Petitions Relating to Abandonment

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)

.

FR 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

.

onprovisional 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.

hat 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.

(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.

at 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.

*****

(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.

*****

I.

PETITION TO WITHDRAW HOLDING OF ABANDONMENT

A petition to revive an abandoned application (discussed below)

should not be confused with a petition from an examiner’s holding of abandonment

ot 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.

*****

I.

PETITION TO WITHDRAW HOLDING OF ABANDONMENT

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 Action

In

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

)

e 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 Practitioner

The 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

titioner 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

Applicant

When 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

equired

of a

Pro Se

Applicant

When 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 petitioner is reminded

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 petitioner, 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 petitioner 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

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 petitioner 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 Filed

37 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

ely 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

s 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 USPTO patent electronic filing

system (currently Patent Center) for the status of the correspondence before

notifying the Office. See

MPEP § 512

.

C.

Treatment of Untimely Petition To Withdraw Holding of

Abandonment

37 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

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 Abandonment

In 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.

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 Abandonment

In 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

plication

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, 2000

In 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, 2000

In 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

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, 2000

In 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 FEE

Effective 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

(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

s 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 Requirement

Unlike 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

een 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

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

Fee

In 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

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 dollar amount 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 dollar 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 dollar amount specified in the notice of allowance. By contrast,

for timely filed issue fee payments, in the event of an entity status

change, payment is made in the amount corresponding to the newly established

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 dollar amount specified in the notice of allowance. By contrast,

for timely filed issue fee payments, in the event of an entity status

change, payment is made in the amount corresponding to the newly established

status. This practice is reflected in section I of the “HOW TO REPLY TO THIS

NOTICE” section of the Notice of Allowance, which is reproduced in

MPEP §

1303

.

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 Drawings

In 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 Action

The 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

ng 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 Action

A 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

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

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 Brief

In 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).

(d)

Filing an RCE as the Required Reply

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

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

Office

The 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

by the

Office

The 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

.

5.

Abandonment for Failure To Notify the Office of a Foreign Filing

After the Submission of a Non-Publication Request

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

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

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 Requirement

35 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

r 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 Delay

The 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

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)

nal 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

e] 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 prosecutio

ing 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 under

37 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)

r 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 Petition

There 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

ion 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

37

. 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

ling 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 Relevant

The 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)

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

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 Delay

37 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 Requirement

37 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

Requirement

37 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

nt 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

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

ent 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 Reconsideration

37 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 see

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 Applications

37 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)

ar 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.