Approximately six months ago, our company’s patent attorney filed our response to the USPTO Office Action. The response was filed within the time period set by the USPTO. We just received a USPTO Notice of Abandonment of our Patent Application.
When receiving a Notice of Abandonment, do not panic. It is not uncommon for the USPTO to take months and sometimes more than a year to reply to an Applicant’s response. Applicants have two months from the date of the Notice of Allowance to file documents in the USPTO.
What Can You Do?
First, let’s determine your particular situation, based on the letter you received…
The Notice of Abandonment identifies the USPTO’s reasons for the abandonment
- Pursuant to 37 C.F.R 1.135, prepare a complete response for the most recent Office Action that was issued prior to the Notice of Abandonment.
- Pursuant to 37 C.F.R. 1.137, prepare a Petition to Revive and pay the USPTO fee.
The Reason(s) for the Notice of Abandonment cannot be readily discerned
- When the Examiner is known, attempt to call the Examiner.
- Most Examiners are responsive to telephone inquiries. However, if the Examiner is not responsive to your telephone messages, attempt to call the Examiner’s supervisor. Supervisors generally return calls.
- If the Examiner is unknown, search the USPTO database for one or more telephone numbers that can be of assistance in identifying USPTO personnel that may be of assistance.
- If the Notice of Abandonment is associated with a US National Stage Application, the PCT help desk may be of assistance.
Once you have the evidence required to respond to the Notice of Abandonment:
- Pursuant to 37 C.F.R 1.135, prepare a complete response for the most recent Office Action that was issued prior to the Notice of Abandonment.
- Pursuant to 37 C.F.R. 1.137, prepare a Petition to Revive and pay the USPTO fee.
The Code of Federal Regulations
37 C.F.R 1.135 – Abandonment for failure to reply within time period reads:
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(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.
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(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.
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(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 C.F.R 1.137 – Revival of abandoned application, or terminated or limited reexamination prosecution.
In part, 37 C.F.R 1.137 reads:
(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:
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The reply required to the outstanding Office action or notice, unless previously filed;
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The petition fee as set forth in §1.17(m);
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Any terminal (and fee as set forth in §1.20(d) required pursuant to paragraph (d) of this section; and
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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.
Navigating the requirements of protecting your intellectual property can be challenging. If you need assistance, please contact Business Patent Law, PLLC. We provide intellectual property and business counsel for businesses and companies. If you would like to stay up-to-date with the news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.