Question 1

When is an application considered abandoned?

Accepted Answer

An application is considered abandoned after midnight of the date on which the set shortened statutory period, including any extensions under 37 CFR 1.136, expired. This is typically the end of the 3-month shortened statutory period.

As stated in MPEP 711.04(a): "If the application is abandoned, the date of the abandonment is after midnight of the date on which the set shortened statutory period, including any extensions under 37 CFR 1.136, expired."

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Question 2

When is a provisional patent application considered abandoned?

Accepted Answer

A provisional patent application is considered abandoned no later than 12 months after its filing date. MPEP 203.05 states that an abandoned application includes, in the case of a provisional application, no later than 12 months after the filing date of the provisional application (see MPEP § 711.03(c) and 35 U.S.C. 111(b)(5)). This means that provisional applications have a statutory life of one year from their filing date, after which they are automatically abandoned if not converted to a nonprovisional application or claimed as priority in a nonprovisional application.

For more information, you can refer to MPEP § 711.03(c) and 35 U.S.C. 111(b)(5).

Question 3

When is a patent application considered abandoned?

Accepted Answer

A patent application is considered abandoned when a timely reply to an Office action is not filed within the statutory period or any extended period granted. The MPEP 710.01(a) states:

When a timely reply is ultimately not filed, the application is regarded as abandoned after midnight of the date the period for reply expired.

For example, if the reply was due on May 31 and no further extensions were obtained, the application would be abandoned as of June 1, even if June 1 is a Saturday, Sunday, or federal holiday. The abandonment date is based on the last day of the reply period, not the next business day. For more detailed information on abandonment dates, refer to MPEP § 711.04(a).

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Question 4

What is the time period for an applicant to respond to a formal request for a property rights statement made under the Atomic Energy Act or National Aeronautics and Space Act?

Accepted Answer

When the USPTO makes a formal request for a property rights statement in accordance with 42 U.S.C. 2182 (DOE) or 51 U.S.C. 20135 (NASA), the applicant has a 30-day statutory period to respond. There is no provision for an extension of this 30-day time period.

As stated in MPEP 150, "If no proper and timely statement is received, the application will be held abandoned and the applicant so notified. Such applications may be revived under the provisions of 37 CFR 1.137."

Question 5

What is the status of a patent application after a notice of allowance is mailed?

Accepted Answer

Once a nonprovisional patent application has been examined and determined to meet all statutory requirements, a notice of allowance is sent to the applicant. The status of the application is then considered "allowed" or "in issue". As per MPEP 203.04:

An "allowed" nonprovisional application or an application "in issue" is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. Its status as an "allowed" application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue (37 CFR 1.313), or becomes abandoned for failure to pay the issue fee and any required publication fee (37 CFR 1.314 and 1.316).

Question 6

What is the difference between 'unavoidable' and 'unintentional' abandonment in patent applications?

Accepted Answer

What is the difference between 'unavoidable' and 'unintentional' abandonment in patent applications?

The terms 'unavoidable' and 'unintentional' refer to different standards for reviving abandoned patent applications:

Unavoidable abandonment: This is a higher standard that requires the applicant to show that the abandonment occurred despite all precautions taken. As stated in MPEP 711.03(c), 'The word unavoidable... is applicable to those situations where the failure to timely file or pay a fee was the result of circumstances beyond the applicant's control.'
Unintentional abandonment: This is a less stringent standard where the applicant must show that the abandonment was unintentional. The MPEP notes, 'Where the applicant deliberately permits an application to become abandoned (e.g., due to a conclusion that the claims are unpatentable, that a rejection in an Office action cannot be overcome, or that the invention lacks sufficient commercial value to justify continued prosecution), the abandonment of such application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as 'unintentional' within the meaning of 37 CFR 1.137(b).'

Understanding these distinctions is crucial when petitioning for revival of an abandoned application.

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Question 7

What is the date of abandonment for a utility or plant application?

Accepted Answer

What is the date of abandonment for a utility or plant application?

For a utility or plant application, the date of abandonment is determined as follows:

If all claims are rejected, the application becomes abandoned on the date after the period for reply expires.
If some claims are allowed, the application becomes abandoned on the date after the shortened statutory period expires.

As stated in MPEP 711.04(a): 'The date of abandonment of an application is the date on which the reply, appeal brief, or notice of appeal is due but not filed.' This applies to both situations where all claims are rejected or some claims are allowed.

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Question 8

What is abandonment of a patent application?

Accepted Answer

Abandonment of a patent application refers to the removal of an application from the Office docket of pending applications. According to MPEP 711, abandonment can occur in two ways:

Under 37 CFR 1.135, for failure to reply within the specified time period
Under 37 CFR 1.138, through express abandonment

It's important to note that this refers to abandonment of the application, not the invention itself. As stated in MPEP 711, "Abandonment may be either of the invention or of an application. This discussion is concerned with abandonment of the application for patent."

