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711 Abandonment of Patent Application

MPEP SECTION SUMMARY If an application becomes abandoned it is essentially closed for further prosecution. This can happen for a number of reasons; the applicant or patent attorney may formally abandon the application or the applicant may accidentally abandon the application. This occurs when the applicant does not take the appropriate action within the allotted timeframe. The Office has strict policies for petitions relating to the revival of an abandoned application. In some cases, revival of an abandoned application may require a terminal disclaimer. A terminal disclaimer will result in a shorter patent term than that of a regular patent term. This section also covers request for reconsideration, a summary of petitions relating to abandonment, and public access to abandoned applications.

  Section Frequency Chart

 

An abandoned application is one which is removed from the Office docket of pending applications through:

• formal abandonment
  • by the applicant,
  • by the attorney or agent of record , or
  • by a registered attorney or agent acting in a representative capacity when filing a continuing application; or
• failure of applicant to take appropriate action within a specified time at some stage in the prosecution of the application.

MPEP SECTION SUMMARY This section discusses the details of express or formal abandonment. For instance, the applicant or the attorney/agent of record, if any, can sign an express abandonment. Details are provided where a letter of express abandonment is being submitted in an allowed application after the payment of the issue fee, to avoid publication of an application, to obtain a refund of the search and excess claims fee, and an application in interference.

Applications may be expressly abandoned as provided for in 37 CFR 1.138.

• When a letter expressly abandoning an application (not in issue) is received, the Office should acknowledge receipt thereof, and indicate whether it does or does not comply with the requirements.
• The filing of a request for a continued prosecution application (CPA) in a design application is considered to be a request to expressly abandon the prior application as of the filing date granted the continuing application.

An amendment canceling all of the claims is not an express abandonment.

• The Office will not enter any amendment that would cancel all of the claims in an application without presenting any new or substitute claims.

An attorney or agent not of record in an application may file a withdrawal of an appeal except in those instances where such withdrawal would result in abandonment of the application.

• In such instances the withdrawal of appeal is in fact an express abandonment.
  
  

I. AFTER PAYMENT OF ISSUE FEE

If a letter of express abandonment is being submitted in an allowed application after the payment of the issue fee, the express abandonment must be accompanied by a petition to withdraw from issue and the fee.

A petition under 37 CFR 1.313 will not be effective to withdraw the application from issue unless it is actually received and granted by the appropriate official before the date of issue.

• After the issue fee has been paid, the application will not be withdrawn upon petition by the applicant for any reason except those reasons listed in 37 CFR 1.313(c), which include express abandonment of the application.
• An application may be withdrawn from issue for express abandonment of the application in favor of a continuing application.

II. TO AVOID PUBLICATION OF APPLICATION

Generally, a petition under 37 CFR 1.138(c) will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication.

• Withdrawal of an application from issue after payment of the issue fee may not be effective to avoid publication of an application.
  

III. TO OBTAIN REFUND OF SEARCH FEE AND EXCESS CLAIMS FEE

Refund of the search fee and excess claims fee paid in an application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) on or after December 8, 2004 may be obtained by submitting a petition and declaration of express abandonment before an examination has been made of the application.

A petition under 37 CFR 1.138(d) will be granted if it was filed before an examination has been made of the application and will be denied if it was not filed before an examination has been made of the application.

A petition under 37 CFR 1.138(d) may not be effective to stop publication of an application unless the petition under 37 CFR 1.138(d) is granted and the abandonment processed before technical preparations for publication of the application has begun.

• Technical preparations for publication of an application generally begin four months prior to the projected date of publication.
  

IV. APPLICATION IN INTERFERENCE

An express abandonment pursuant to 37 CFR 1.138 of an application involved in an interference is considered an abandonment of the contest and it is construed as a request for entry of an adverse judgment against the applicant.

 

MPEP SECTION SUMMARY This section documents what happens if there is a failure to take the required action during the statutory period. For instance, when an amendment is filed after the expiration of the statutory period, the application is abandoned and the remedy is to petition to revive it.

An application becomes abandoned if applicant “fails to reply” to an office action within the fixed statutory period.

