Patent Law FAQ

According to MPEP 203.05, there are four main reasons for patent application abandonment:

1. Formal abandonment by the applicant or their representative
2. Failure of the applicant to take appropriate action during prosecution
3. Failure to pay the issue fee
4. For provisional applications, the passage of 12 months from the filing date

The MPEP states: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record; (B) through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application; (C) for failure to pay the issue fee (MPEP § 711 to § 711.05); or (D) in the case of a provisional application, no later than 12 months after the filing date of the provisional application.

According to MPEP 203.05, there are four main reasons for patent application abandonment:

1. Formal abandonment by the applicant or their representative
2. Failure of the applicant to take appropriate action during prosecution
3. Failure to pay the issue fee
4. For provisional applications, the passage of 12 months from the filing date

The MPEP states: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record; (B) through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application; (C) for failure to pay the issue fee (MPEP § 711 to § 711.05); or (D) in the case of a provisional application, no later than 12 months after the filing date of the provisional application.

If an Information Disclosure Statement (IDS) is filed after the issue fee is paid:

• The IDS will not be considered by the examiner
• The IDS will be placed in the application file
• The application may be withdrawn from issue to file a Request for Continued Examination (RCE) or a continuing application
• A petition under 37 CFR 1.313(c) is required to withdraw the application from issue

MPEP 609.04(b)(IV) states: “After the issue fee has been paid on an application, it is impractical for the Office to attempt to consider newly submitted information. Information disclosure statements filed after payment of the issue fee in an application will not be considered but will merely be placed in the application file.”

The MPEP further explains: “The application may be withdrawn from issue at this point, pursuant to 37 CFR 1.313(c)(2) or 1.313(c)(3) so that the information can be considered in the application upon the filing of a RCE under 37 CFR 1.114 or in a continuing application filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application).”

To learn more:

• IDS
• Information Disclosure Statement
• Issue Fee
• Patent Application

According to MPEP 203.05, there are four main reasons for patent application abandonment:

1. Formal abandonment by the applicant or their representative
2. Failure of the applicant to take appropriate action during prosecution
3. Failure to pay the issue fee
4. For provisional applications, the passage of 12 months from the filing date

The MPEP states: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record; (B) through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application; (C) for failure to pay the issue fee (MPEP § 711 to § 711.05); or (D) in the case of a provisional application, no later than 12 months after the filing date of the provisional application.

If an Information Disclosure Statement (IDS) is filed after the issue fee is paid:

• The IDS will not be considered by the examiner
• The IDS will be placed in the application file
• The application may be withdrawn from issue to file a Request for Continued Examination (RCE) or a continuing application
• A petition under 37 CFR 1.313(c) is required to withdraw the application from issue

MPEP 609.04(b)(IV) states: “After the issue fee has been paid on an application, it is impractical for the Office to attempt to consider newly submitted information. Information disclosure statements filed after payment of the issue fee in an application will not be considered but will merely be placed in the application file.”

The MPEP further explains: “The application may be withdrawn from issue at this point, pursuant to 37 CFR 1.313(c)(2) or 1.313(c)(3) so that the information can be considered in the application upon the filing of a RCE under 37 CFR 1.114 or in a continuing application filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application).”

To learn more:

• IDS
• Information Disclosure Statement
• Issue Fee
• Patent Application

According to MPEP 203.05, there are four main reasons for patent application abandonment:

1. Formal abandonment by the applicant or their representative
2. Failure of the applicant to take appropriate action during prosecution
3. Failure to pay the issue fee
4. For provisional applications, the passage of 12 months from the filing date

The MPEP states: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record; (B) through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application; (C) for failure to pay the issue fee (MPEP § 711 to § 711.05); or (D) in the case of a provisional application, no later than 12 months after the filing date of the provisional application.