Patent Law FAQ

For pending or abandoned applications that have not been published, the Office may only confirm that an application has been filed, provide the application number and filing date, the inventorship information, the classification, and the group art unit assigned to the application. This limited information is available to the public to help avoid infringement of pending patent rights.

Access to unpublished abandoned patent applications is limited. According to 37 CFR 1.14(a)(1)(iv), the file contents of an unpublished abandoned application may be made available to the public if:

• The application is identified in a U.S. patent, statutory invention registration, U.S. patent application publication, international publication of an international application, or publication of an international registration designating the U.S.
• Benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, 365, or 386(c) in an application that has been published or patented.

To obtain access, a written request must be submitted along with payment of the appropriate fee set forth in 37 CFR 1.19(b).

For applications filed on or after September 16, 2012, the following parties can provide written authority to grant access to inspect a pending or abandoned application kept in confidence under 35 U.S.C. 122(a), except as provided in 37 CFR 1.11, 1.14, 41.6, or 42.412:

1. The applicant
2. A patent practitioner of record
3. The assignee or an assignee of an undivided part interest
4. The inventor or a joint inventor

MPEP 203.05 outlines several scenarios where an application is considered abandoned:

• Formal abandonment by the applicant or attorney/agent of record
• Failure to take appropriate action at some stage in the prosecution of a nonprovisional application
• Failure to pay the issue fee
• For provisional applications, no later than 12 months after the filing date

Abandonment removes the application from the Office docket of pending applications. It’s crucial for applicants to be aware of deadlines and required actions to prevent unintentional abandonment.

The Office docket plays a crucial role in determining the status of a patent application. MPEP 203.05 refers to the Office docket when defining abandoned applications:

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

The Office docket is essentially the official record of pending patent applications at the USPTO. When an application is removed from this docket, it is no longer considered active or pending. This removal can occur for various reasons, including formal abandonment, applicant inaction, failure to pay fees, or expiration of statutory periods. Therefore, the status of an application on the Office docket is a key indicator of whether it is still being actively prosecuted or has been abandoned.

An abandoned patent application is one that has been removed from the Office docket of pending applications. According to MPEP 203.05, this can occur in several ways:

• Through formal abandonment by the applicant or their attorney/agent
• Due to failure of the applicant to take appropriate action during prosecution
• For failure to pay the issue fee
• In the case of a provisional application, no later than 12 months after the filing date

As stated in MPEP 203.05: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications. The specific reasons for abandonment are listed in the same section.

A substitute application is a type of national application that is filed to replace a previously filed non-provisional or provisional application. It is used when an applicant wants to start over with a new application while maintaining the benefit of the earlier filing date for common subject matter.

Key points about substitute applications:

• They are treated as new applications and receive a new application number.
• The previously filed application is considered to be abandoned as of the filing date of the substitute application.
• Substitute applications can claim the benefit of the earlier application’s filing date for common subject matter.
• They must be filed while the earlier application is still pending.
• Applicants must file a copy of the original application, specification, drawings, and amendments, if any, and a new oath or declaration.

For more information, see MPEP 201.09 and 37 CFR 1.53.

After an application becomes abandoned, it is no longer pending and is removed from the USPTO’s active files. The application file, however, is retained in storage for a period as determined by the USPTO. During this retention period, certain actions may still be possible:

1. The applicant may file a petition to revive the application if the abandonment was unintentional or unavoidable.
2. The application may serve as a basis for claiming benefit in a later-filed application, subject to certain conditions.
3. The application may be used as prior art against other applications.
4. The public may request access to the application file if it has been opened to public inspection.

It’s important to note that once an application is abandoned, it cannot be used as the basis for a statutory invention registration. For more details on abandoned applications, see MPEP 203.05 and MPEP 711.

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.

If an applicant fails to take appropriate action during the prosecution of a nonprovisional patent application, it can result in the application being considered abandoned. MPEP 203.05 specifically states that an abandoned application includes one removed from the Office docket through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application. This could include failing to respond to office actions, missing deadlines, or not providing requested information or documents.

MPEP 203.05 outlines several circumstances under which a patent application can become abandoned:

1. Through formal abandonment by the applicant or by the attorney or agent of record;
2. Through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application;
3. For failure to pay the issue fee (see MPEP § 711 to § 711.05); or
4. 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)).

An abandoned application is removed from the Office docket of pending applications. It’s important to note that abandonment can occur unintentionally, such as missing a deadline, or intentionally, such as when an applicant decides not to pursue the application further.

