Express Abandonment to Avoid Publication

37 CFR 1.138  Express abandonment

*****

(c) An applicant seeking to abandon an application to avoid

publication of the application (

37 CFR 1.211(a)(1)

) must

submit a declaration of express abandonment by way of a petition under this

paragraph 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. Applicants 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.

*****

Applicants seeking to abandon an application to avoid publication of the

application are urged to do so by filing a petition under

37 CFR 1.138(c)

and

submitting a declaration of express abandonment and the fee set forth in

37 CFR

1.17(h)

in sufficient time to permit the appropriate officials

(Office of Data Management – Patent Publication Branch) to recognize the abandonment and

remove the application from the publication process. Applicants may use form PTO/AIA/24A

for applications filed on or after September 16, 2012 or form PTO/SB/24A for applications

filed before September 16, 2012 for filing a petition for express abandonment to avoid

publication under

37 CFR

1.138(c)

.(see

MPEP § 1135

) and file the petition

electronically using the USPTO patent electronic filing system, or mail the petition to

Mail Stop Express Abandonment

, or transmit the petition via facsimile to

the Office at

after September 16, 2012 or form PTO/SB/24A for applications

filed before September 16, 2012 for filing a petition for express abandonment to avoid

publication under

37 CFR

1.138(c)

.(see

MPEP § 1135

) and file the petition

electronically using the USPTO patent electronic filing system, or mail the petition to

Mail Stop Express Abandonment

, or transmit the petition via facsimile to

the Office at

(571) 273 8300

(see

MPEP § 1730

). Filing the petition using

the USPTO patent electronic filing system will increase the chances of such petition being

received by the appropriate officials in sufficient time to avoid publication of an

application.

Any applicant seeking to abandon the application for the purpose of

avoiding publication must take appropriate action well prior to the projected publication

date. If the application is not recognized as abandoned at least four weeks prior to the

projected publication date, the Office will not be able to avoid publication of the

application. This does not imply that a request to expressly abandon an application to

avoid publication filed prior to this four-week time frame will ensure that the Office will

be able to remove an application from publication. The Office simply cannot ensure that it

can remove an application from publication or avoid publication of application information

any time after the publication process for the application is initiated (about 4 months

prior to the projected publication date).

The petition for express abandonment to avoid publication will be granted

when it is recognized in sufficient time to avoid publication and will be denied when it is

not recognized in sufficient time to avoid publication of the application

ion of application information

any time after the publication process for the application is initiated (about 4 months

prior to the projected publication date).

The petition for express abandonment to avoid publication will be granted

when it is recognized in sufficient time to avoid publication and will be denied when it is

not recognized in sufficient time to avoid publication of the application. This will avert

the situation in which an applicant files a letter of express abandonment to avoid

publication, the letter of express abandonment is not recognized in sufficient time to

avoid publication, upon publication the applicant wishes to rescind the letter of express

abandonment, and the Office cannot revive the application (once the letter of express

abandonment is recognized) because the application was expressly and intentionally

abandoned by the applicant.

[top]