” on the basis of statement(s) by the applicant or representative explaining the cause of the delay (accompanied at most by copies of correspondence relevant to the period of delay). However, the Office requires additional information in cases when a petition to revive an abandoned application is filed more than two years after the date the application became abandoned. The reason for requiring additional information in cases where there has been an extended delay—a delay of more than two years from the date the application became abandoned is to ensure that the Office is provided with sufficient information of the facts and circumstances surrounding the entire delay to support a conclusion that the entire delay was indeed "unintentional."
The legislative history of Public Law 97-247, § 3, 96 Stat. 317 (1982), reveals that the purpose of the unintentional delay revival provision is to permit the Office to have discretion to revive abandoned applications in appropriate circumstances, but places a limit on this discretion stating that “[u]nder this section a petition accompanied by [the requisite fee] would not be granted where the abandonment or the failure to pay the fee for issuing the patent was intentional as opposed to being unintentional.” H.R. Rep. No. 542, 97th Cong., 2d Sess. 6-7 (1982), reprinted in 1982 U.S.C.C.A.N. 770-71. A delay resulting from a deliberately chosen course of action on the part of the applicant is not an “unintentional” delay within the meaning of 37 CFR 1.137.
Where the applicant deliberately permits an application to become abandoned (e.g., due to a conclusion that the claims are unpatentable, that a rejection in an Office action cannot be overcome, or that the invention lacks sufficient commercial value to justify continued prosecution), the abandonment of such application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as “unintentional” within the meaning of 37 CFR 1.137. See In re Application of G, 11 USPQ2d 1378, 1380 (Comm’r Pat. 1989). An intentional course of action is not rendered unintentional when, upon reconsideration, the applicant changes their mind as to the course of action that should have been taken. See In re Maldague, 10 USPQ2d 1477, 1478 (Comm’r Pat. 1988).
A delay resulting from a deliberately chosen course of action on the part of the applicant does not become an “unintentional” delay within the meaning of 37 CFR 1.137 because:
- (A) the applicant does not consider the claims to be patentable over the references relied upon in an outstanding Office action;
- (B) the applicant does not consider the allowed or patentable claims to be of sufficient breadth or scope to justify the financial expense of obtaining a patent;
- (C) the applicant does not consider any patent to be of sufficient value to justify the financial expense of obtaining the patent;
- (D) the applicant does not consider any patent to be of sufficient value to maintain an interest in obtaining the patent; or
- (E) the applicant remains interested in eventually obtaining a patent, but simply seeks to defer patent fees and patent prosecution expenses.
Likewise, a change in circumstances that occurred subsequent to the abandonment of an application does not render “unintentional” the delay resulting from a previous deliberate decision to permit an application to be abandoned. These matters simply confuse the question of whether there was a deliberate decision not to continue the prosecution of an application with why there was a deliberate decision not to continue the prosecution of an application.
Any applicant filing a petition to revive an abandoned application under37 CFR 1.137 more than two years after the date of abandonment is required to provide an additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. This requirement is in addition to the requirement to provide a statement that the entire delay was unintentional. Electronic petitions, that are automatically processed and immediately decided, may be filed using the web-based ePetition process for the following types of petitions: (1) Petitions to Accept Late Payment of Issue Fee - Unintentional Late Payment (37 CFR 1.137(a)); (2) Petitions for Revival of an Application based on Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f)); (3) Petitions for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(a)); and (4) Petitions for Revival of an Abandoned Patent Application Abandoned Unintentionally (37 CFR 1.137(a)) (For Cases Abandoned After 1st Action and Prior to Notice of Allowance). Applicants may use the forms provided by the Office (PTO/SB/64, PTO/SB/64a, or PTO/SB/64PCT). Additional information regarding the ePetition process is available from: www.uspto.gov/Epetitions.
Applicants may use the forms provided by the Office (PTO/SB/64, PTO/SB/64a, or PTO/SB/64PCT).