The United States Patent and Trademark Office (USPTO) defines an abandoned patent application through the Manual of Patent Examining Procedure (MPEP) 203.05. According to this section, an abandoned application is defined as:

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

This removal from the docket can occur for various reasons, including formal abandonment, failure to take appropriate action during prosecution, non-payment of fees, or the expiration of the statutory period for provisional applications.

Yes, an abandoned application can still be used as a priority document for subsequent applications, provided that the priority claim is made within the specified time limits. The abandoned status of the earlier application does not affect its ability to serve as a basis for priority. For more information on priority claims, refer to MPEP 201 and MPEP 211.

Yes, an abandoned application can be used as prior art, but the extent of its use depends on several factors. Under MPEP 2127, abandoned applications that have been published can be used as prior art as of their publication date for all they teach. Unpublished abandoned applications may be available as prior art under certain circumstances, such as when they are incorporated by reference in a U.S. patent. It’s important to note that the abandonment status itself does not negate the application’s potential as prior art. For specific rules on using abandoned applications as prior art, consult MPEP 2127 and MPEP 901 on prior art.

A substitute application is a type of national application that is filed to replace a previously filed non-provisional or provisional application. It is used when an applicant wants to start over with a new application while maintaining the benefit of the earlier filing date for common subject matter.

Key points about substitute applications:

• They are treated as new applications and receive a new application number.
• The previously filed application is considered to be abandoned as of the filing date of the substitute application.
• Substitute applications can claim the benefit of the earlier application’s filing date for common subject matter.
• They must be filed while the earlier application is still pending.
• Applicants must file a copy of the original application, specification, drawings, and amendments, if any, and a new oath or declaration.

For more information, see MPEP 201.09 and 37 CFR 1.53.

MPEP 203.05 outlines several scenarios where an application is considered abandoned:

• Formal abandonment by the applicant or attorney/agent of record
• Failure to take appropriate action at some stage in the prosecution of a nonprovisional application
• Failure to pay the issue fee
• For provisional applications, no later than 12 months after the filing date

Abandonment removes the application from the Office docket of pending applications. It’s crucial for applicants to be aware of deadlines and required actions to prevent unintentional abandonment.

The Office docket plays a crucial role in determining the status of a patent application. MPEP 203.05 refers to the Office docket when defining abandoned applications:

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

The Office docket is essentially the official record of pending patent applications at the USPTO. When an application is removed from this docket, it is no longer considered active or pending. This removal can occur for various reasons, including formal abandonment, applicant inaction, failure to pay fees, or expiration of statutory periods. Therefore, the status of an application on the Office docket is a key indicator of whether it is still being actively prosecuted or has been abandoned.

An abandoned patent application is one that has been removed from the Office docket of pending applications. According to MPEP 203.05, this can occur in several ways:

• Through formal abandonment by the applicant or their attorney/agent
• Due to failure of the applicant to take appropriate action during prosecution
• For failure to pay the issue fee
• In the case of a provisional application, no later than 12 months after the filing date

As stated in MPEP 203.05: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications. The specific reasons for abandonment are listed in the same section.

After an application becomes abandoned, it is no longer pending and is removed from the USPTO’s active files. The application file, however, is retained in storage for a period as determined by the USPTO. During this retention period, certain actions may still be possible:

1. The applicant may file a petition to revive the application if the abandonment was unintentional or unavoidable.
2. The application may serve as a basis for claiming benefit in a later-filed application, subject to certain conditions.
3. The application may be used as prior art against other applications.
4. The public may request access to the application file if it has been opened to public inspection.

It’s important to note that once an application is abandoned, it cannot be used as the basis for a statutory invention registration. For more details on abandoned applications, see MPEP 203.05 and MPEP 711.

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.

If an applicant fails to take appropriate action during the prosecution of a nonprovisional patent application, it can result in the application being considered abandoned. MPEP 203.05 specifically states that an abandoned application includes one removed from the Office docket through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application. This could include failing to respond to office actions, missing deadlines, or not providing requested information or documents.

MPEP 203.05 outlines several circumstances under which a patent application can become abandoned:

1. Through formal abandonment by the applicant or by the attorney or agent of record;
2. Through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application;
3. For failure to pay the issue fee (see MPEP § 711 to § 711.05); or
4. 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)).

An abandoned application is removed from the Office docket of pending applications. It’s important to note that abandonment can occur unintentionally, such as missing a deadline, or intentionally, such as when an applicant decides not to pursue the application further.

