Under certain circumstances, yes.
What is Abandonment?
Firstly, let's take a look at what is an abandonment.
A patent application is considered abandoned when the applicant fails to take required actions within the specified timeframe. This could mean missing a response deadline or submitting an incomplete reply. If extensions of time are available, abandonment only occurs once all extended deadlines have passed.
Additionally, an applicant can voluntarily and expressly abandon a patent application by submitting a formal declaration of abandonment to the USPTO.
Types of Abandonment
There are two main types of abandonments:
unintentional abandonment;
unavoidable abandonment; or
intentional abandonment.
If you voluntarily and expressly abandon a patent application by submitting the written declaration to the USPTO, that would be considered as an intentional abandonment. You CANNOT revive an intentionally abandoned patent application.
The USPTO only allows revival of applications that were abandoned unintentionally or, in certain cases, unavoidably.
What Is Unintentional Abandonment?
Mistakes happen. You might have recorded the wrong date or believed there was more time to respond to an Office Action. With multiple pending patents, it’s also possible to mix up application serial numbers for specific deadlines. In these cases, unintentional abandonment typically applies, allowing for revival.
However, if the decision to let an application lapse was intentional, it usually doesn’t qualify as unintentional abandonment.
When Should Your Seek Revival of an Abandoned Patent Application?
Timeliness is essential. To revive an abandoned application, you will need to confirm that the entire period of delay – from the date of abandonment to the filing of the revival petition – was unintentional. The emphasis here is on the entire delay. If an Applicant learns of the abandonment but waits months before petitioning for revival, it could raise questions about whether the full delay was genuinely unintentional.
Typically, when a patent application is abandoned, the USPTO will send a Notice of Abandonment to you or your Patent Attorney. Unless you or your Patent Attorney argue that you never received this notice, the date on the Notice of Abandonment marks the beginning of the period for prompt revival action.
How to revive an abandoned patent application?
To revive an abandoned patent application, you must promptly file a petition with the USPTO upon discovering the abandonment. The petition should include the following:
Petition Form (PTO/SB/64)
Petition Fee per (37 CFR 1.17(m), $2,100 for large entity, $840 for small entity)
Required Response (e.g., a reply to the Office Action)
Statement of Unintentional Delay, affirming that “The entire delay in filing the required reply from the due date for the required reply until the filing of a grantable petition under 37 CFR 1.137(a) was unintentional.” (This statement is included in the USPTO petition form)
In some cases, a terminal disclaimer may also be necessary.
Importantly, the USPTO petition form does not require detailed explanations for the unintentional abandonment if the request is filed less than two years after the date of abandonment.
What Happens If the Abandonment Lasts More Than Two Years?
If a petition to revive an abandoned patent application is filed more than two years after the abandonment date, the USPTO will request additional information to verify that the delay in seeking revival was indeed unintentional, including the reasons behind the delay (MPEP 711).
The petition form for reviving an unintentionally abandoned application includes a checkbox to require additional explanation of the circumstances to be provided. Therefore, if more than two years have elapsed since abandonment, be prepared to provide a clear explanation of why the application was unintentionally abandoned.
Do You Need to Pay Extension Fees When Requesting Revival?
No, you do not need to file petition for an extension of time under 37 CFR 1.136 and the extension fee when you request the revival of the abandoned patent application (MPEP 711).
What About Patent That Is Expired By Failing to Pay Maintenance Fee?
Similar to the abandoned patent application, you may be able to revive an expired patent caused by the failure of paying maintenance fee.
In summary, you can revive an abandoned patent application or an expired patent if certain requirements are met. Specifically, two factors are considered:
reason for abandonment - must be unintentional abandonment; and
length of time since abandonment - timeliness is the key.
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