D. Delay Until the Filing of a Grantable PetitionThere are three periods to be considered during the evaluation of a petition under 37 CFR 1.137:
- (A) the delay in reply that originally resulted in the abandonment;
- (B) the delay in filing an initial petition pursuant to 37 CFR 1.137 to revive the application; and
- (C) the delay in filing a grantable petition pursuant to 37 CFR 1.137 to revive the application.
As discussed above, the abandonment of an application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as “unintentional” within the meaning of 37 CFR 1.137, where the applicant deliberately permits the application to become abandoned. See Application of G, 11 USPQ2d at 1380. Likewise, where the applicant deliberately chooses not to seek or persist in seeking the revival of an abandoned application, or where the applicant deliberately chooses to delay seeking the revival of an abandoned application, the resulting delay in seeking revival of the abandoned application cannot be considered as “unintentional” within the meaning of 37 CFR 1.137. An intentional delay resulting from a deliberate course of action chosen by the applicant is not affected by:
- (A) the correctness of the applicant’s (or applicant’s representative’s) decision to abandon the application or not to seek or persist in seeking revival of the application;
- (B) the correctness or propriety of a rejection, or other objection, requirement, or decision by the Office; or
- (C) the discovery of new information or evidence, or other change in circumstances subsequent to the abandonment or decision not to seek or persist in seeking revival.
Obviously, delaying the revival of an abandoned application, by a deliberately chosen course of action, until the industry or a competitor shows an interest in the invention is the antithesis of an “unintentional” delay. An intentional abandonment of an application, or an intentional delay in seeking the revival of an abandoned application, precludes a finding of unintentional delay pursuant to 37 CFR 1.137. See Maldague, 10 USPQ2d at 1478.
The Office does not generally question whether there has been an intentional or otherwise impermissible delay in filing an initial petition pursuant to 37 CFR 1.137, when such petition is filed: (A) within 3 months of the date the applicant is first notified that the application is abandoned; and (B) within 1 year of the date of abandonment of the application. Thus, an applicant seeking revival of an abandoned application is advised to file a petition pursuant to 37 CFR 1.137 within 3 months of the first notification that the application is abandoned to avoid the question of intentional delay being raised by the Office (or by third parties seeking to challenge any patent issuing from the application).
Where a petition pursuant to 37 CFR 1.137 is not filed within 3 months of the date the applicant is first notified that the application is abandoned, the Office may consider there to be a question as to whether the delay was unintentional. In such instances the Office may require further information as to the cause of the delay between the date the applicant was first notified that the application was abandoned and the date a 37 CFR 1.137 petition was filed, and how such delay was “unintentional.”
To avoid delay in the consideration of the merits of a petition under 37 CFR 1.137 in instances in which such petition was not filed within 3 months of the date the applicant was first notified that the application was abandoned, applicants should include a showing as to how the delay between the date the applicant was first notified by the Office that the application was abandoned and the filing of a petition under 37 CFR 1.137 was “unintentional.”
Where a petition pursuant to 37 CFR 1.137 is not filed within 1 year of the date of abandonment of the application (note that abandonment takes place by operation of law, rather than by the mailing of a Notice of Abandonment), the Office may require:
- (A) further information as to when the applicant (or the applicant’s representative) first became aware of the abandonment of the application; and
- (B) a showing as to how the delay in discovering the abandoned status of the application occurred.
To avoid delay in the consideration of the merits of a petition under 37 CFR 1.137 in instances in which such petition was not filed within 1 year of the date of abandonment of the application, applicants should include:
- (A) the date that the applicant first became aware of the abandonment of the application; and
- (B) a showing as to how the delay in discovering the abandoned status of the application occurred.
Applicant’s failure to carry the burden of proof to establish that the “entire” delay was “unintentional” may lead to the denial of a petition under 37 CFR 1.137, regardless of the circumstances that originally resulted in the abandonment of the application.
