Unlocatable Patent or Application Files

37 CFR 1.251  Unlocatable file.

(a) In the event that the Office cannot locate the file of an

application, patent, or other patent-related proceeding after a reasonable

search, the Office will notify the applicant or patentee and set a time period

within which the applicant or patentee must comply with the notice in

accordance with one of paragraphs (a)(1), (a)(2), or (a)(3) of this

section.

(1) Applicant or patentee may comply with a notice under this

section by providing:

(i) A copy of the applicant’s or patentee’s record (if

any) of all of the correspondence between the Office and the

applicant or patentee for such application, patent, or other

proceeding (except for U.S. patent documents);

(ii) A list of such correspondence; and

(iii) A statement that the copy is a complete and

accurate copy of the applicant’s or patentee’s record of all of the

correspondence between the Office and the applicant or patentee for

such application, patent, or other proceeding (except for U.S.

patent documents), and whether applicant or patentee is aware of

any correspondence between the Office and the applicant or patentee

for such application, patent, or other proceeding that is not among

applicant’s or patentee’s records.

(2) Applicant or patentee may comply with a notice under this

section by:

(i) Producing the applicant’s or patentee’s record (if

any) of all of the correspondence between the Office and the

applicant or patentee for such application, patent, or other

proceeding for the Office to copy (except for U.S. patent

documents); and

t, or other proceeding that is not among

applicant’s or patentee’s records.

(2) Applicant or patentee may comply with a notice under this

section by:

(i) Producing the applicant’s or patentee’s record (if

any) of all of the correspondence between the Office and the

applicant or patentee for such application, patent, or other

proceeding for the Office to copy (except for U.S. patent

documents); and

(ii) Providing a statement that the papers produced by

applicant or patentee are applicant’s or patentee’s complete record

of all of the correspondence between the Office and the applicant

or patentee for such application, patent, or other proceeding

(except for U.S. patent documents), and whether applicant or

patentee is aware of any correspondence between the Office and the

applicant or patentee for such application, patent, or other

proceeding that is not among applicant’s or patentee’s records.

(3) If applicant or patentee does not possess any record of

the correspondence between the Office and the applicant or patentee for

such application, patent, or other proceeding, applicant or patentee must

comply with a notice under this section by providing a statement that

applicant or patentee does not possess any record of the correspondence

between the Office and the applicant or patentee for such application,

patent, or other proceeding.

(b) With regard to a pending application, failure to comply with

one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time

period set in the notice will result in abandonment of the application.

37 CFR

1.251

sets forth a procedure for the reconstruction of the file of

a patent application, patent, or any other patent-related proceeding that cannot be

located after a reasonable search. The phrase “an application” in

37 CFR 1.251

applies to any type of application (national or international), and regardless of the

status (pending or abandoned) of the application

ndonment of the application.

37 CFR

1.251

sets forth a procedure for the reconstruction of the file of

a patent application, patent, or any other patent-related proceeding that cannot be

located after a reasonable search. The phrase “an application” in

37 CFR 1.251

applies to any type of application (national or international), and regardless of the

status (pending or abandoned) of the application.

37 CFR

1.251(a)

provides that in the event the Office cannot locate the

file of an application, patent, or any other patent-related proceeding after a

reasonable search, the Office will notify the applicant or patentee and set a time

period within which the applicant or patentee must comply with the notice. The applicant

or patentee may comply with a notice under

37 CFR 1.251

by providing: (1) a

copy of his or her record (if any) of all of the correspondence between the Office and

the applicant or patentee for such application, patent, or other proceeding (except for

U.S. patent documents); (2) a list of such correspondence; and (3) a statement that the

copy is a complete and accurate copy of the applicant’s or patentee’s record of all of

the correspondence between the Office and the applicant or patentee for such

application, patent, or other proceeding (except for U.S. patent documents), and whether

applicant or patentee is aware of any correspondence between the Office and the

applicant or patentee for such application, patent, or other proceeding that is not

among applicant’s or patentee’s records (

37 CFR 1.251(a)(1)

). The applicant

or patentee may also comply with a notice under

37 CFR 1.251

by: (1) producing his

or her record (if any) of all of the correspondence between the Office and the applicant

or patentee for such application, patent, or other proceeding for the Office to copy

(except for U.S

lication, patent, or other proceeding that is not

among applicant’s or patentee’s records (

37 CFR 1.251(a)(1)

). The applicant

or patentee may also comply with a notice under

37 CFR 1.251

by: (1) producing his

or her record (if any) of all of the correspondence between the Office and the applicant

or patentee for such application, patent, or other proceeding for the Office to copy

(except for U.S. patent documents); and (2) providing a statement that the papers

produced by applicant or patentee are applicant’s or patentee’s complete record of all

of the correspondence between the Office and the applicant or patentee for such

application, patent, or other proceeding (except for U.S. patent documents), and whether

applicant or patentee is aware of any correspondence between the Office and the

applicant or patentee for such application, patent, or other proceeding that is not

among applicant’s or patentee’s records (

37 CFR 1.251(a)(2)

). If applicant or

patentee does not possess any record of the correspondence between the Office and the

applicant or patentee for such application, patent, or other proceeding, the applicant

or patentee must comply with a notice under

37 CFR 1.251

by providing a

statement that applicant or patentee does not possess any record of the correspondence

between the Office and the applicant or patentee for such application, patent, or other

proceeding (

37 CFR

1.251(a)(3)

).