• This failure may result either from failure to reply within the statutory period, or an insufficiency of reply, i.e., failure to file a “complete and proper reply.

 

MPEP SECTION SUMMARY This section covers how an insufficient reply is handled. Essentially, abandonment may result from a situation where applicant’s reply is within the period for reply but is not fully responsive to the Office action.

The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee.

• In no case may an applicant reply outside the SIX (6) MONTH statutory period or obtain an extension for more than FIVE (5) MONTHS beyond the date for reply set forth in an Office action.

 

MPEP SECTION SUMMARY This section covers special situations involving abandonment. For instance, an application may become abandoned through withdrawal of, or failure to prosecute, an appeal to the Patent Trial and Appeal Board.

The following situations involving questions of abandonment often arise, and should be specially noted:

• (A) Copying claims from a patent when not suggested by the U.S. Patent and Trademark Office does not constitute a reply to the last Office action and will not save the application from abandonment, unless the last Office action relied solely on the patent for the rejection of all the claims rejected in that action.
• (B) An application may become abandoned through withdrawal of, or failure to prosecute, an appeal to the Patent Trial and Appeal Board.
• (C) An application may become abandoned through dismissal of appeal to the Court of Appeals for the Federal Circuit or civil action, where there was not filed prior to such dismissal an amendment putting the application in condition for issue or fully responsive to the Board’s decision.
  • Abandonment results from failure to perfect an appeal as required by the Court of Appeals for the Federal Circuit.
• (D) Where claims are suggested for interference near the end of the period for reply running against the application.
• (E) Where a continued prosecution application (CPA) is filed.
• (F) Prior to a decision by the Board, an application on appeal that has no allowed claims may become abandoned when a Request for Continued Examination (RCE) is improperly filed without the appropriate fee or a submission in the application.
  • The filing of an RCE will be treated as a withdrawal of the appeal by the applicant.
• (G) When a reply to a final Office action is outstanding, an application may become abandoned if an RCE is filed without a timely submission that meets the reply requirements of 37 CFR 1.111.
  • The filing of an improper RCE will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application.
• (H) Prior to payment of the issue fee, an allowed application may become abandoned if an RCE is improperly filed without the appropriate fee or a submission in the application.
  • The improper RCE will not operate to toll the running of the time period for payment of the issue fee.

 

MPEP SECTION SUMMARY Proceedings are terminated when one of the following occurs; the issue fee is not paid, the application loses an interference regarding all the claims it contained, proceedings are terminated in an application after decision by the Patent Trial and Appeal Board, and proceedings are terminated after a decision by the court.

A second application is considered to be copending with an earlier application if it is filed before:

• the patenting or the earlier application,
• the abandonment of the earlier application, or
• termination of proceedings on the earlier application.
  

 

MPEP SECTION SUMMARY When advised of the abandonment of his or her application, applicant may either ask for reconsideration of such holding, if he or she disagrees with it on the basis that there is no abandonment in fact; or petition for revival under 37 CFR 1.137.

 

MPEP SECTION SUMMARY This section covers petitions relating to abandonment. It includes details on the petition to withdraw holding of abandonment. The procedure available for reviving an application that has become abandoned due to a failure to reply to an Office Action is a petition under 37 CFR 1.137(a) based on unintentional delay. In addition, this section covers petitions to revive an abandoned application or to accept late payment of the issue fee. Notable changes due to the Patent Law Treaties Implementation Act of 2012 (PLTIA) included the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments. This section specifically covers abandonment for failure to timely submit a copy of the specification and any drawings in an application filed by reference under 35 U.S.C. 111(c) and 37 CFR 1.57(a), abandonment for failure to pay the issue fee or publication fee, and abandonment for failure to provide required drawings. In addition, it also discusses abandonment for failure to reply in a nonprovisional application and abandonment for failure to notify the Office of a foreign filing after the submission of a non-publication request. Other details of the petitions involved in abandonment are covered here.

 

I. PETITION TO WITHDRAW HOLDING OF ABANDONMENT

Where an applicant contends that the application is not in fact abandoned (e.g., there is disagreement as to the sufficiency of the reply, or as to controlling dates), a petition under 37 CFR 1.181(a) requesting withdrawal of the holding of abandonment is the appropriate course of action, and such petition does not require a fee.