E. Party Whose Delay Is RelevantThe question under 37 CFR 1.137 is whether the delay on the part of the party having the right or authority to reply to avoid abandonment (or not reply) was unintentional. When the applicant assigns the entire right, title, and interest in an invention to a third party (and thus does not retain any legal or equitable interest in the invention), the applicant’s delay is irrelevant in evaluating whether the delay was unintentional. See Kim v. Quigg, 718 F. Supp. 1280, 1284, 12 USPQ2d 1604, 1607-08 (E.D. Va. 1989). When an applicant assigns the application to a third party (e.g., the inventor/applicant’s employer), and the third party decides not to file a reply to avoid abandonment, the applicant’s actions, inactions or intentions are irrelevant under 37 CFR 1.137, unless the third party has reassigned the application to the applicant prior to the due date for the reply. Id.
Likewise, where the applicant permits a third party (whether a partial assignee, licensee, or other party) to control the prosecution of an application, the third party’s decision whether or not to file a reply to avoid abandonment is binding on the applicant. See Winkler, 221 F. Supp. at 552, 138 USPQ at 667. Where an applicant enters an agreement with a third party for the third party to take control of the prosecution of an application, the applicant will be considered to have given the third party the right and authority to prosecute the application to avoid abandonment (or not prosecute), unless, by the express terms of the contract between applicant and the third party, the third party is conducting the prosecution of the application for the applicant solely in a fiduciary capacity. See Futures Technology Ltd. v. Quigg, 684 F. Supp. 430, 431, 7 USPQ2d 1588, 1589 (E.D. Va. 1988). Otherwise, the applicant will be considered to have given the third party unbridled discretion to prosecute (or not prosecute) the application to avoid abandonment, and will be bound by the actions or inactions of such third party.
F. Burden of Proof To Establish Unintentional Delay37 CFR 1.137(b)(4) requires that a petition under 37 CFR 1.137 must be accompanied by a statement that the entire delay in providing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137 was unintentional, but also provides that “[t]he Director may require additional information where there is a question whether the delay was unintentional.” While the Office will generally require only the statement that the entire delay in providing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137 was unintentional, the Office may require an applicant to carry the burden of proof to establish that the delay from the due date for the reply until the filing of a grantable petition was unintentional within the meaning of 35 U.S.C. 27 and 37 CFR 1.137 where there is a question whether the entire delay was unintentional. See Application of G, 11 USPQ2d at 1380.
G. Terminal Disclaimer Requirement37 CFR 1.137(d) requires that a petition under 37 CFR 1.137 be accompanied by a terminal disclaimer (and fee), regardless of the period of abandonment, in:
- (A) a design application;
- (B) a nonprovisional utility application (other than a reissue application) filed before June 8, 1995; or
- (C) a nonprovisional plant application (other than a reissue application) filed before June 8, 1995.
In addition, a terminal disclaimer (and fee) is also required for a utility or plant application filed on or after June 8, 1995, but before May 29, 2000, where the application became abandoned (1) during appeal, (2) during interference, or (3) while under a secrecy order. The reason being that utility and plant patents issuing on applications filed on or after June 8, 1995, but before May 29, 2000, are eligible for the patent term extension under former 35 U.S.C. 154(b) (as a result of the Uruguay Round Agreements Act (URAA)). See 35 U.S.C. 154(b) (1999); see also 37 CFR 1.701. If such an application is abandoned (1) during appeal, (2) during interference, or (3) while under a secrecy order, the patentee of a patent issuing from such an application is eligible for patent term extension for the entire period of abandonment. The requirement for a terminal disclaimer for these situations will make certain that any patent term extension obtained for the period of abandonment while the application is under appeal, interference, or a secrecy order will be dedicated to the public. For utility and plant applications filed on or after May 29, 2000, a terminal disclaimer (and fee) is not required since the period of abandonment is reduced from the patent term adjustment pursuant to 37 CFR 1.704.
