Reviving an abandoned patent application

Once you file a patent application and start receiving Office actions, you’ve got to stay on your toes. Every Office action comes with a time limit, and if you leave it too long, you might find yourself in a nightmare — your idea disclosed, but now impossible to patent.

Patent applications go abandoned if you are not responsive when you receive an Office action. When you receive an Office action, you must respond within 3 months, although you can extend the due date by up to 3 months.  However, if you don’t respond by 6 months after the mailing date, the USPTO considers your patent application abandoned. This means you cannot pursue the patent any longer. However, if your application got published during prosecution, your idea has entered the public domain.

In some cases, all is not yet lost. You can revive an abandoned patent application – but only if the delay in responding was unintentional or unavoidable. If the delay was unintentional, you must explain the circumstances and pay the petition fee ($1700 large entity, $850 small entity, $850 micro entity) in addition to any other fees that you need to pay, such as extension of time fees or maintenance fees.  

If the delay was unavoidable, you only need to explain the circumstance. An unavoidable delay is very difficult to prove and is only accepted in very extreme situations such as the death of an assistant responsible for payment of maintenance fees. 

Unintentional delays are more common, and such petitions are more successful. What does unintentional mean with respect to abandonment of a patent or patent application? This is probably best defined by what is NOT unintentional. The USPTO outlines 5 scenarios in which a delay is not unintentional:

  • (A) the applicant does not consider the claims to be patentable over the references relied upon in an outstanding Office action;
  • (B) the applicant does not consider the allowed or patentable claims to be of sufficient breadth or scope to justify the financial expense of obtaining a patent;
  • (C) the applicant does not consider any patent to be of sufficient value to justify the financial expense of obtaining the patent;
  • (D) the applicant does not consider any patent to be of sufficient value to maintain an interest in obtaining the patent; or
  • (E) the applicant remains interested in eventually obtaining a patent, but simply seeks to defer patent fees and patent prosecution expenses.

You must make your explanations for unintentional delays in good faith; fraudulent explanations carry a very high risk of liability. If you do eventually get the patent granted, and the patent ends up contested in court, the whole case may hinge on whether the delay was actually unintentional.

So what’s the takeaway here? If you don’t have a patent practitioner managing your IP portfolio, stay on top of your Office action and maintenance fee due dates! Make a calendar reminder or something. While you could potentially get an application revived by claiming unintentional abandonment, that sort of exposure is not something you want to risk.

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