Question 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?

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 2

What is the impact of a terminal disclaimer on an abandoned application?

Accepted Answer

A terminal disclaimer can have significant implications for an abandoned application. The MPEP 711.02(b) provides guidance on this matter:

The mere existence of a recorded terminal disclaimer filed to obviate a double patenting rejection does not preclude an application from becoming abandoned for failure to reply to an Office action. The establishment of the terminal disclaimer creates only a formal relationship between applications or patents; it does not revive an abandoned application.

Key points to understand:

A terminal disclaimer alone does not prevent abandonment
It does not automatically revive an abandoned application
Applicants must still respond to Office actions to avoid abandonment
If an application becomes abandoned, a proper petition for revival is necessary, regardless of any terminal disclaimer

To learn more:

Question 3

What is the difference between a petition to withdraw holding of abandonment and a petition to revive an abandoned application?

Accepted Answer

A petition to withdraw holding of abandonment is appropriate when the applicant believes the application is not actually abandoned (e.g., there is disagreement about the sufficiency of a reply or relevant dates). This petition does not require a fee. In contrast, a petition to revive an abandoned application is used when there is no dispute about the abandonment but the applicant wants to revive the application. This petition requires a fee and is based on unintentional delay.

As stated in the MPEP: Where an applicant contends that the application is not in fact abandoned (e.g., there is disagreement as to the sufficiency of the reply, or as to controlling dates), a petition under 37 CFR 1.181(a) requesting withdrawal of the holding of abandonment is the appropriate course of action, and such petition does not require a fee. Where there is no dispute as to whether an application is abandoned (e.g., the applicant's contentions merely involve the cause of abandonment), a petition under 37 CFR 1.137 (accompanied by the appropriate petition fee) is necessary to revive the abandoned application.

To learn more:

Question 4

What is the difference between a petition to withdraw holding of abandonment and a petition for revival?

Accepted Answer

What is the difference between a petition to withdraw holding of abandonment and a petition for revival?

Understanding the difference between a petition to withdraw holding of abandonment and a petition for revival is crucial for patent applicants dealing with potential abandonment issues.

According to MPEP 711.03(c):

'Where an applicant contends that the application is not in fact abandoned (e.g., there is disagreement as to the sufficiency of the reply, or as to controlling dates), a petition under 37 CFR 1.181(a) requesting withdrawal of the holding of abandonment is the appropriate course of action, and such petition does not require a fee. Where the application is in fact abandoned (e.g., there is no disagreement as to whether the application is abandoned), a petition under 37 CFR 1.137 (accompanied by the petition fee) is necessary to revive the abandoned application.'

Key differences include:

Petition to withdraw holding of abandonment:
- Filed when the applicant believes the application is not actually abandoned
- No fee required
- Filed under 37 CFR 1.181
Petition for revival:
- Filed when the application is actually abandoned
- Requires a fee
- Filed under 37 CFR 1.137
- Requires a showing of unintentional delay

Choosing the correct type of petition is essential for properly addressing abandonment issues with the USPTO.

To learn more:

Question 5

What happens to abandoned applications that are later revived?

Accepted Answer

When an abandoned application is later revived, it retains its original filing date. The revival process effectively removes the abandonment status, allowing the application to continue prosecution. However, the period of abandonment may impact patent term adjustment calculations. For more information on revival procedures, refer to MPEP 711 and 37 CFR 1.137.

Question 6

What happens if the filing fee for a provisional application is not paid?

Accepted Answer

If the filing fee for a provisional application is not paid, the USPTO will take specific actions as outlined in MPEP 601.01(b):

Quote: "If the filing fee is not paid in the provisional application, the USPTO may dispose of the provisional application. The notification to applicant that the provisional application has been disposed of will include a notice that if the fee is paid within two months of the date of the notification, the provisional application will be revived."

Key points to remember:

The USPTO may dispose of the provisional application if the fee is not paid
Applicants will be notified of the disposal
There is a two-month window to pay the fee and revive the application
If the fee is paid within this period, the application will be revived

It's crucial to note that if the application is not revived within the two-month period, the opportunity to establish that filing date may be permanently lost, which could have significant implications for patent rights.

To learn more:

Question 7

What happens if an applicant fails to submit required application components within the specified time period?

Accepted Answer

If an applicant fails to submit required application components within the specified time period, the following consequences may occur:

The application may be considered abandoned.
If abandoned, the application will be treated as though it had never been filed.
The applicant may lose the benefit of the original filing date.

The MPEP states: Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.

However, it may be possible to revive an abandoned application under certain circumstances:

The applicant can file a petition to revive under 37 CFR 1.137.
The petition must be accompanied by the required reply, the petition fee, and a statement that the entire delay was unintentional.

It's crucial to respond to any notices from the USPTO promptly and to submit all required components within the specified timeframes to avoid these issues.

To learn more:

Question 8

What happens if an applicant fails to respond to a request for a property rights statement?

Accepted Answer

If an applicant fails to respond to a request for a property rights statement, there can be serious consequences for the patent application. According to MPEP 150:

If no proper and timely statement is received, the application will be held abandoned and the applicant so notified.

The process typically involves:

An initial informal request (45-Day Letter)
If no response or if the statement is defective, a formal request is made with a 30-day statutory period for response
No extensions are available for this 30-day period
Failure to respond properly results in the application being held abandoned

However, abandoned applications may be revived under the provisions of 37 CFR 1.137, as noted in the case of In re Rutan, 231 USPQ 864 (Comm'r Pat. 1986).