The procedure available for reviving an application that has become abandoned due to a failure to reply to an Office Action is a petition under 37 CFR 1.137(a) based on unintentional delay.

1. Design Applications, Utility Applications Filed Before June 8, 1995, and Plant Applications Filed Before June 8, 1995

(a) Applicant Receives Notice of Abandonment

In any design application, any utility application filed before June 8, 1995, or any plant application filed before June 8, 1995, if applicant receives a notice of abandonment, any petition to withdraw the holding of abandonment that is not filed within two months of the mail date of the notice of abandonment will not (absent extraordinary circumstances) be treated on its merits unless accompanied by a terminal disclaimer under 37 CFR 1.321(a), and the required fee.

(b) Applicant Does Not Receive Notice of Abandonment

In any design application, any utility application filed before June 8, 1995, or any plant application filed before June 8, 1995, if applicant never receives the notice of abandonment, any petition to withdraw the holding of abandonment that is not filed within twelve months from the date of applicant’s filing (or date of submission, if the correspondence was never received by the Office) of correspondence with the Office for which further action by the Office can reasonably be expected, will not (absent extraordinary circumstances) be treated on its merit unless accompanied by a terminal disclaimer under 37 CFR 1.321(a), and the required fee.

2. Utility and Plant Applications Filed on or After June 8, 1995 but Before May 29, 2000

In utility and plant applications filed on or after June 8, 1995, but before May 29, 2000, a terminal disclaimer should not be required as a condition of granting an untimely petition to withdraw the holding of abandonment.

3. Utility and Plant Applications Filed on or After May 29, 2000

In utility and plant applications filed on or after May 29, 2000, a terminal disclaimer should not be required as a condition of granting an untimely petition to withdraw the holding of abandonment.

II. PETITIONS TO REVIVE AN ABANDONED APPLICATION, OR ACCEPT LATE PAYMENT OF ISSUE FEE

Effective December 18, 2013, the Patent Law Treaties Implementation Act of 2012 (PLTIA), amended the patent laws to implement the provisions of the Patent Law Treaty (PLT) in title II.

Notable changes to the law included the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments.

The PLTIA specifically added new 35 U.S.C. 27, providing that the Director may establish procedures to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing a 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.

• The PLTIA eliminated the provisions of the patent statutes relating to revival of abandoned applications or acceptance of delayed maintenance fee payments on the basis of a showing of “unavoidable” delay.

37 CFR 1.137 provides for the revival of abandoned applications, or terminated or limited reexamination prosecution on the basis of unintentional delay for the failure:

• (A) to timely reply to an Office requirement in a provisional application;
• (B) to timely prosecute in a nonprovisional application;
• (C) to timely pay the issue fee for a design application;
• (D) to timely pay the issue fee for a utility or plant application; and
• (E) to provide copendency between the abandoned application and a subsequently filed application.

A petition under 37 CFR 1.137(a) requires:

• (A) the required reply, unless previously filed;
• (B) the petition fee;
• (C) any terminal disclaimer required; and
• (D) 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 37 CFR 1.137 was unintentional.

A. Reply Requirement

Unlike a petition to withdraw the holding of abandonment, a petition to revive under 37 CFR 1.137 must be accompanied by, inter alia, the required reply.

1. Abandonment for Failure To Timely Submit A Copy of the Specification and Any Drawings In An Application Filed By Reference Under 35 U.S.C. 111(c) and 37 CFR 1.57(a)

In an application abandoned under 37 CFR 1.57(a), the required reply must include a copy of the specification and any drawings of the previously filed application.

• Although not required as a condition for revival, a certified copy of the previously filed application may be required for an application filed by reference.
• If the certified copy is required and is not filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, a petition including a showing of good and sufficient cause for the delay and the petition fee are required.

2. Abandonment for Failure To Pay the Issue Fee or Publication Fee

In an application abandoned for failure to timely pay the issue fee, the required reply must include the issue fee (and any required publication fee).

The PLTIA amended 35 U.S.C. 151 to provide that:

• if it appears that an applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant;
  
• the notice of allowance shall specify a sum, constituting the issue fee and any required publication fee, which shall be paid within three months thereafter; and
  
• upon payment of this sum, the patent may issue, but if payment is not timely made, the application shall be regarded as abandoned.