The terminal disclaimer submitted in a design application must dedicate to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application. The terminal disclaimer submitted in either a utility or plant application filed before June 8, 1995 must dedicate to the public a terminal part of the term of any patent granted thereon equivalent to the lesser of: (1) the period of abandonment of the application; or (2) the period extending beyond twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on which the earliest such application was filed. The terminal disclaimer must also apply to any patent granted on any continuing utility or plant application filed before June 8, 1995, or any continuing design application, entitled under 35 U.S.C. 120, 121, or 365(c) to the benefit of the filing date of the application for which revival is sought. The terminal disclaimer requirement of 37 CFR 1.137(d) does not apply to (A) applications for which revival is sought solely for purposes of copendency with a utility or plant application filed on or after June 8, 1995, (B) reissue applications, or (C) reexamination proceedings.
The Office cannot determine (at the time a petition to revive is granted) the period disclaimed (i.e., which period is lesser: the period of abandonment of the application, or the period extending beyond twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on which the earliest such application was filed). Therefore, the Office will not indicate the period disclaimed under 37 CFR 1.137(d) in its decision granting a petition to revive an abandoned application.
The filing of a terminal disclaimer is not a substitute for unintentional delay. See Application of Takao, 17 USPQ2d at 1159. The requirement that the entire delay have been unintentional (37 CFR 1.137) is distinct from the requirement for a terminal disclaimer. Therefore, the filing of a terminal disclaimer cannot excuse an intentional delay in filing a petition or renewed petition to revive an abandoned application. Likewise, an unintentional delay in filing a petition or renewed petition to revive an abandoned application will not warrant waiver of the terminal disclaimer requirement of 37 CFR 1.137(d).
In the event that an applicant considers the requirement for a terminal disclaimer to be inappropriate under the circumstances of the application at issue, the applicant should file a petition under 37 CFR 1.183 (and petition fee) to request a waiver of this requirement of 37 CFR 1.183. Such a petition may request waiver of this requirement in toto, or to the extent that such requirement exceeds the period considered by applicant as the appropriate period of disclaimer. The grant of such a petition, however, is strictly limited to situations wherein applicant has made a showing of an “extraordinary situation” in which “justice requires” the requested relief. An example of such a situation is when the abandonment of the application caused no actual delay in prosecution (e.g., an application awaiting decision by the Board of Appeals and Interferences during period of abandonment).
See MPEP § 1490 for additional information pertaining to terminal disclaimers.
H. Request for Reconsideration37 CFR 1.137(e) requires that any request for reconsideration or review of a decision refusing to revive an abandoned application must be filed within 2 months of the decision refusing to revive or within such time as set in the decision. 37 CFR 1.137(e) further provides that, unless a decision indicates otherwise, this time period for requesting reconsideration or review may be extended under the provisions of 37 CFR 1.136.
37 CFR 1.137(e) specifies a time period within which a renewed petition pursuant to 37 CFR 1.137 must be filed to be considered timely. Where an applicant files a renewed petition, request for reconsideration, or other petition seeking review of a prior decision on a petition pursuant to 37 CFR 1.137 outside the time period specified in 37 CFR 1.137(e), the Office may require, inter alia, a specific showing as to how the entire delay was “unintentional.” As discussed above, a delay resulting from the applicant deliberately choosing not to persist in seeking the revival of an abandoned application cannot be considered “unintentional” within the meaning of 37 CFR 1.137, and the correctness or propriety of the decision on the prior petition pursuant to 37 CFR 1.137, the correctness of the applicant’s (or the applicant’s representative’s) decision not to persist in seeking revival, the discovery of new information or evidence, or other change in circumstances subsequent to the abandonment or decision to not persist in seeking revival are immaterial to such intentional delay caused by the deliberate course of action chosen by the applicant.
I. Provisional Applications37 CFR 1.137 is applicable to a provisional application abandoned for failure to reply to an Office requirement. A petition under 37 CFR 1.137(a) must be accompanied by any outstanding reply to an Office requirement, since 37 CFR 1.137(c) permits the filing of a continuing application in lieu of the required reply only in a nonprovisional application.
