Oliver & Grimsley, LLC recently revived an abandoned patent application for a client. We come across this issue from time to time, and wanted to discuss this topic, as many patent holders or applicants may not be aware that a technically abandoned application or patent can often be revived, long after the abandonment occurs.
This issue also affects freedom to operate opinions, as technically abandoned patents that might read on a particular device, system or process could be revived and come into play – and hence, patent searches for these opinions often must take into consideration abandoned patents.
Failure to take certain actions required by the USPTO can result in the abandonment of a U.S. patent application or issued patent. Some of these required actions include, among other things: (1) replying to an office action within six months of issuance; (2) paying an issue fee within three months of the issuance of a Notice of Allowance; and (3) timely paying a maintenance fee for an issued patent.
A question arises after a technical abandonment whether the application or issued patent can be revived? Section 711.02 of the Manual of Patent Examining Procedures (MPEP) outlines this issue.
Fortunately, the USPTO provides for two types of petitions to revive a technically abandoned U.S. patent application or issued patent depending on the circumstances: (1) a petition to revive for “unavoidable” abandonment; and (2) a petition to revive for “unintentional” abandonment.
(1) Petition to Revive for “Unintentional” Abandonment
This petition is usually the more commonly selected petition and although it is the more expensive, usually costing about $1900, applicants and patent holders generally select this option because it is the least burdensome petition to complete and file and usually ends with successful results. The petition is an executable form and the USPTO rarely requires any factual showing of delay. Instead, in the vast majority of petitions under 37 CFR 1.137(b), the USPTO 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 pursuant to 37 CFR 1.137(b) was unintentional” without requiring further information. Note, a petition to revive for unintentional abandonment is only available within a two-year time period from the time the application or patent went abandoned.
(2) Petition to Revive for “Unavoidable” Abandonment
This type of petition is less likely to be granted than a petition for unintentional abandonment. While these petitions are less expensive, generally running about $640 (three times less expensive than a petition to revive for unintentional abandonment), these petitions are nearly impossible to prove.
A petition to revive for unavoidable abandonment requires a showing that the abandonment could not have been avoided. This is difficult to prove because the applicant must supply foundational evidence and provide the details of the events as to why the application was unavoidably abandoned.
A showing of unavoidable delay requires: (1) evidence concerning the procedures in place that should have avoided the error resulting in the delay; (2) evidence concerning the training and experience of the persons responsible for the error; and (3) copies of any applicable docketing records to show that the error was in fact the cause of the delay.
The showing required to establish that abandonment was “unavoidable” is so stringent that many times it is not worth the time and effort (or attorney’s fees) required to file the petition.
With either petition, it is important to seek a revival of the application or patent as soon as possible. Excessive delay between discovery of the abandonment and the filing of a petition may not qualify as being “unintentional” or “unavoidable” for the purposes of filing a petition to revive the application or patent. In addition, both petitions require that the applicant submit the response that was originally due at the time of abandonment (e.g., the office action response or issue fee payment). If all goes well, the Petitions Office with revive the application or patent and will leave the application or issued patent in the position it was in at the time of abandonment (less the time of delay) for any issued patent or application that moves forward to issue.
An applicant that has had the unfortunate mishap of having his or her application or patent go abandoned may be able to revive the application or patent by taking timely action and filing a petition with the USPTO. While the petition for unintentional delay is more costly to file, it is generally the least expensive and most successful procedure in reviving an application or patent in the long run.
For more information on this topic, please contact Pamela K. Riewerts, Esq. at pamela@olivergrimsley.com