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Question 9

What happens if the drawings in a patent application are not in compliance with the rules?

Accepted Answer

If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.

Question 10

What happens if I don't receive a Notice of Abandonment for my patent application?

Accepted Answer

Even if you don't receive a Notice of Abandonment, it doesn't affect the status of your abandoned application. The MPEP states:

"However, in no case will mere failure to receive a notice of abandonment affect the status of an abandoned application."

This means that your application can still be considered abandoned even if you didn't receive the notice. It's crucial to keep track of your application status and deadlines independently.

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Question 11

What happens if an applicant fails to reply to a patent office action within the given period?

Accepted Answer

If an applicant fails to reply to a patent office action within the given period, the application is considered abandoned. According to 35 U.S.C. 133:

'Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto.'

This means that if no response is received within the specified time frame (either six months or a shorter period set by the USPTO), the application is abandoned, and the applicant loses their filing date and any priority claims.

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Question 12

What happens if a notice of appeal is filed but no appeal brief is submitted?

Accepted Answer

What happens if a notice of appeal is filed but no appeal brief is submitted?

If a notice of appeal is filed but no appeal brief is submitted, the application may be considered abandoned. According to MPEP 711.04(a):

'If a notice of appeal is filed, but no appeal brief is filed within the time allowed by 37 CFR 41.37 (and no request for extension of time is granted), the appeal will stand dismissed by operation of the rule, but the application does not become abandoned until the date the appeal brief was due.'

This means that:

The application becomes abandoned on the date the appeal brief was due.
The appeal is dismissed automatically if no brief is filed within the allowed time.
If an extension of time is granted but not used to file the brief, abandonment occurs on the extended due date.

It's crucial for applicants to be aware of these deadlines to prevent unintentional abandonment of their application.

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Question 13

What happens if a letter of abandonment is received after a patent application is allowed?

Accepted Answer

When a letter of abandonment is received after a patent application has been allowed, it is handled by the Publishing Division of the USPTO. As stated in MPEP 711.05:

Receipt of a letter of abandonment while an application is allowed is acknowledged by the Publishing Division.

This means that the Publishing Division will process the abandonment request and take appropriate actions to halt the publication process.

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Question 14

What happens if a drawing is not acceptable for publication?

Accepted Answer

If a drawing is not acceptable for publication, the Office of Patent Application Processing (OPAP) will object to the drawing and notify the applicant. The applicant will be given a time period of two months from the mail date of the Notice to file acceptable drawings. This period is extendable under 37 CFR 1.136(a) or (b) for patent applications filed under 35 U.S.C. 111, but not for design applications filed under 35 U.S.C. 171. Failure to comply with the Notice within the time period will result in abandonment of the application.

Question 15

What does it mean when a patent application is 'abandoned'?

Accepted Answer

An abandoned patent application is one that has been removed from the USPTO's docket of pending applications. According to MPEP 203.05, an application can become abandoned for several reasons:

An abandoned application is, inter alia, one which is removed from the Office docket of pending applications:

Formal abandonment by the applicant or their attorney/agent
Failure to take appropriate action during prosecution
Failure to pay the issue fee
For provisional applications, not filing a nonprovisional application within 12 months

Abandonment can have serious consequences, but in some cases, it may be possible to revive an abandoned application.

For more information on patent abandonment, visit: patent abandonment.

Question 16

What does it mean if a patent application has a status of "rejected"?

Accepted Answer

A nonprovisional patent application is designated as "rejected" if, during prosecution before allowance, it contains an examiner's action that has not been replied to by the applicant. As stated in MPEP 203.02:

A nonprovisional application which, during its prosecution in the examining group and before allowance, contains an unanswered examiner's action is designated as a "rejected" application. Its status as a "rejected" application continues as such until acted upon by the applicant in reply to the examiner's action (within the allotted reply period), or until it becomes abandoned.

Question 17

What are the two main ways a patent application can be abandoned?

Accepted Answer

According to MPEP 711, there are two primary ways a patent application can be abandoned:

Failure to reply within the time period: This is governed by 37 CFR 1.135. If an applicant fails to respond to an Office action or other USPTO communication within the specified timeframe, the application may be considered abandoned.
Express abandonment: This is covered by 37 CFR 1.138. An applicant can voluntarily abandon their application by filing an express abandonment request.

The MPEP states: "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:" followed by these two methods.

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Question 18

What are the main reasons for patent application abandonment?

Accepted Answer

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

Formal abandonment by the applicant or their representative
Failure of the applicant to take appropriate action during prosecution
Failure to pay the issue fee
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.