The United States Patent and Trademark Office (USPTO) defines an abandoned patent application through the Manual of Patent Examining Procedure (MPEP) 203.05. According to this section, an abandoned application is defined as:

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

This removal from the docket can occur for various reasons, including formal abandonment, failure to take appropriate action during prosecution, non-payment of fees, or the expiration of the statutory period for provisional applications.

Yes, an abandoned application can still be used as a priority document for subsequent applications, provided that the priority claim is made within the specified time limits. The abandoned status of the earlier application does not affect its ability to serve as a basis for priority. For more information on priority claims, refer to MPEP 201 and MPEP 211.

Yes, an abandoned application can be used as prior art, but the extent of its use depends on several factors. Under MPEP 2127, abandoned applications that have been published can be used as prior art as of their publication date for all they teach. Unpublished abandoned applications may be available as prior art under certain circumstances, such as when they are incorporated by reference in a U.S. patent. It’s important to note that the abandonment status itself does not negate the application’s potential as prior art. For specific rules on using abandoned applications as prior art, consult MPEP 2127 and MPEP 901 on prior art.

The process for obtaining copies of assignment records for pending or abandoned applications depends on whether the application is open to the public. The MPEP states:

‘Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public.’

For applications that are not open to the public, the process is more restricted:

‘For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.’

The required written authority varies depending on the application filing date. For applications filed on or after September 16, 2012, it must come from an inventor, applicant, assignee, patent practitioner of record, or someone with written authority from these parties.

The process for obtaining copies of assignment records for pending or abandoned applications depends on whether the application is open to the public. The MPEP states:

‘Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public.’

For applications that are not open to the public, the process is more restricted:

‘For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.’

The required written authority varies depending on the application filing date. For applications filed on or after September 16, 2012, it must come from an inventor, applicant, assignee, patent practitioner of record, or someone with written authority from these parties.

According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”

This means that any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.

According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”

This means that any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.

For applications filed on or after September 16, 2012, the following parties can provide written authority to grant access to inspect a pending or abandoned application kept in confidence under 35 U.S.C. 122(a), except as provided in 37 CFR 1.11, 1.14, 41.6, or 42.412:

1. The applicant
2. A patent practitioner of record
3. The assignee or an assignee of an undivided part interest
4. The inventor or a joint inventor

MPEP 203.05 outlines several scenarios where an application is considered abandoned:

• Formal abandonment by the applicant or attorney/agent of record
• Failure to take appropriate action at some stage in the prosecution of a nonprovisional application
• Failure to pay the issue fee
• For provisional applications, no later than 12 months after the filing date

Abandonment removes the application from the Office docket of pending applications. It’s crucial for applicants to be aware of deadlines and required actions to prevent unintentional abandonment.

The Office docket plays a crucial role in determining the status of a patent application. MPEP 203.05 refers to the Office docket when defining abandoned applications:

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

The Office docket is essentially the official record of pending patent applications at the USPTO. When an application is removed from this docket, it is no longer considered active or pending. This removal can occur for various reasons, including formal abandonment, applicant inaction, failure to pay fees, or expiration of statutory periods. Therefore, the status of an application on the Office docket is a key indicator of whether it is still being actively prosecuted or has been abandoned.

An abandoned patent application is one that has been removed from the Office docket of pending applications. According to MPEP 203.05, this can occur in several ways:

• Through formal abandonment by the applicant or their attorney/agent
• Due to failure of the applicant to take appropriate action during prosecution
• For failure to pay the issue fee
• In the case of a provisional application, no later than 12 months after the filing date

As stated in MPEP 203.05: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications. The specific reasons for abandonment are listed in the same section.

A substitute application is a type of national application that is filed to replace a previously filed non-provisional or provisional application. It is used when an applicant wants to start over with a new application while maintaining the benefit of the earlier filing date for common subject matter.

Key points about substitute applications:

• They are treated as new applications and receive a new application number.
• The previously filed application is considered to be abandoned as of the filing date of the substitute application.
• Substitute applications can claim the benefit of the earlier application’s filing date for common subject matter.
• They must be filed while the earlier application is still pending.
• Applicants must file a copy of the original application, specification, drawings, and amendments, if any, and a new oath or declaration.

For more information, see MPEP 201.09 and 37 CFR 1.53.

For pending or abandoned applications that have not been published, the Office may only confirm that an application has been filed, provide the application number and filing date, the inventorship information, the classification, and the group art unit assigned to the application. This limited information is available to the public to help avoid infringement of pending patent rights.