According to

37 CFR 1.251(a)

, if the applicant or

patentee possesses all or just some of the correspondence between the Office and the

applicant or patentee for such application, patent, or other proceeding, the applicant

or patentee is to reply by providing a copy of (or producing) his or her record of all

of the correspondence between the Office and the applicant or patentee for such

application, patent, or other proceeding (

37 CFR 1.251(a)(1) or (a)(2)

)

sesses all or just some of the correspondence between the Office and the

applicant or patentee for such application, patent, or other proceeding, the applicant

or patentee is to reply by providing a copy of (or producing) his or her record of all

of the correspondence between the Office and the applicant or patentee for such

application, patent, or other proceeding (

37 CFR 1.251(a)(1) or (a)(2)

). If

applicant or patentee does not possess any record of the correspondence between the

Office and the applicant or patentee for such application, patent, or other proceeding,

the applicant or patentee is to reply with a statement to that effect (

37 CFR

1.251(a)(3)

).

If an applicant or patentee decides to produce his or her record of the

correspondence between the Office and the applicant or patentee for the application,

patent, or other proceeding for copying by the Office under

37 CFR 1.251(a)(2)

(rather than provide a copy under

37 CFR 1.251(a)(1)

), the record

should be brought to the Customer Service Center in the Office of Patent Application

Processing (OPAP).

The Office will set a time period of three months for reply in a notice

under

37 CFR

1.251

in an application. The time period will be extendable under

37 CFR

1.136(a)

(unless the notice indicates otherwise) by three months

up to a maximum period for reply of six months in an application. See

35 U.S.C. 133

.

If, however, an applicant fails to reply to a notice under

37 CFR 1.251

within three months of its mailing date, any patent term adjustment under

35 U.S.C.

154(b)

will be reduced by a period equal to the number of days (if

any) beginning on the day after the date that is three months after the mailing date of

the notice under

37

CFR 1.251

and ending on the date the reply to the notice under

37 CFR

1.251

was filed. See

35 U.S.C. 154(b)(2)(C)(ii)

and

37 CFR

1.704(b)

. The Office will set a time period of six months for

reply in a notice under

37 CFR 1.251

in a patent

reduced by a period equal to the number of days (if

any) beginning on the day after the date that is three months after the mailing date of

the notice under

37

CFR 1.251

and ending on the date the reply to the notice under

37 CFR

1.251

was filed. See

35 U.S.C. 154(b)(2)(C)(ii)

and

37 CFR

1.704(b)

. The Office will set a time period of six months for

reply in a notice under

37 CFR 1.251

in a patent. The time

period will

not

be extendable under

37 CFR 1.136(a)

in a patent because

35 U.S.C.

41(a)(8)

only authorizes the Office to charge fees for extensions

of time in proceedings involving an application.

37 CFR

1.251

generally applies only to situations in which the file of an

application or patent (not just certain documents) is unlocatable. When a document is

missing from an application, Office practice is to call the applicant’s representative

and request submission (generally by facsimile) of a copy of the missing document. While

the Office will generally treat missing documents in this relatively informal manner

(rather than issuing a notice under

37 CFR 1.251

), the Office may issue

a notice under

37 CFR

1.251

to obtain a copy of a missing document if the Office’s

informal attempts to obtain a copy of the document are unsuccessful. The notice under

37 CFR

1.251

will include a printout of the contents entries from the

Office’s electronic record system.

Any appendix or information disclosure statement submitted with an

application is not contained in the Office’s database. Therefore, the applicant or

patentee must also provide a copy of any appendix or information disclosure statement

(except in the limited circumstance discussed below) submitted with the application.

Since the Office can obtain copies of U.S. patent documents (U.S. patent application

publications and patents) from its internal databases, the Office is not requiring

applicants or patentees to provide copies of U.S

applicant or

patentee must also provide a copy of any appendix or information disclosure statement

(except in the limited circumstance discussed below) submitted with the application.

Since the Office can obtain copies of U.S. patent documents (U.S. patent application

publications and patents) from its internal databases, the Office is not requiring

applicants or patentees to provide copies of U.S. patent application publications and

patents that are among the applicant’s or patentee’s record of the correspondence

between the Office and the applicant or patentee for the application, patent, or other

proceeding.

37 CFR

1.251(b)

provides that with regard to a pending application, the

failure

to provide a reply to such a notice within the time period set

in the notice will result in

abandonment

of the application. While

abandonment (or expiration) of a patent is not an issue if a patentee fails to timely

comply with a notice under

37 CFR 1.251

, in such a situation

the only certified copy of the patent file that the Office will be able to produce will

be a copy of the patent and a copy of the application-as-filed (which may have an

adverse impact during attempts to enforce the patent). In addition, if the patent is

involved in a proceeding before the Office, the Office may take action under

37 CFR

41.128

or

37 CFR 11.18

.

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