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

For more information on revival, visit: revival.

Question 9

What are the options when an application is abandoned?

Accepted Answer

When an application is abandoned, there are two main options:

Ask for reconsideration of the holding of abandonment if you disagree that the application is actually abandoned
Petition for revival under 37 CFR 1.137 if you agree the application is abandoned

As stated in the MPEP:

When advised of the abandonment of his or her application, applicant may either ask for reconsideration of such holding, if he or she disagrees with it on the basis that there is no abandonment in fact; or petition for revival under 37 CFR 1.137.

To learn more:

Question 10

How does the USPTO treat applications abandoned for failure to timely reply to a notice?

Accepted Answer

When an application is abandoned for failure to timely reply to a notice, the USPTO follows specific procedures. According to MPEP 711.02(b):

An application abandoned for failure to timely reply to an Office action may be revived as a pending application if it is shown to the satisfaction of the Commissioner that the delay in reply was unavoidable (37 CFR 1.137(a)) or unintentional (37 CFR 1.137(b)).

To revive such an application, the applicant must:

File a petition under 37 CFR 1.137(a) for unavoidable delay, or 37 CFR 1.137(b) for unintentional delay
Pay the required petition fee
Submit the reply required to the outstanding Office action or notice
Provide a statement explaining the delay (unavoidable or unintentional)

The type of petition and requirements depend on whether the delay was unavoidable or unintentional.

To learn more:

Question 11

How does the USPTO handle applications abandoned after payment of the issue fee?

Accepted Answer

How does the USPTO handle applications abandoned after payment of the issue fee?

Applications abandoned after payment of the issue fee are handled differently by the USPTO. According to MPEP 711.02(b):

"An application is abandoned if it is ready for issuance but the issue fee is not paid within 3 months from the date of the Notice of Allowance (35 U.S.C. 151). An application can also be abandoned by failure to pay the publication fee if required."

In such cases:

The application is technically abandoned for failure to pay the issue fee or publication fee
The application may be revived under 37 CFR 1.137 if the delay was unintentional
The petition to revive must be filed within the period set in 37 CFR 1.137(c)
If revived, the patent will be issued with the same issue date it would have had if the issue fee had been timely paid

It's crucial to act promptly if you've missed the issue fee payment deadline to ensure the best chance of reviving the application.

To learn more:

Question 12

Can an abandoned patent application be revived?

Accepted Answer

Yes, an abandoned patent application can be revived under certain circumstances. The MPEP 711 states:

An abandoned application may be revived as a pending application if it is shown to the satisfaction of the Director that the delay was unavoidable (37 CFR 1.137(a)) or unintentional (37 CFR 1.137(b)).

To revive an abandoned application, the applicant must:

File a petition for revival
Pay the required fee
Provide a statement that the delay was unavoidable or unintentional
Submit any outstanding responses or required documents

The specific requirements and procedures for revival depend on whether the delay was unavoidable or unintentional, as defined in 37 CFR 1.137.

To learn more:

Question 13

Can an abandoned application be revived if the delay was unintentional?

Accepted Answer

Can an abandoned application be revived if the delay was unintentional?

Yes, an abandoned application can be revived if the delay in responding was unintentional. The MPEP 711.02(b) states:

"A petition to revive an abandoned application on the grounds that the delay was unintentional (37 CFR 1.137) may be filed even if the applicant did not timely reply to an Office action or notice."

To revive an application under these circumstances:

File a petition under 37 CFR 1.137(a)
Pay the required petition fee
Submit a statement that the entire delay was unintentional
File the reply required to the outstanding Office action or notice

It's important to note that the USPTO requires a showing of unintentional delay for the entire period from the due date for the reply until the filing of a grantable petition.

To learn more:

Question 14

Can a patent application be abandoned unintentionally?

Accepted Answer

Can a patent application be abandoned unintentionally?

Yes, a patent application can be abandoned unintentionally. This often occurs when an applicant inadvertently misses a deadline or fails to respond to an Office action within the required time frame. The MPEP 711 states:

An application may become abandoned by failure to file a timely and proper reply to an office notice or action even if the applicant did not intend to abandon the application or to allow it to become abandoned.

If your application has been unintentionally abandoned, you may be able to revive it under certain conditions. The USPTO provides procedures for revival of an unintentionally abandoned application, but it's crucial to act promptly and follow the specific requirements outlined in MPEP 711.03(c).

To learn more:

Patent Law FAQ

Here’s the complete FAQ:

MPEP 150-Statements to DOE and NASA (2)

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 happens if an applicant fails to respond to a request for a property rights statement?

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

What happens to abandoned applications that are later revived?

MPEP 203 - Status of Applications (1)

What happens to abandoned applications that are later revived?

Patent Law (5)

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 happens to abandoned applications that are later revived?

What happens if the filing fee for a provisional application is not paid?

What happens if an applicant fails to submit required application components within the specified time period?

What happens if an applicant fails to respond to a request for a property rights statement?

Patent Procedure (4)

What happens to abandoned applications that are later revived?

What happens if the filing fee for a provisional application is not paid?

What happens if an applicant fails to submit required application components within the specified time period?

What happens if an applicant fails to respond to a request for a property rights statement?