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Filing a patent is a time-consuming and complex process. Not doing things the right way can set your timetable back many months. Our experts know everything about this process—they invented it! Here are some important considerations when filing for your patent.

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Filing a patent is a time-consuming and complex process. Not doing things the right way can set your timetable back many months. Our experts know everything about this process—they invented it! Here are some important considerations when filing for your patent.

1. When filing under unavoidable or unintentional standards

Petitions to revive filed under either the unavoidable or the unintentional standards should be filed within 2 months of becoming aware of the abandonment of the application to avoid any question of timeliness.

2. Renewed petitions

Renewed petitions to revive must be filed within 2 months of an adverse decision on the earlier petition to revive to be considered timely, unless a proper extension of time up to an additional 5 months (for a total of 7 months) is obtained under 37 CFR 1.136(a). Otherwise, the office may require a specific showing as to how the entire delay was unavoidable or unintentional.

3. Petition fees

A petition under 37 CFR 1.137(a) must be accompanied by the petition fee set forth in 37 CFR 1.17(l), and a petition under 37 CFR 1.137 (b) must be accompanied by the petition fee set forth in 37 CFR 1.17(m). The petition fee is required by statute. See 35 U.S.C. 41(a)(7). Thus, the office cannot grant requests for waiver or reduction of the requisite petition fee.

4. Nonprovisional applications

In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application.

5. Issue fees

In an application abandoned for failure to pay the issue fee or any portion thereof, the required reply must be the payment of the issue fee or any outstanding balance thereof even if the application is then to be abandoned in favor of a continuing application. In a patent lapsed for failure to pay the balance of issue fee due, the required reply is payment of the balance of issue fee due.

6. Office requirement

In a provisional application abandoned for failure to comply in a timely manner with an office requirement, the reply requirement must be met by a complete reply to such office requirement.

7. Abandoned applications

Note that 37 CFR 1.137(b) is applicable to applications abandoned and patents lapsed, regardless of the length of time that the application was abandoned or the patent was lapsed. However, 37 CFR 1.137(b) requires that the entire period of delay, from the due date of the reply to the date of filing a grantable petition to revive, was unintentional for a petition under 37 CFR 1.137(b) to be granted.

8. Statement of unintentional delay

While a statement of unintentional delay for the entire period of abandonment is generally sufficient, 37 CFR 1.137(b) authorizes the office to require additional information when there is a question whether the entire delay was unintentional. In such instances, the office may require evidence for each of the 3 critical periods: (a) the delay in filing a timely reply before abandonment of the application or lapse of the patent, (b) the delay in filing an initial petition to revive, and (c) the delay in filing a grantable petition to revive.

9. Deliberately delaying the filing

An applicant who deliberately delays the filing of a petition under 37 CFR 1.137 will not be able to show that “the entire delay in filing the required reply from the due date of the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(b) was unintentional.”

10. Examples of situations with unintentional delay

Examples of situations where unintentional delay was argued but the office held these activities to constituteintentional delay: (a) where the applicant deliberately permits an application to become abandoned (i.e., due to a conclusion that the claims are unpatentable, that a rejection in an office action cannot be overcome, or that an invention lacks sufficient commercial value to justify continued prosecution); (b) where the applicant chooses not to seek or persist in seeking revival of an abandoned application, or where the applicant deliberately chooses to delay seeking revival of an abandoned application.

11. Intentional delay

An intentional delay resulting from a deliberate course of action chosen by the applicant is not affected by (a) the correctness of the applicant’s (or applicant’s representative’s) decision to abandon the application or not to seek or persist in seeking revival of the application; (b) the correctness or propriety of a rejection, or other objection, requirement, or decision by the office; or (c) the discovery of new information or evidence, or other change in circumstances subsequent to the abandonment or decision not to seek or persist in seeking revival.

12. Intentional abandonment

An intentional abandonment of an application, or an intentional delay in seeking either the withdrawal of a holding of abandonment in, or the revival of, an abandoned application, precludes a finding of unavoidable or unintentional delay pursuant to 37 CFR 1.137.

13. When you choose not to seek revival

Where an applicant chooses not to seek revival of an application, or chooses not to persist in seeking revival after an adverse decision on an earlier petition, the resulting delay cannot be considered to be unavoidable or unintentional.

14. Provisional application

A provisional application can be revived for a period not to exceed 12 months from the date of filing, even if the petition is filed outside this 12-month period.

Source: United States Patent and Trademark Office (www.uspto.gov).