35 U.S.C. 111(b)(5) provides that a provisional application shall be regarded as abandoned 12 months after its filing date and shall not be subject to revival after such 12-month period. 37 CFR 1.137(g) provides that a provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to 37 CFR 1.137, however a provisional application will not be regarded as pending after twelve months from its filing date under any circumstances. Note that the pendency of a provisional application is extended to the next succeeding secular or business day if the day that is twelve months after the filing date of the provisional application falls on a Saturday, Sunday, or federal holiday within the District of Columbia. See 35 U.S.C. 119(e)(3).
A provisional application may be abandoned prior to 12 months from its filing date for failure to reply to an Office requirement (e.g., failure to submit the filing fee and/or cover sheet). Applicant may petition to have an abandoned provisional application revived as a pending provisional application for a period of no longer than 12 months from the filing date of the provisional application where the delay was unintentional. It would be permissible to file a petition for revival later than 12 months from the filing date of the provisional application but only to revive the application for the 12-month period following the filing of the provisional application. Thus, even if the petition were granted to establish the pendency up to the end of the 12-month period, the provisional application would not be considered pending after 12 months from its filing date.
711.03(d) Examiner’s Statement on Petition To Set Aside Examiner’s Holding [R-08.2012]
37 CFR 1.181 states that the examiner “may be directed by the Director to furnish a written statement, within a specific time, setting forth the reasons for his or her decision upon the matters averred in the petition, supplying a copy to the petitioner.” Unless requested, however, such a statement should not be prepared. See MPEP § 1002.01.
711.04 Public Access to Abandoned Applications [R-07.2022]
Access to the application file itself for any non-Image File Wrapper (IFW) abandoned published application may be available through the Patent and Trademark Copy Fulfillment Branch Certified Copy Center (CCC). For ordering issues or general questions please call : 1-800-972-6382 or 571-272-3150; Monday – Friday (except federal holidays) Hours: 8:30 am – 5 pm ET. The file contents of the published application or a specific document in the file of the published application from the Patent and Trademark Copy Fulfillment Branch of the Public Records Division and payment of the appropriate fee set forth in 37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(ii).
Access to an abandoned unpublished application may be provided to any person if a written request for access is submitted, and the abandoned application is identified or relied upon:
- (A) in a U.S. patent application publication or patent;
- (B) in statutory invention registration; or
- (C) in an international application that is published in accordance with PCT Article 21(2).
An application is considered identified in a document such as a patent when the application number or serial number and filing date, first named inventor, title and filing date or other application specific information are provided in the text of the patent, but not when the identification is made in a paper in the file contents of the patent and is not included in the printed patent. See 37 CFR 1.14(a)(1)(iv). A copy of the application-as-filed, the file contents of the abandoned application, or a specific document in the file of the abandoned application may also be provided to any person upon written request, and payment of the fee set forth in 37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(iv). See also MPEP § 103. Form PTO/SB/68 may be used to request access of an abandoned application under 37 CFR 1.14(a)(1)(iv).
711.04(a) Date of Abandonment [R-07.2022]
Applications are not ordinarily reviewed for possible abandonment until the maximum permissible period for which an extension of time under 37 CFR 1.136(a) plus 1 month has expired.
The applications should be carefully scrutinized by the appropriate examiner to verify that they are actually abandoned. A check should be made of files containing a decision of the Patent Trial and Appeal Board for the presence of allowed claims to avoid erroneously treating the proceedings as terminated (see MPEP § 1214.06, subsections II-IV for proper treatment of any claims that stand allowed).
If the application is abandoned, the date of the abandonment is after midnight of the date on which the set shortened statutory period, including any extensions under 37 CFR 1.136, expired. This is normally the end of the 3-month shortened statutory period.
The following examples in which no retroactive extension of time is sought and no reply is filed by the applicant illustrate the expiration of the shortened statutory period and corresponding date the abandonment in different situations:
- 1. A non-final Office action was mailed on May 15, 2019 and set a 3 month shortened statutory period that expired on Thursday, August 15, 2019, which was a normal business day when the Office was open. In this situation, the date of abandonment is Friday, August 16, 2019.
