APLF: Abandonment Petitions Due Within Two Months of Notice or Twelve Months of Last Submission

On May 27, 2004, the USPTO clarified its position concerning the treatment of petitions to withdraw a holding of abandonment that are not timely filed because the applicant failed to exercise reasonable diligence in monitoring the status of the application. "Untimely Filing of Petitions under 37 CFR 1.181(a) to Withdraw Holdings of Abandonment" available here and is intended to prevent inappropriate patent term adjustments and extensions with the following provisions.

For Utility and Plant Applications Filed on or after May 29, 2000, a petition to withdraw a holding of abandonment must be filed within two months from the mailing date of the notice of abandonment in order to avoid reductions in patent term adjustments under the provisions of 37 CFR 1.704(c)(4). If the applicant does not receive a notice of abandonment, the period of adjustment will be reduced by the number of days between twelve months from the date of applicant's filing and the filing date of a grantable petition to withdraw the holding of abandonment.

For Utility and Plant Applications Filed on or after June 8, 1995 but before May 29, 2000, the URAA provides for patent term extension only if issuance of the patent was delayed due to: (1) an interference proceeding; (2) imposition of a secrecy order; or (3) successful appellate review under 35 U.S.C. § 154(b). Unless an application is held abandoned during one of these three periods, the filing of a petition to withdraw a holding of abandonment will not operate to extend the term of the patent because the USPTO has no authority to grant patent term extensions for other administrative delays. Furthermore, if a petition to withdraw a holding of abandonment is not filed within two months from the mailing date of the notice of abandonment during a period of appellate review, any patent term extension accrued under 37 CFR 1.701(a)(3) may be reduced under the "due diligence" provisions of 37 CFR 1.701(d)(2).

For Utility and Plant Applications Filed before June 8, 1995, and All Design Applications, any petition to withdraw the holding of abandonment that is not filed within two months of the mail date of the notice of abandonment will not (absent extraordinary circumstances) be treated on its merits unless accompanied by a terminal disclaimer under 37 CFR 1.321(a), and the required fee set forth in 37 CFR 1.20(d). The disclaimed period must include the number of days between twelve months from the date of applicant's filing and the filing date of a grantable petition to withdraw the holding of abandonment as set forth in MPEP 711.03(c). If the applicant does not receive a notice of abandonment, then the disclaimer period starts twelve months from the date of applicant's filing or submission of correspondence with the USPTO, for which further action by the USPTO can reasonably be expected.

Petitions to revive an abandoned application for unavoidable or unintentional delay under 37 CFR 1.137(a) or (b) are also subject to a terminal disclaimer requirement of 37 CFR 1.137(d).

According to the USPTO, "Since practitioners and pro se applicants can monitor the status of their applications using the USPTO's PAIR and IFW systems, the failure to receive a notice of abandonment (or any other USPTO notification) will not excuse an unreasonable delay in filing a petition to withdraw the holding of abandonment. A status inquiry is in order once six months have elapsed with no response from the USPTO."

For more on the latest USPTO procedures contact the author of this "APLF Update," Bill Heinze (href="mailto:bill.heinze@tkhr.com">bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA and via the new "I/P Updates news service" at http://billheinze.blogspot.com (RSS/Atom feeds).

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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