MPEP § 711 — Abandonment of Patent Application (Annotated Rules)
§711 Abandonment of Patent Application
This page consolidates and annotates all enforceable requirements under MPEP § 711, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Abandonment of Patent Application
This section addresses Abandonment of Patent Application. Primary authority: 37 CFR 1.138 and 37 CFR 1.135. Contains: 1 permission and 2 other statements.
Key Rules
Abandonment for Failure to Reply
(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.
(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.
An abandoned application, in accordance with 37 CFR 1.135 and 1.138, is one which is removed from the Office docket of pending applications through:
- (A) formal abandonment
- (1) by the applicant,
- (2) by the attorney or agent of record, or
- (3) by a registered attorney or agent acting in a representative capacity under 37 CFR 1.34 when filing a continuing application; or
- (B) failure of applicant to take appropriate action within a specified time at some stage in the prosecution of the application.
Express Abandonment
Abandonment may be either of the invention or of an application. This discussion is concerned with abandonment of the application for patent.
Abandonment may be either of the invention or of an application. This discussion is concerned with abandonment of the application for patent.
Types of Office Actions
(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.
Final Office Action
(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.
Abandonment & Revival
(a) An application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office. Express abandonment of the application may not be recognized by the Office before the date of issue or publication unless it is actually received by appropriate officials in time to act.
Abandonment & Publication
(a) An application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office. Express abandonment of the application may not be recognized by the Office before the date of issue or publication unless it is actually received by appropriate officials in time to act.
Correspondence Address Requirements
(b) A written declaration of abandonment must be signed by a party authorized under § 1.33(b)(1) or (b)(3) to sign a paper in the application, except as otherwise provided in this paragraph. A registered attorney or agent, not of record, who acts in a representative capacity under the provisions of § 1.34 when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application.
Continuing Application & Abandonment
(b) A written declaration of abandonment must be signed by a party authorized under § 1.33(b)(1) or (b)(3) to sign a paper in the application, except as otherwise provided in this paragraph. A registered attorney or agent, not of record, who acts in a representative capacity under the provisions of § 1.34 when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application.
Express Abandonment to Avoid Publication
(c) An applicant seeking to abandon an application to avoid publication of the application (see § 1.211(a)(1)) must submit a declaration of express abandonment by way of a petition under this section including the fee set forth in § 1.17(h) in sufficient time to permit the appropriate officials to recognize the abandonment and remove the application from the publication process. Applicant should expect that the petition 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.
Citations
| Primary topic | Citation |
|---|---|
| Final Office Action Types of Office Actions | 37 CFR § 1.134 |
| Abandonment for Failure to Reply | 37 CFR § 1.135 |
| Types of Office Actions | 37 CFR § 1.136 |
| Express Abandonment to Avoid Publication | 37 CFR § 1.17(h) |
| Express Abandonment to Avoid Publication | 37 CFR § 1.211(a)(1) |
| Continuing Application & Abandonment Correspondence Address Requirements | 37 CFR § 1.33(b)(1) |
| Abandonment for Failure to Reply Continuing Application & Abandonment Correspondence Address Requirements | 37 CFR § 1.34 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 711 — Abandonment of Patent Application
Source: USPTO711 Abandonment of Patent Application [R-07.2015]
37 CFR 1.135 Abandonment for failure to reply within time period.
- (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.
- (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.
- (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 CFR 1.138 Express abandonment.
- (a) An application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office. Express abandonment of the application may not be recognized by the Office before the date of issue or publication unless it is actually received by appropriate officials in time to act.
- (b) A written declaration of abandonment must be signed by a party authorized under § 1.33(b)(1) or (b)(3) to sign a paper in the application, except as otherwise provided in this paragraph. A registered attorney or agent, not of record, who acts in a representative capacity under the provisions of § 1.34 when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application.
- (c) An applicant seeking to abandon an application to avoid publication of the application (see § 1.211(a)(1)) must submit a declaration of express abandonment by way of a petition under this section including the fee set forth in § 1.17(h) in sufficient time to permit the appropriate officials to recognize the abandonment and remove the application from the publication process. Applicant should expect that the petition 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.
Abandonment may be either of the invention or of an application. This discussion is concerned with abandonment of the application for patent.
An abandoned application, in accordance with 37 CFR 1.135 and 1.138, is one which is removed from the Office docket of pending applications through:
- (A) formal abandonment
- (1) by the applicant,
- (2) by the attorney or agent of record , or
- (3) by a registered attorney or agent acting in a representative capacity under 37 CFR 1.34 when filing a continuing application; or
- (B) failure of applicant to take appropriate action within a specified time at some stage in the prosecution of the application.