2668 Petition for Entry of Late Papers for Revival of Reexamination Proceeding
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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.
(a) GENERAL FEES. —The Director shall charge the following fees: *****
(7) 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, $1,700. The Director may refund any part of the fee specified in this paragraph, in exceptional circumstances as determined by the Director.
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Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto.
(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.
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(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.
An inter partes reexamination prosecution terminated can be revived if the delay in response by the patent owner was unintentional.
If the patent owner in an inter partes reexamination proceeding fails to file a timely and appropriate response to any Office action and at least one claim is allowable, then the proceeding continues but is limited to the claim(s) found allowable at the time of the failure to respond (i.e., in the Office action).
I. PETITION BASED ON UNAVOIDABLE DELAY IS NO LONGER AVAILABLE
A petition based on unavoidable delay is no longer available.
II. PETITION BASED ON UNINTENTIONAL DELAY
The Director may establish procedures to accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the patent owner.
If the delay in reply by patent owner was unintentional, a petition may be filed pursuant to 37 CFR 1.137 to revive a reexamination prosecution terminated under 37 CFR 1.957(b) or limited under 37 CFR 1.957(c).
Specifically, 37 CFR 1.137(b) provides that a grantable petition pursuant to 37 CFR 1.137 must be accompanied by:
- (1) The reply required to the outstanding Office action or notice; unless previously filed;
- (2) the petition fee; and
- (3) 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.
37 CFR 1.137 continues to provide that the Director may require additional information where there is a question whether the delay was unintentional.
III. RENEWED PETITION
Reconsideration may be requested of a decision dismissing or denying a petition under 37 CFR 1.137(a) or (b) to revive a terminated reexamination prosecution.
- The request for reconsideration must be submitted within one (1) month from the mail date of the decision for which reconsideration is requested.
- An extension of time may be requested only under 37 CFR 1.956; extensions of time under 37 CFR 1.136 are not available in reexamination proceedings.
- Any reconsideration request which is submitted should include a cover letter.
» 2671 Examiner Action Following Response/Comments or Expiration of Time for Same
