Can an abandoned patent application be revived?
Under certain circumstances, yes. An abandoned patent application may be revived depending upon the following key factors:
- reason for abandonment; and
- length of time it took for the applicant to seek revival.
What is abandonment?
A patent application typically becomes abandoned due to the applicant’s failure to take certain required actions within a particular timeframe. Such a failure may include either an insufficient reply or no response at all. If extensions of time were available, abandonment would not occur until after all extended deadlines have lapsed.
An applicant may also expressly abandon a patent application by filing a written declaration of abandonment with the USPTO.
What are justifiable excuses for abandonment that will enable revival?
The reasons for abandonment generally fall under two categories:
- unintentional abandonment; or
- intentional abandonment.
Clearly, an express abandonment of an application would be considered intentional.
What is unintentional abandonment?
People make mistakes. Perhaps, you calendared the wrong date or thought more time was available to respond to an Office Action. If you have multiple patents pending, perhaps you misidentified the application serial number for a particular deadline. Such circumstances would generally warrant revival based on unintentional abandonment.
A deliberate decision to let an application lapse generally would not be considered unintentional abandonment.
When should an applicant seek revival of an abandoned patent application?
Promptness is key. The applicant must declare that the entire delay from the abandonment date to the date of the petition for revival was unintentional. The keyword is entire. If an applicant discovers that their application became abandoned and then waits for several months to file a petition, an issue will arise as to whether the entire delay was unintentional.
The USPTO usually issues a Notice of Abandonment to the applicant or its representative. Unless an applicant argues that they never received the notice, the issue date of the Notice of Abandonment starts the clock ticking on how promptly the applicant seeks revival.
How to revive abandoned patent application
A petition for revival must be filed with the USPTO promptly after the applicant discovers that their application has been abandoned. The petition submission must include the:
- Petition form [PTO/SB/64] which can be electronically filed;
- Petition fee;
- Required response (e.g., Office Action reply); and
- Statement that “The entire delay in filing the required reply from the due date for the required reply until the filing of a grantable petition under 37 CFR 1.137(a) was unintentional.” (included in the USPTO petition form).
In certain circumstances, a terminal disclaimer may also be required.
Note that the USPTO petition for revival form does not require any detailed reasons explaining the unintentional abandonment.
When will the USPTO require additional information about the applicant’s delay?
When a petition to revive an abandoned patent application is filed more than two years after the date the application was abandoned, the USPTO may require additional information about whether the delay in seeking revival was unintentional, such as the cause of the delay.
Abandonment vs. Late filing of new application
Abandonment relates to an application that had already been filed. What if the missed deadline pertains to a new application that has not yet been filed? Suppose you missed filing a non-provisional application claiming priority to a previously filed provisional application, or a US national stage application based on a PCT application. There are grace periods for the late filing of certain patent applications, but you should act promptly.
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