Petition for Entry of Late Papers for Revival of Reexamination Proceeding

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.

35 U.S.C. 41

Patent fees; patent and trademark search systems.

(a) GENERAL FEES. — The Director shall charge the following fees:

*****

(7) REVIVAL FEES. — 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, $1,700. The Director may refund any part of the fee specified

in this paragraph, in exceptional circumstances as determined by the

Director.

*****

35 U.S.C. 133

Time for prosecuting application.

Upon failure of the applicant to prosecute the application within six

months after any action therein, of which notice has been given or mailed to the

applicant, or within such shorter time, not less than thirty days, as fixed by the

Director in such action, the application shall be regarded as abandoned by the parties

thereto.

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)

.

R 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.

*****

(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

y, 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

.

*****

Pursuant to

37 CFR 1.550(d)

, the prosecution of an

ex parte

reexamination proceeding is terminated if the patent owner

fails to file a timely and appropriate response to any Office action or any written

statement of an interview required under

37 CFR 1.560(b)

. An

ex

parte

reexamination prosecution terminated under

37 CFR 1.550(d)

can

be revived if the delay in response by the patent owner (or the failure to timely file the

interview statement) was unintentional in accordance with

37 CFR 1.137

.

The failure to timely file a statement pursuant to

37 CFR 1.530

or a

reply pursuant to

37 CFR

1.535

, however, would not (under ordinary circumstances) constitute

adequate basis to justify a showing of unintentional delay regardless of the reasons for

the failure, since failure to file a statement or reply does not result in a “termination”

of the reexamination prosecution, to which

37 CFR 1.137

is directed.

All petitions in reexamination proceedings to accept late papers and to

revive the proceedings will be decided in the Office of Patent Legal Administration.

I

e basis to justify a showing of unintentional delay regardless of the reasons for

the failure, since failure to file a statement or reply does not result in a “termination”

of the reexamination prosecution, to which

37 CFR 1.137

is directed.

All petitions in reexamination proceedings to accept late papers and to

revive the proceedings will be decided in the Office of Patent Legal Administration.

I.

PETITION BASED ON UNAVOIDABLE DELAY IS NO LONGER AVAILABLE

37 CFR

1.137

was revised to implement the changes in the Patent Law

Treaties Implementation Act of 2012 (PLTIA) to eliminate revival of an abandoned

application and reexamination prosecution terminated under

§ 1.550(d)

under

the ‘‘unavoidable’’ standard, and to provide for the revival of abandoned applications

and the acceptance of delayed responses in reexamination by patent owners on the basis

of unintentional delay. Specifically, section 201(b) of the PLTIA added new

35 U.S.C.

27

, which provides 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. Accordingly,

37 CFR 1.137(a)

was amended to

eliminate the provisions pertaining to petitions on the basis of unavoidable delay.

These changes were effective on December 18, 2013, and apply to all any patent

application filed before, on, or after December 18, 2013, to any patent resulting from

an application filed before, on, or after December 18, 2013, to any reexamination

proceeding filed before, on, or after December 18, 2013, and to any reexamination

proceeding resulting from a supplemental examination proceeding filed before, on, or

after December 18, 2013.

II.

PETITION BASED ON UNINTENTIONAL DELAY

As discussed in paragraph I above, section 201(b) of the

PLTIA added new

35 U.S.C

om

an application filed before, on, or after December 18, 2013, to any reexamination

proceeding filed before, on, or after December 18, 2013, and to any reexamination

proceeding resulting from a supplemental examination proceeding filed before, on, or

after December 18, 2013.

II.

PETITION BASED ON UNINTENTIONAL DELAY

As discussed in paragraph I above, section 201(b) of the

PLTIA added new

35 U.S.C. 27

, which provides that

the Director may establish procedures to accept an unintentionally delayed response by

the patent owner in a reexamination proceeding, upon petition by the patent owner. The

patent laws formerly provided for revival of an unintentionally abandoned application

only in the patent fee provisions of

35 U.S.C. 41(a)(7)

. See Public Law

97–247, section 3(a), 96 Stat. 317–18 (1982). The unintentional delay fee provisions of

35 U.S.C.

41(a)(7)

were imported into, and were applicable to, all

ex parte

reexamination proceedings by section 4605 of the American

Inventors Protection Act of 1999. The unintentional delay provisions of

35 U.S.C.

41(a)(7)

became effective in reexamination proceedings on November

29, 2000. However, this statutory structure raised questions concerning the Office’s

authority to revive an unintentionally abandoned application (without a showing of

unavoidable delay) in certain situations. See e.g.,

Aristocrat Techs. Australia

Pty Ltd. v. Int’l Game Tech.,

543 F.3d 657, 88 USPQ2d 1458 (Fed. Cir.

2008).

37 CFR

1.137(a)

, as amended in the final rule to implement the PLTIA,

provides that if the delay in reply by patent owner was unintentional, a petition may be

filed pursuant to

37

CFR 1.137

to revive a reexamination prosecution terminated under

37 CFR

1.550(d)

.

37 CFR 1.137(b)

states the petition

requirements

Australia

Pty Ltd. v. Int’l Game Tech.,

543 F.3d 657, 88 USPQ2d 1458 (Fed. Cir.

2008).

37 CFR

1.137(a)

, as amended in the final rule to implement the PLTIA,

provides that if the delay in reply by patent owner was unintentional, a petition may be

filed pursuant to

37

CFR 1.137

to revive a reexamination prosecution terminated under

37 CFR

1.550(d)

.

37 CFR 1.137(b)

states the petition

requirements. Specifically, for

ex parte

reexamination proceedings,

37 CFR

1.137(b)

provides that a grantable petition pursuant to

37 CFR

1.137

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

37 CFR 1.17(m)

; and (3) 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.

37 CFR 1.137

continues to provide that the Director may require additional information where there is

a question whether the delay was unintentional. See

MPEP § 711.03(c)

,

subsection II for more information about petitions under

37 CFR 1.137

.

III.

RENEWED PETITION

Reconsideration may be requested of a decision dismissing or denying a

petition under

37 CFR

1.137

to revive a terminated reexamination prosecution. The

request for reconsideration must be submitted within two months from the mail date of

the decision for which reconsideration is requested. An extension of time may be

requested only under

37 CFR 1.550(c)

; extensions of time under

37 CFR 1.136

are

not available in reexamination proceedings. The extension of time provisions of

37 CFR

1.550(c)

also apply to any request for an extension filed in a

reexamination proceeding ordered under

35 U.S.C. 257

as a result of a

supplemental examination proceeding. Any reconsideration request which is submitted

should include a cover letter entitled “Renewed Petition under

37 CFR 1.137

”.

IV

CFR 1.136

are

not available in reexamination proceedings. The extension of time provisions of

37 CFR

1.550(c)

also apply to any request for an extension filed in a

reexamination proceeding ordered under

35 U.S.C. 257

as a result of a

supplemental examination proceeding. Any reconsideration request which is submitted

should include a cover letter entitled “Renewed Petition under

37 CFR 1.137

”.

IV.

FURTHER DISCUSSION OF THE PETITION REQUIREMENTS

See also

MPEP § 711.03(c)

for a detailed discussion of the

requirements of petitions filed under

37 CFR 1.137

.

[top]