Preface
This brief note is not legal advice and is for educational purposes only.
So for whatever reason (except express abandonment or intentional abandonment) you find that you have blown past a hard deadline (i.e. no time extensions are available) for a response and now your patent application is abandoned. Note that it does not matter if you have not yet received a notice of abandonment from the USPTO (US Patent and Trademark Office) as it can take the USPTO months to get such a notice out. As soon as you are past the hard deadline it’s abandoned.
It's abandoned - now what?
Here’s a brief note on these issues.
| Reason for Abandonment | What can be done (all of these can be filed online via EFS) |
|---|---|
| Failed to respond to an office action | Do these at the same time 1) File petition to revive, pay revival fee for unintentional delay (unavoidable rarely used) (Can be filed using e-form online or use form PTO/SB/64.) 2) File a response |
| Forgot to pay issue or renewal fee | Do these at the same time 1) File petition to revive, pay revival fee for unintentional delay (unavoidable rarely used) (Can be filed using e-form online or use form PTO/SB/64.) 2) Pay the issue/renewal fee |
A response (reply) can be:
- A Notice of Appeal (and the appeal fee)
- An amendment that prima facie puts the application in condition for allowance, or
- An RCE (Request for Continued Examination) (and the RCE fee) and a response to the last office action.
Note there seems to be confusion (on the part of others) as to whether or not one needs to pay the time extension fees in addition to the petition for revival fees. The answer is no (think: petition for revival fees include any time extension fees). Clearly if you are not outside the 6 month window for an office action response it’s cheaper and faster to pay the time extension fees as you cannot file a petition to revive because the application is not abandoned yet.
This is an actual example of a sequence of events.
- Final office action issued on 04/09/2013
- No time extensions filed and no reply filed (see ).
- Now the office action had the shortened statutory time of 3 months and so at the end of the 3 months (07/09/2013) plus 1 day which is 07/10/2013 the patent application became abandoned.
- The USPTO sent out a Notice of Abandonment on 03/11/2014 (over 8 months after abandonment).
- Applicant filed a Petition to Revive on 03/19/2014 under the unintentional provisions of 37 CFR 1.137(a).
- On 04/08/2014 the petition to revive was granted.
Conclusion
If done timely a petition to revive an abandoned patent application, while expensive, can save an application.
