USPTO Clarifies Rules for Reviving Abandoned Patent Applications

A patent application may go abandoned for failure to timely respond to a communication from the United States Patent and Trademark Office (USPTO). This is not the end of the road for the application. The patent application may be revived by filing a petition under 37 CFR 1.137. The petition, however, requires a large fee and a statement that the entire period for the delay in filing the response was unintentional. USPTO have usually relied solely upon the patent applicant’s duty of candor and good faith and accepted the statement that the entire delay was unintentional without requiring further information. This is because the applicant is obligated under 37 CFR 11.18 to inquire into the underlying facts and circumstances when providing this statement to the USPTO. However, effective March 2, 2020, the USPTO will require additional information in cases where the revival petition is filed more than 2 years from the date of abandonment to ensure that the entire period was indeed unintentional.

Practice Tips:
1. Do not revive a patent application unless the fact supports it.
2. Do not advise an Examiner inquiring about the status of the application that has gone abandoned for failure to timely file a response that you have abandoned the application unless you are absolutely sure the client’s intention was to abandon the application. Instead, you may simply advise the Examiner that the response has not been filed.
3. Do not revive an application that has gone abandoned based on specific instructions from the client to not file a response.