According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”

This means that any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.

After an application becomes abandoned, it is no longer pending and is removed from the USPTO’s active files. The application file, however, is retained in storage for a period as determined by the USPTO. During this retention period, certain actions may still be possible:

1. The applicant may file a petition to revive the application if the abandonment was unintentional or unavoidable.
2. The application may serve as a basis for claiming benefit in a later-filed application, subject to certain conditions.
3. The application may be used as prior art against other applications.
4. The public may request access to the application file if it has been opened to public inspection.

It’s important to note that once an application is abandoned, it cannot be used as the basis for a statutory invention registration. For more details on abandoned applications, see MPEP 203.05 and MPEP 711.

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.

If an applicant fails to take appropriate action during the prosecution of a nonprovisional patent application, it can result in the application being considered abandoned. MPEP 203.05 specifically states that an abandoned application includes one removed from the Office docket through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application. This could include failing to respond to office actions, missing deadlines, or not providing requested information or documents.

MPEP 203.05 outlines several circumstances under which a patent application can become abandoned:

1. Through formal abandonment by the applicant or by the attorney or agent of record;
2. Through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application;
3. For failure to pay the issue fee (see MPEP § 711 to § 711.05); or
4. 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)).

An abandoned application is removed from the Office docket of pending applications. It’s important to note that abandonment can occur unintentionally, such as missing a deadline, or intentionally, such as when an applicant decides not to pursue the application further.

The United States Patent and Trademark Office (USPTO) defines an abandoned patent application through the Manual of Patent Examining Procedure (MPEP) 203.05. According to this section, an abandoned application is defined as:

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

This removal from the docket can occur for various reasons, including formal abandonment, failure to take appropriate action during prosecution, non-payment of fees, or the expiration of the statutory period for provisional applications.

The process for obtaining copies of assignment records for pending or abandoned applications depends on whether the application is open to the public. The MPEP states:

‘Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public.’

For applications that are not open to the public, the process is more restricted:

‘For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.’

The required written authority varies depending on the application filing date. For applications filed on or after September 16, 2012, it must come from an inventor, applicant, assignee, patent practitioner of record, or someone with written authority from these parties.

Access to unpublished abandoned patent applications is limited. According to 37 CFR 1.14(a)(1)(iv), the file contents of an unpublished abandoned application may be made available to the public if:

• The application is identified in a U.S. patent, statutory invention registration, U.S. patent application publication, international publication of an international application, or publication of an international registration designating the U.S.
• Benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, 365, or 386(c) in an application that has been published or patented.

To obtain access, a written request must be submitted along with payment of the appropriate fee set forth in 37 CFR 1.19(b).

Yes, an abandoned application can still be used as a priority document for subsequent applications, provided that the priority claim is made within the specified time limits. The abandoned status of the earlier application does not affect its ability to serve as a basis for priority. For more information on priority claims, refer to MPEP 201 and MPEP 211.

Yes, an abandoned application can be used as prior art, but the extent of its use depends on several factors. Under MPEP 2127, abandoned applications that have been published can be used as prior art as of their publication date for all they teach. Unpublished abandoned applications may be available as prior art under certain circumstances, such as when they are incorporated by reference in a U.S. patent. It’s important to note that the abandonment status itself does not negate the application’s potential as prior art. For specific rules on using abandoned applications as prior art, consult MPEP 2127 and MPEP 901 on prior art.

MPEP 203.05 outlines several scenarios where an application is considered abandoned:

• Formal abandonment by the applicant or attorney/agent of record
• Failure to take appropriate action at some stage in the prosecution of a nonprovisional application
• Failure to pay the issue fee
• For provisional applications, no later than 12 months after the filing date

Abandonment removes the application from the Office docket of pending applications. It’s crucial for applicants to be aware of deadlines and required actions to prevent unintentional abandonment.

The Office docket plays a crucial role in determining the status of a patent application. MPEP 203.05 refers to the Office docket when defining abandoned applications:

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

The Office docket is essentially the official record of pending patent applications at the USPTO. When an application is removed from this docket, it is no longer considered active or pending. This removal can occur for various reasons, including formal abandonment, applicant inaction, failure to pay fees, or expiration of statutory periods. Therefore, the status of an application on the Office docket is a key indicator of whether it is still being actively prosecuted or has been abandoned.