- 2. A non-final Office action was mailed on May 16, 2019 and set a 3 month shortened statutory period that expired on Friday, August 16, 2019, which was a normal business day when the Office was open. In this situation, the date of abandonment is Saturday, August 17, 2019.
- 3. A non-final Office action was mailed on May 17, 2019 and set a 3 month shortened statutory period that expired on Saturday, August 17, 2019. Monday, August 19, 2019 was a normal business day when the Office was open. In this situation, the date of abandonment is Tuesday, August 20, 2019. The period for reply is extended to Monday, August 19, 2019 due to 35 U.S.C. 21 and 37 CFR 1.7. See MPEP § 710.05.
- 4. A non-final Office action was mailed on May 31, 2019 and set a 3 month shortened statutory period that expired on Saturday, August 31, 2019. Monday, September 2, 2019 was a federal holiday. Tuesday, September 3, 2019, was a normal business day when the Office was open. In this situation, the date of abandonment is Wednesday, September 4, 2019. The period for reply is extended to Tuesday, September 3, 2019 due to 35 U.S.C. 21 and 37 CFR 1.7. See MPEP § 710.05.
711.04(b) Ordering of Patented and Abandoned Files [R-07.2022]
In examination of an application it is sometimes necessary to inspect the application papers of a previously patented or abandoned application. It is always necessary to do so in the examination of a reissue application.
Recently patented and abandoned paper files are stored at the Files Repository. Older files are housed in warehouses located off site. Image File Wrapper (IFW) applications are stored electronically and do not have a paper file wrapper to be stored other than certain artifact material. The electronic file is the official record of the application.
Patented and abandoned paper files or artifact folders are ordered by means of the File Ordering System (FOS). To place such an order, the system requires a delivery organization (i.e. the examiner's art unit), employee number, and patent number(s) and/or application number(s) of the file(s) that are needed. After transmission of the requested transaction by the examiner, a “response” screen displays the status of the request for each file. The examiner is informed that the request is:
- (A) accepted;
- (B) accepted, but for which the file is stored at a warehouse off site (in which case delivery time is increased);
- (C) not accepted because the file is not located at the repository or warehouse;
- (D) not accepted because a previous request for the file has not yet been filled; or
- (E) not accepted because the patent or application number inputted is not valid.
Personnel at the Files Repository regularly perform a FOS print transaction which produces a list of all accepted requests in patent number order and, for requests for abandoned files, in application number order. The printed record of each request is detached from the list when its associated file is found and then stapled to it. Periodic deliveries of files are made to the offices of their requestors by Files Repository personnel, and files that are ready to be returned to the repository are picked up. For applications stored in IFW, this process is not necessary.
With the exception of certain older files, the drawings of patented and abandoned files, if any, are now stored within their respective application file wrappers. Since it is desired not to separate one from the other, both the file and its drawings are delivered when a file is ordered.
711.04(c) Notifying Applicants of Abandonment [R-07.2015]
The Patent Examining Corps currently mails to the correspondence address of record, a Notice of Abandonment form PTOL-1432 in all applications which become abandoned for failure to prosecute. However, in no case will mere failure to receive a notice of abandonment affect the status of an abandoned application.
This procedure should enable applicants to take appropriate and diligent action to reinstate an application inadvertently abandoned for failure to timely reply to an official communication. In most cases, a petition to revive under 37 CFR 1.137 will be the appropriate remedy. It may be that a reply to the Office action was mailed to the Office with a certificate of mailing declaration as a part thereof (MPEP § 512) but was not received in the Office. In this instance, adequate relief may be available by means of a petition to withdraw the holding of abandonment. See MPEP § 711.03(c).
In any instance, if action is not taken promptly after receiving the notice of abandonment, appropriate relief may not be granted. If a lack of diligent action is predicated on the contention that neither the Office action nor the notice of abandonment was received, one may presume that there is a problem with the correspondence address of record. Accordingly, attention is directed to MPEP §§ 403 and MPEP § 601.03(a) and (b) dealing with changes of address. In essence, it is imperative that a paper notifying the Office of a change of address be filed promptly in each application in which the correspondence address is to be changed (except as provided for under Customer Number practice — see MPEP § 403).
