An application can go abandoned for a number of reasons; failure to respond to an Office Action, failing to pay Maintenance Fees, not submitting the correct documents alongside a response, etc. These can all happen unintentionally and may qualify as “unintentional abandonment”.
Abandonment of an application means that prosecution will stop, and the applicant will no longer have the opportunity to obtain a granted patent. This will also mean that the applicant loses the opportunity to be granted a monopoly right over the invention which they could have relied on to prevent others from using the invention.
Can You Revive an Abandoned Application?
In short, most of the time, yes you can. Time, however, is of the essence. If you intend to revive an abandoned application, you should aim to do so within 2 years of abandonment. It is still possible to revive an application after this timeframe, however, it becomes more onerous and some evidence may be required.
How to Revive an Abandoned Application
In order to revive an abandoned application, the applicant will need:
1. Petition form (PTO/SB/64)
2. The relevant Petition Fee (37 CFR 1.17(m)). Fees as of March 2021:
- Official Fee for a large entity: $2100
- Official Fee for a small entity: $1050
- Official Fee for a micro entity: $525
3. Required response (e.g. if the application went abandoned due to failure to respond to an Office Action, a full response would be required).
4. A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional.
In some instances, a terminal disclaimer may also be required.
The USPTO typically relies upon the applicant’s duty of candour and good faith and accepts the statement that the entire delay was unintentional without requiring further information. The Director may require additional information where there is a question whether the delay was unintentional.
If you would like to discuss reviving an abandoned application, please contact email@example.com for further information.