3. Abandonment for Failure To Provide Required Drawings

In an application abandoned for failure to provide required drawings, a petition to revive the application will be dismissed unless the required drawings are filed before or with the petition to revive the application.

4. Abandonment for Failure To Reply in a Nonprovisional Application

(a) Abandonment for Failure To Reply to a Non-Final Action

The required reply to a non-final action in a nonprovisional application abandoned for failure to prosecute may be either:

• an argument or an amendment;
• the filing of a continuing application (or a continued prosecution application (CPA) if the application is a design application).

  (b) Abandonment for Failure To Reply to a Final Action

A reply under 37 CFR 1.113 to a final action must include a request for continued examination (RCE) or cancellation of, or appeal from the rejection of, each claim so rejected.

Accordingly, in a nonprovisional application abandoned for failure to reply to a final action, the reply required for consideration of a petition to revive must be:

• (A) a Notice of Appeal and appeal fee;
• (B) an amendment that cancels all the rejected claims or otherwise prima facie places the application in condition for allowance;
• (C) the filing of an RCE (accompanied by a submission that meets the reply requirements of 37 CFR 1.111 and the requisite fee) under 37 CFR 1.114 for utility or plant applications filed on or after June 8, 1995 (see paragraph (d) below); or
• (D) the filing of a continuing application (or a CPA if the application is a design application).

  (c) Abandonment for Failure To File an Appeal Brief

In those situations where abandonment occurred because of the failure to file an appeal brief, the reply required must be either:

• (A) an appeal brief;
• (B) the filing of an RCE accompanied by a submission and the requisite fee for utility or plant applications filed on or after June 8, 1995, abandoned after the close of prosecution (see paragraph (d) below); or
• (C) the filing of a continuing application (or a CPA if the application is a design application).

  (d) Filing an RCE as the Required Reply

For utility or plant applications abandoned for failure to reply to a final Office action or for failure to file an appeal brief, the required reply may be the filing of an RCE accompanied by a submission and the requisite fee.

• When an RCE is the reply filed to revive such an application, the submission accompanying the RCE must be a reply responsive within the meaning of 37 CFR 1.111 to the last Office action.

  (e) A Continuing Application or RCE May Be Required by the Office

The Office may require the filing of a continuing application or an RCE (if the prosecution prior to abandonment was closed) (or request for further examination to meet the reply requirement where, under the circumstances of the application, treating a reply under 37 CFR 1.111 or 1.113 would place an inordinate burden on the Office.

Exemplary circumstances of when treating a reply under 37 CFR 1.111 or 1.113 may place an inordinate burden on the Office are where:

• (A) an application has been abandoned for an inordinate period of time;
• (B) an application file contains multiple or conflicting replies to the last Office action; or
• (C) the reply or replies are questionable as to compliance with 37 CFR 1.111 or 1.113.

5. Abandonment for Failure To Notify the Office of a Foreign Filing After the Submission of a Non-Publication Request

If an applicant makes a nonpublication request upon filing with the appropriate certifications, the utility or plant application filed on or after November 29, 2000 will not be published.

If an applicant makes a nonpublication request and then rescinds, the nonpublication request before or on the date a counterpart application is filed in a foreign country, or under a multilateral international agreement, that requires eighteen-month publication, the nonpublication request will be treated as annulled and the application will be treated as if the nonpublication request were never made.

C. Unintentional Delay

While the Office reserves the authority to require further information concerning the cause of abandonment and delay in filing a petition to revive, the Office relies upon the applicant’s duty of candor and good faith and accepts the statement that “the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition was unintentional” without requiring further information in the vast majority of petitions.

A delay resulting from a deliberately chosen course of action on the part of the applicant does not become an “unintentional” delay within the meaning of 37 CFR 1.137 because:

• (A) the applicant does not consider the claims to be patentable over the references relied upon in an outstanding Office action;
• (B) the applicant does not consider the allowed or patentable claims to be of sufficient breadth or scope to justify the financial expense of obtaining a patent;
• (C) the applicant does not consider any patent to be of sufficient value to justify the financial expense of obtaining the patent;
• (D) the applicant does not consider any patent to be of sufficient value to maintain an interest in obtaining the patent; or
• (E) the applicant remains interested in eventually obtaining a patent, but simply seeks to defer patent fees and patent prosecution expenses.