Question 19

What are the consequences of not responding to a notice about an unlocatable file?

Accepted Answer

The consequences of not responding to a notice about an unlocatable file differ for pending applications and granted patents:

For pending applications: According to 37 CFR 1.251(b), failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.
For granted patents: While the patent won't expire, the MPEP states that the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent).

Additionally, for patents involved in USPTO proceedings, the Office may take action under 37 CFR 41.128 or 37 CFR 11.18.

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Question 20

What are the consequences of failing to submit an Information Disclosure Statement (IDS)?

Accepted Answer

What are the consequences of failing to submit an Information Disclosure Statement (IDS)?

Failing to submit an Information Disclosure Statement (IDS) can have serious consequences for patent applicants. According to MPEP 609:

"The failure to timely file an Information Disclosure Statement may result in the application being abandoned or may adversely affect the validity of the patent."

Specifically:

The application may be abandoned if the IDS is not filed within the time periods specified in 37 CFR 1.97.
If a patent is granted, it may be invalidated if it's later discovered that material information was intentionally withheld from the USPTO during prosecution.
The applicant may be accused of inequitable conduct, which can render the entire patent unenforceable.

It's crucial for applicants to diligently submit all known material information to the USPTO through proper IDS filings to avoid these potential issues.

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Question 21

What actions must an applicant take to prevent abandonment of a national security classified patent application without a Secrecy Order?

Accepted Answer

According to 37 CFR 5.1(d), an applicant must take one of three actions to prevent abandonment of a national security classified patent application without a Secrecy Order. The MPEP states: Pursuant to 37 CFR 5.1(d), if no Secrecy Order has issued in a national security classified patent application, the Office will set a time period within which the applicant must take one of the following three actions in order to prevent abandonment of the application: (A) obtain a Secrecy Order; (B) declassify the application; or (C) submit evidence of a good faith effort to obtain a Secrecy Order pursuant to 37 CFR 5.2(a). These actions ensure proper handling of potentially sensitive information.

For more information on patent abandonment, visit: patent abandonment.

Question 22

What actions can be taken if a patent application contains national security markings but no Secrecy Order?

Accepted Answer

If an examiner comes across a patent application that contains national security markings but does not have a Secrecy Order imposed, MPEP 130 instructs that "the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings." This should be done preferably with the first office action and before final disposition of the application.

37 CFR 5.1(d) states that if no Secrecy Order has issued, the USPTO will set a time period for the applicant to take one of three actions to prevent abandonment:

Obtain a Secrecy Order
Declassify the application
Submit evidence of a good faith effort to obtain a Secrecy Order under 37 CFR 5.2(a)

Additionally, per 37 CFR 5.1(e), "a national security classified patent application will not be allowed until the application is declassified and any Secrecy Order pursuant to 37 CFR 5.2(a) has been rescinded."

Question 23

How does the USPTO notify applicants of application abandonment?

Accepted Answer

The USPTO has a specific procedure for notifying applicants when their patent applications become abandoned. According to the MPEP:

The Patent Examining Corps currently mails to the correspondence address of record, a Notice of Abandonment form PTOL-1432 in all applications which become abandoned for failure to prosecute.

However, it's crucial to understand that:

Failure to receive this notice does not affect the abandoned status of an application.
The notice is intended to enable applicants to take prompt action to reinstate an inadvertently abandoned application.
In most cases, a petition to revive under 37 CFR 1.137 is the appropriate remedy for reinstatement.

Applicants should ensure their correspondence address is up-to-date with the USPTO to receive these important notices. The MPEP advises, it is imperative that a paper notifying the Office of a change of address be filed promptly in each application in which the correspondence address is to be changed.

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Question 24

How does MPEP 711.05 relate to other sections of the MPEP regarding abandonment?

Accepted Answer

MPEP 711.05 specifically addresses letters of abandonment received after an application is allowed. It relates to other sections of the MPEP, particularly those dealing with abandonment procedures. For instance, the section mentions:

See also MPEP § 711.01.

This reference to MPEP 711.01 suggests that there are related procedures and considerations for express abandonment in general that may be applicable or provide additional context to situations where abandonment is requested after allowance.

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Question 25

How do weekends and holidays affect the date of abandonment?

Accepted Answer

Weekends and holidays can affect the date of abandonment. If the shortened statutory period expires on a weekend or federal holiday, the period for reply is extended to the next business day, and the date of abandonment would be the day after that.

MPEP 711.04(a) provides examples: "If a non-final Office action was mailed on May 17, 2019 and set a 3 month shortened statutory period that expired on Saturday, August 17, 2019. Monday, August 19, 2019 was a normal business day when the Office was open. In this situation, the date of abandonment is Tuesday, August 20, 2019."