An abandoned patent application is one that has been removed from the Office docket of pending applications. According to MPEP 203.05, this can occur in several ways:

• Through formal abandonment by the applicant or their attorney/agent
• Due to failure of the applicant to take appropriate action during prosecution
• For failure to pay the issue fee
• In the case of a provisional application, no later than 12 months after the filing date

As stated in MPEP 203.05: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications. The specific reasons for abandonment are listed in the same section.

A substitute application is a type of national application that is filed to replace a previously filed non-provisional or provisional application. It is used when an applicant wants to start over with a new application while maintaining the benefit of the earlier filing date for common subject matter.

Key points about substitute applications:

• They are treated as new applications and receive a new application number.
• The previously filed application is considered to be abandoned as of the filing date of the substitute application.
• Substitute applications can claim the benefit of the earlier application’s filing date for common subject matter.
• They must be filed while the earlier application is still pending.
• Applicants must file a copy of the original application, specification, drawings, and amendments, if any, and a new oath or declaration.

For more information, see MPEP 201.09 and 37 CFR 1.53.

For pending or abandoned applications that have not been published, the Office may only confirm that an application has been filed, provide the application number and filing date, the inventorship information, the classification, and the group art unit assigned to the application. This limited information is available to the public to help avoid infringement of pending patent rights.

According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”

This means that any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.

After an application becomes abandoned, it is no longer pending and is removed from the USPTO’s active files. The application file, however, is retained in storage for a period as determined by the USPTO. During this retention period, certain actions may still be possible:

1. The applicant may file a petition to revive the application if the abandonment was unintentional or unavoidable.
2. The application may serve as a basis for claiming benefit in a later-filed application, subject to certain conditions.
3. The application may be used as prior art against other applications.
4. The public may request access to the application file if it has been opened to public inspection.

It’s important to note that once an application is abandoned, it cannot be used as the basis for a statutory invention registration. For more details on abandoned applications, see MPEP 203.05 and MPEP 711.

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.

If an applicant fails to take appropriate action during the prosecution of a nonprovisional patent application, it can result in the application being considered abandoned. MPEP 203.05 specifically states that an abandoned application includes one removed from the Office docket through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application. This could include failing to respond to office actions, missing deadlines, or not providing requested information or documents.

MPEP 203.05 outlines several circumstances under which a patent application can become abandoned:

1. Through formal abandonment by the applicant or by the attorney or agent of record;
2. Through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application;
3. For failure to pay the issue fee (see MPEP § 711 to § 711.05); or
4. 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)).

An abandoned application is removed from the Office docket of pending applications. It’s important to note that abandonment can occur unintentionally, such as missing a deadline, or intentionally, such as when an applicant decides not to pursue the application further.

The United States Patent and Trademark Office (USPTO) defines an abandoned patent application through the Manual of Patent Examining Procedure (MPEP) 203.05. According to this section, an abandoned application is defined as:

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

This removal from the docket can occur for various reasons, including formal abandonment, failure to take appropriate action during prosecution, non-payment of fees, or the expiration of the statutory period for provisional applications.

The process for obtaining copies of assignment records for pending or abandoned applications depends on whether the application is open to the public. The MPEP states:

‘Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public.’

For applications that are not open to the public, the process is more restricted:

‘For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.’

The required written authority varies depending on the application filing date. For applications filed on or after September 16, 2012, it must come from an inventor, applicant, assignee, patent practitioner of record, or someone with written authority from these parties.

Access to unpublished abandoned patent applications is limited. According to 37 CFR 1.14(a)(1)(iv), the file contents of an unpublished abandoned application may be made available to the public if:

• The application is identified in a U.S. patent, statutory invention registration, U.S. patent application publication, international publication of an international application, or publication of an international registration designating the U.S.
• Benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, 365, or 386(c) in an application that has been published or patented.

To obtain access, a written request must be submitted along with payment of the appropriate fee set forth in 37 CFR 1.19(b).

Yes, an abandoned application can still be used as a priority document for subsequent applications, provided that the priority claim is made within the specified time limits. The abandoned status of the earlier application does not affect its ability to serve as a basis for priority. For more information on priority claims, refer to MPEP 201 and MPEP 211.

Yes, an abandoned application can be used as prior art, but the extent of its use depends on several factors. Under MPEP 2127, abandoned applications that have been published can be used as prior art as of their publication date for all they teach. Unpublished abandoned applications may be available as prior art under certain circumstances, such as when they are incorporated by reference in a U.S. patent. It’s important to note that the abandonment status itself does not negate the application’s potential as prior art. For specific rules on using abandoned applications as prior art, consult MPEP 2127 and MPEP 901 on prior art.