D. Delay Until the Filing of a Grantable Petition

The abandonment of an application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as “unintentional” within the meaning of 37 CFR 1.137, where the applicant deliberately permits the application to become abandoned.

An intentional delay resulting from a deliberate course of action chosen by the applicant is not affected by:

• (A) the correctness of the applicant’s (or applicant’s representative’s) decision to abandon the application or not to seek or persist in seeking revival of the application;
• (B) the correctness or propriety of a rejection, or other objection, requirement, or decision by the Office; or
• (C) the discovery of new information or evidence, or other change in circumstances subsequent to the abandonment or decision not to seek or persist in seeking revival.

Where a petition pursuant to 37 CFR 1.137 is not filed within 3 months of the date the applicant is first notified that the application is abandoned, the Office may consider there to be a question as to whether the delay was unintentional.

Where a petition pursuant to 37 CFR 1.137 is not filed within 1 year of the date of abandonment of the application (note that abandonment takes place by operation of law, rather than by the mailing of a Notice of Abandonment), the Office may require:

• (A) further information as to when the applicant (or the applicant’s representative) first became aware of the abandonment of the application; and
• (B) a showing as to how the delay in discovering the abandoned status of the application occurred despite the exercise of due care or diligence on the part of the applicant (or applicant’s representative).

To avoid delay in the consideration of the merits of a petition under 37 CFR 1.137 in instances in which such petition was not filed within 1 year of the date of abandonment of the application, applicants should include:

• (A) the date that the applicant first became aware of the abandonment of the application; and
• (B) a showing as to how the delay in discovering the abandoned status of the application occurred despite the exercise of due care or diligence on the part of the applicant.

E. Party Whose Delay Is Relevant

The question under 37 CFR 1.137 is whether the delay on the part of the party having the right or authority to reply to avoid abandonment (or not reply) was unintentional.

When the applicant assigns the entire right, title, and interest in an invention to a third party (and thus does not retain any legal or equitable interest in the invention), the applicant’s delay is irrelevant in evaluating whether the delay was unintentional.

F. Burden of Proof To Establish Unintentional Delay

37 CFR 1.137(b)(4) requires that a petition under 37 CFR 1.137 must be accompanied by a statement that the entire delay in providing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137 was unintentional, but also provides that “[t]he Director may require additional information where there is a question whether the delay was unintentional.”

G. Terminal Disclaimer Requirement

37 CFR 1.137(d) requires that a petition under 37 CFR 1.137 be accompanied by a terminal disclaimer (and fee), regardless of the period of abandonment, in:

• a design application;
• a nonprovisional utility application (other than a reissue application) filed before June 8, 1995; or
• a nonprovisional plant application (other than a reissue application) filed before June 8, 1995.

H. Request for Reconsideration

37 CFR 1.137(e) requires that any request for reconsideration or review of a decision refusing to revive an abandoned application must be filed within 2 months of the decision refusing to revive or within such time as set in the decision.

37 CFR 1.137(e) further provides that, unless a decision indicates otherwise, this time period for requesting reconsideration or review may be extended under the provisions of 37 CFR 1.136.

I. Provisional Applications

37 CFR 1.137 is applicable to a provisional application abandoned for failure to reply to an Office requirement.

A petition under 37 CFR 1.137(a) must be accompanied by any outstanding reply to an Office requirement, since 37 CFR 1.137(c) permits the filing of a continuing application in lieu of the required reply only in a nonprovisional application.

 

MPEP SECTION SUMMARY This section briefly covers access policies to an abandoned unpublished application.

Access will be provided to the application file itself for any non-Image File Wrapper (IFW) abandoned published application.

Access to an abandoned unpublished application may be provided to any person if a written request for access is submitted, and the abandoned application is identified or relied upon:

• in a U.S. patent application publication or patent;
• in statutory invention registration; or
• in an international application that is published

 

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