This extension is due to 35 U.S.C. 21 and 37 CFR 1.7. For more details, refer to MPEP § 710.05.

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Question 26

Can I submit a letter of abandonment after paying the issue fee?

Accepted Answer

Submitting a letter of abandonment after paying the issue fee is generally not accepted without meeting specific criteria. According to MPEP 711.05:

An express abandonment arriving after the issue fee has been paid will not be accepted without a showing of one of the reasons indicated in 37 CFR 1.313(c), or else a showing under 37 CFR 1.183 justifying suspension of 37 CFR 1.313.

This means you must demonstrate either a reason specified in 37 CFR 1.313(c) or provide justification for suspending the rules under 37 CFR 1.183 to have your abandonment request considered after paying the issue fee.

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Question 27

Can failure to pay the issue fee result in an abandoned patent application?

Accepted Answer

Yes, failure to pay the issue fee can result in an abandoned patent application. MPEP 203.05 explicitly states that an abandoned application includes one removed from the Office docket for failure to pay the issue fee (MPEP § 711 to § 711.05). This means that even if an application has been approved for issuance, if the applicant fails to pay the required issue fee within the specified time frame, the application will be considered abandoned.

For more detailed information on this topic, you can refer to MPEP § 711 to § 711.05.

Here’s the complete FAQ:

MPEP 130-Examination of Secrecy Order Cases (2)

What actions must an applicant take to prevent abandonment of a national security classified patent application without a Secrecy Order?

What actions can be taken if a patent application contains national security markings but no Secrecy Order?

MPEP 150-Statements to DOE and NASA (1)

What is the time period for an applicant to respond to a formal request for a property rights statement made under the Atomic Energy Act or National Aeronautics and Space Act?

MPEP 200 - Types and Status of Application; Benefit and Priority (1)

What does it mean when a patent application is ‘abandoned’?

MPEP 200 - Types and Status of Application; Benefit and Priority Claims (5)

When is a provisional patent application considered abandoned?

What is the status of a patent application after a notice of allowance is mailed?

What does it mean if a patent application has a status of “rejected”?

What are the main reasons for patent application abandonment?

Can failure to pay the issue fee result in an abandoned patent application?

MPEP 203 - Status of Applications (6)

When is a provisional patent application considered abandoned?

What is the status of a patent application after a notice of allowance is mailed?

What does it mean when a patent application is ‘abandoned’?

What does it mean if a patent application has a status of “rejected”?

What are the main reasons for patent application abandonment?

Can failure to pay the issue fee result in an abandoned patent application?

MPEP 500 - Receipt and Handling of Mail and Papers (3)

What happens if the drawings in a patent application are not in compliance with the rules?

What happens if a drawing is not acceptable for publication?

What are the consequences of not responding to a notice about an unlocatable file?

MPEP 507 - Drawing Review in the Office of Patent Application Processing (2)

What happens if the drawings in a patent application are not in compliance with the rules?

What happens if a drawing is not acceptable for publication?

Patent Law (13)

When is a provisional patent application considered abandoned?

What is the time period for an applicant to respond to a formal request for a property rights statement made under the Atomic Energy Act or National Aeronautics and Space Act?

What is the status of a patent application after a notice of allowance is mailed?

What happens if the drawings in a patent application are not in compliance with the rules?

What happens if a drawing is not acceptable for publication?

What does it mean when a patent application is ‘abandoned’?

What does it mean if a patent application has a status of “rejected”?

What are the main reasons for patent application abandonment?

What are the consequences of not responding to a notice about an unlocatable file?

What are the consequences of failing to submit an Information Disclosure Statement (IDS)?

What are the consequences of failing to submit an Information Disclosure Statement (IDS)?

What actions must an applicant take to prevent abandonment of a national security classified patent application without a Secrecy Order?

What actions can be taken if a patent application contains national security markings but no Secrecy Order?

Can failure to pay the issue fee result in an abandoned patent application?

Patent Procedure (11)

When is a provisional patent application considered abandoned?

What is the status of a patent application after a notice of allowance is mailed?

What happens if the drawings in a patent application are not in compliance with the rules?

What happens if a drawing is not acceptable for publication?

What does it mean when a patent application is ‘abandoned’?

What does it mean if a patent application has a status of “rejected”?

What are the main reasons for patent application abandonment?

What are the consequences of not responding to a notice about an unlocatable file?

What are the consequences of failing to submit an Information Disclosure Statement (IDS)?

What are the consequences of failing to submit an Information Disclosure Statement (IDS)?

What actions must an applicant take to prevent abandonment of a national security classified patent application without a Secrecy Order?

Can failure to pay the issue fee result in an abandoned patent application?