Abandonment of a patent application is sometimes deliberate. Maybe the prior art is too good, maybe the available scope of protection isn’t commercially important.
But sometimes abandonment is unintentional. Maybe you instructed your attorney to abandon the wrong case, based on a mistaken idea of which case should be abandoned.
Most commonly, maybe you simply missed a deadline.
There is a universe of reasons for abandonments that fall under the umbrella of “unintentional abandonment”. What to do if your case is one of them? How do you revive an application abandoned unintentionally, and convert it to a live application?
What this article does not cover
Some abandonments are clearly intentional, and even if you now rue your intentional decision to abandon, then this article is not for you.
Revival of an application that was intentionally abandoned is complicated, and the outcome is uncertain. Maybe you will be successful, but more likely not. Get and keep a good attorney, and follow his/her advice carefully.
This article also does not cover situations where the abandonment is not your fault. Maybe the PTO mailed an Office Action that you never received, or mailed it to the wrong address. That’s not your fault. There are procedures available for various ones of the faultless scenarios. For example, if you never received the Office Action, then a Petition is the appropriate course of action: File the Petition under 37 C.F.R. § 1.181(a) requesting withdrawal of the holding of abandonment. Such Petition does not require a fee. See part I of MPEP § 711.03(c).
Unintentional Abandonments and Petitions for Revival
If the abandonment was unintentional, then despair not, even if the abandonment was your own fault. There are clear paths towards revival, and most of them are ultimately successful.
The most straightforward is a Petition to Revive, filed under 37 C.F.R. § 1.137. The process is explained at MPEP § 711.03(c) and basically requires only the following:
1. The Petition itself;
2. The missing reply, i.e., the thing you didn’t do that resulted in abandonment;
3. A petition fee which (as of this writing in January 2018) can be as low as $500 for a micro-entity, $1000 for a small entity;
4. Maybe a Terminal Disclaimer, but probably not, unless your application was filed before 1995; and
5. A statement that the entire delay was unintentional.
Let’s talk about items 1 and 2, since they might be the most unfamiliar.
For item 1 (the Petition), the PTO has made this ridiculously easy: they provide a form, called PTO/SB/64, with the too-long title of “Petition For Revival of an Application For Patent Abandoned Unintentionally Under 37 CFR 1.137(a)”. It’s available here: https://www.uspto.gov/sites/default/files/forms/sb0064.pdf.PTO/SB64 - Petition to Revive
Use of the form has a few benefits, of which one is that Petitions Examiners recognize it and act on it quickly. Perhaps an even more significant benefit is that it includes the statement mentioned at item 5, to the effect that the entire delay was unintentional. That’s important because the PTO is looking for some very specific wording, as follows:
STATEMENT: 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 C.F.R. § 1.137(a) was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
Use of the form thus satisfies the requirement for a Petition and at the same time guarantees that correct language is used. Of course, you should ensure that the language is accurate for your situation.
What about item 2, i.e., the missing response? This depends on the reason for abandonment, such as failure to pay a fee or to supply a missing drawing. But if the reason for abandonment is failure to prosecute, then there is one “missing response” that covers all situations, regardless of the failure: simply file (with the Petition) a continuing application. That covers all scenarios if the reason for abandonment is failure to prosecute. See MPEP § 711.03(c): “In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application.”
If you are unwilling to file a continuing application, then the “missing response” will be different for differing reasons for abandonment. Let’s say the application went abandoned for failure to reply to a non-final Office Action. In that case, the “missing response” is simply the response to the Office Action that should have been filed back at its due date. Note that one nice thing about this scenario is that there are no fees for extension of time. Suppose, for example, you had a response all ready for the six-month date, with a three month extension of time, but forgot to mail it. In this case, the Petition would include your already-prepared response, but no extension of time is needed.
How about failure to respond to an Office Action marked as “final”. Here, the “missing response” could be (i) a Notice of Appeal, or (ii) and RCE, or (iii) a continuing application as mentioned above.
Another commonly-encountered situation is failure to pay a needed fee. Here, the “missing response” is simply the unpaid fee.
Subsection II of 37 C.F.R. § 711.03(c) lists a few more examples. Refer to it.
ePetitions: It gets even better
One drawback of the procedure described above is that it’s a paper-based procedure, in which the Petition is routed to the Petitions Branch for ultimate decision. As such, the decision on revival might take a significant chunk of time, usually several months.
But if your abandonment meets a few extra criteria, then the Petition can be filed electronically (it’s called an ePetition), and the ePetition will automatically be granted immediately.
That’s worth repeating: immediate and automatic grant if your ePetition meets the criteria.
And those criteria are:
1. The Examiner has issued a Notice of Abandonment; and
2. The application has been abandoned for less than two (2) years; and
3. In the case of a final rejection, you agree to limit your “missing response” to an RCE or an appeal
If you meet these criteria, an ePetition is clearly the way to go. In fact, it’s so advantageous that if item 1 is not met, i.e., the Examiner has not yet issued a Notice of Abandonment, then it’s worthwhile to call the Examiner and ask him to issue it.
The paper form of Petition (e.g., the PTO/SB/64) is replaced with an on-line ePetition, and on hitting the “submit” button, the ePetition will be granted automatically. Note that you must be a registered EFS-Web user (it’s easy to register too).
The ePetition process is described in much more detail in the PTO publication titled “EFS-Web ePetitions: Quick Start Guide” available at URL: https://www.uspto.gov/sites/default/files/patents/process/file/efs/guidance/epetition-quickstart.pdf. See page 34.ePetition-Quickstart-Guide
Abandonments can be traumatic, but as always, the PTO has procedures in place.
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