# MPEP § 711.03(c): Petitions Relating to Abandonment

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S711.03(c)

## Section

- **Citation:** MPEP § 711.03(c)
- **Heading:** Petitions Relating to Abandonment
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO MPEP / Chapter 0700 - Examination of Applications / MPEP § 711.03(c)

## Text

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.

## Nearby sections

- [MPEP § 701 Statutory Authority for Examination](https://www.frixlaw.com/law-library/statutes/MPEP_S701.md)
- [MPEP § 702 Requisites of the Application](https://www.frixlaw.com/law-library/statutes/MPEP_S702.md)
- [MPEP § 702.01 Obviously Informal Cases](https://www.frixlaw.com/law-library/statutes/MPEP_S702.01.md)
- [MPEP § 703 [Reserved]](https://www.frixlaw.com/law-library/statutes/MPEP_S703.md)
- [MPEP § 704.01 Search](https://www.frixlaw.com/law-library/statutes/MPEP_S704.01.md)
- [MPEP § 704.10 Requirements for Information](https://www.frixlaw.com/law-library/statutes/MPEP_S704.10.md)
- [MPEP § 704.11 What Information May Be Required](https://www.frixlaw.com/law-library/statutes/MPEP_S704.11.md)
- [MPEP § 704.11(a) Examples of Information Reasonably Required](https://www.frixlaw.com/law-library/statutes/MPEP_S704.11(a).md)
- [MPEP § 704.11(b) When May a Requirement for Information Be Made](https://www.frixlaw.com/law-library/statutes/MPEP_S704.11(b).md)
- [MPEP § 704.12 Replies to a Requirement for Information](https://www.frixlaw.com/law-library/statutes/MPEP_S704.12.md)
- [MPEP § 704.12(a) Relationship of Requirement for Information to Duty of Disclosure](https://www.frixlaw.com/law-library/statutes/MPEP_S704.12(a).md)
- [MPEP § 704.12(b) What Constitutes a Complete Reply](https://www.frixlaw.com/law-library/statutes/MPEP_S704.12(b).md)
- [MPEP § 704.12(c) Treatment of an Incomplete Reply](https://www.frixlaw.com/law-library/statutes/MPEP_S704.12(c).md)
- [MPEP § 704.13 Time Periods for Reply](https://www.frixlaw.com/law-library/statutes/MPEP_S704.13.md)

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S711.03(c). Check the current official text before relying on it. Not legal advice.