711.05 Letter of Abandonment Received After Application Is Allowed [R-08.2012]
Receipt of a letter of abandonment while an application is allowed is acknowledged by the Publishing Division.
An express abandonment arriving after the issue fee has been paid will not be accepted without a showing of one of the reasons indicated in 37 CFR 1.313(c), or else a showing under 37 CFR 1.183 justifying suspension of 37 CFR 1.313. See also MPEP § 711.01.
711.06 Abstracts, Abbreviatures, and Defensive Publications [R-10.2019]
I. ABSTRACTSAbstracts were prepared and published in accordance with the Notice of January 25, 1949, 619 OG 258. Each abstract includes a summary of the disclosure of the abandoned application, and in applications having drawings, a figure of the drawing. The publication of such abstracts was discontinued in 1953.
II. ABBREVIATURESAbbreviatures were prepared and published in accordance with the procedure indicated in the Notice of October 13, 1964, 808 OG 1. Each abbreviature contains a specific portion of the disclosure of the abandoned application, preferably a detailed representative claim, and, in applications having drawings, a figure of the drawing. The publication of such abbreviatures was discontinued in 1965.
III. DEFENSIVE PUBLICATIONSThe Defensive Publication Program, which provided for the publication of the abstract of the technical disclosure of a pending application if the applicant waived his or her rights to an enforceable patent, was available between April 1968 and May 8, 1985. The program was ended in view of the applicant’s ability to obtain a Statutory Invention Registration.
An application was laid open for public inspection under the Defensive Publication Program and the applicant provisionally abandoned the application, retaining rights to an interference for a limited period of 5 years from the earliest effective U.S. filing date.
The Defensive Publication Abstract and a selected figure of the drawing, if any, were published in the Official Gazette. Defensive Publication Search Copies, containing the defensive publication abstract and suitable drawings, if any, were provided for the application file, the Patent Search Room and the examiner’s search files. A defensive publication is not a patent or an application publication under 35 U.S.C. 122(b); it is a publication. Therefore, it is prior art only as of its publication date.
The defensive publication application files are accessible by request to the File Information Unit (Record Room).
Defensive Publication NumberDistinct numbers are assigned to all Defensive Publications published December 16, 1969 through October 1980, for example.
For Defensive Publications published on and after November 4, 1980, a different numbering system is used.
The revised numbering system is as follows:
Defensive Publications are included in subclass lists and subscription orders. The distinct numbers are used for all official reference and document copy requirements.
A conversion table from the application serial number to the distinct number for all Defensive Publications published before December 16, 1969 appears at 869 OG 687.
711.06(a) Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References [R-10.2019]
It is important that abstracts, abbreviatures, and defensive publications (OG Defensive Publication and Defensive Publication Search Copy) be referred to as publications.
These printed publications are cited as prior art under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) or 102(b) effective from the date of publication in the Official Gazette. See Ex parte Osmond, 191 USPQ 334 (Bd. App. 1973) and Ex Parte Osmond, 191 USPQ 340 (Bd. App. 1976).
An application or portion thereof from which an abstract, abbreviature or defensive publication has been prepared may be used as a reference under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a), effective from the actual date of filing in the United States, only for evidence of prior knowledge of another.
These publications may be used alone or in combination with other prior art in rejecting claims under 35 U.S.C. 102(a)(1) or 103 or pre-AIA 35 U.S.C. 102 and 103.
Defensive Publications are listed with “U.S. Patent Documents.” Abstracts and Abbreviatures are listed under “Other References” in the citation thereof as follows:
- (A) Abstracts and Abbreviatures
- Brown, (abstract or abbreviature) of Serial No. ........, filed ............., published in OG ........., on ........, (list classification).
- (B) Applications or designated portions thereof, abstracts,
abbreviatures, and defensive publications
- Jones, Application Serial No. ........, filed ............., laid open to public inspection on ............... as noted at .......... OG (portion of application relied on), (list classification, if any).