37 CFR § 1.138 — Express abandonment. (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.138 Express abandonment.
This page consolidates MPEP guidance interpreting 37 CFR § 1.138, including 80 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
Express abandonment allows patent applicants to voluntarily withdraw their application before publication to prevent public disclosure of their invention.
What this section covers
- A procedural mechanism for voluntarily withdrawing a patent application before it becomes public.
- Specific circumstances and conditions under which an applicant can seek to abandon their patent application.
Key obligations
- File a formal petition under 37 CFR 1.138 to initiate the express abandonment process.
- Submit an official declaration of express abandonment to formally withdraw the application.
Conditions and exceptions
- Understand and comply with strict timing restrictions for abandoning an application before publication.
Practice notes
- Carefully evaluate the strategic implications of abandoning a patent application before publication.
- Ensure all required documentation is accurately completed to successfully process the abandonment.
Official MPEP § 1.138 — Express abandonment.
Source: USPTOLast Modified: 10/30/2024 08:50:22
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 paragraph 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. Applicants 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.
- (d) An applicant seeking to abandon an application filed under 35 U.S.C. 111(a) and § 1.53(b) on or after December 8, 2004, to obtain a refund of the search fee and excess claims fee paid in the application, must submit a declaration of express abandonment by way of a petition under this paragraph before an examination has been made of the application. The date indicated on any certificate of mailing or transmission under § 1.8 will not be taken into account in determining whether a petition under § 1.138(d) was filed before an examination has been made of the application. If a request for refund of the search fee and excess claims fee paid in the application is not filed with the declaration of express abandonment under this paragraph or within two months from the date on which the declaration of express abandonment under this paragraph was filed, the Office may retain the entire search fee and excess claims fee paid in the application. This two-month period is not extendable. If a petition and declaration of express abandonment under this paragraph are not filed before an examination has been made of the application, the Office will not refund any part of the search fee and excess claims fee paid in the application except as provided in § 1.26 .
[47 FR 47244, Oct. 25, 1982, effective Feb. 27, 1983; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised and para. (c) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c) revised and para. (d) added, 71 FR 12284, Mar. 10, 2006, effective Mar. 10, 2006; para. (b) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]
-
- Access Records
- Access Document Types
- Copies And Certificates
-
- Aia Overview
- Application Types
- Correspondence Address
- Director Authority
- Petition Procedures
- Petition Filing
- Examination Procedure
- Examiner Action
- Action Types
-
-
-
- International Design
- Hague Principles
- Ida Requirements
- Ida Title Description
- Patent Application Content
- Claims
- Filing Date Requirements
- Patent Issuance
- Issue Fee
- Issue Fee Timing
- Practitioner Recognition
- Reissue
- Reissue Application
- Signature Requirements
- Signature Assignee