How to Revive an Abandoned Patent Application

How Applications Become Abandoned

A US application is abandoned by operation of law when the applicant fails to reply to an office action or other requirement within the time allowed, including any available extensions, or fails to pay the issue fee after a notice of allowance. The USPTO usually mails a notice of abandonment, but the abandonment takes effect on the day after the last date a reply could have been filed, whether or not the notice arrives.

Abandonment can also be express, when the applicant files a letter abandoning the application. Revival is aimed at unintended abandonment; an application abandoned deliberately generally cannot be revived on the ground that the delay was unintentional.

Step 1: Determine Why the Application Went Abandoned

Before filing anything, establish the facts from the file history and the docket:

• Which communication went unanswered, and when was it mailed
• Whether the communication was actually received by the correspondence address of record
• Whether the missed deadline was docketed, and if so, why it was not acted on
• Whether anyone made a deliberate decision to let the application lapse

The answers determine which petition applies and whether the required statement can truthfully be made.

Step 2: Choose the Right Petition

Petition to withdraw the holding of abandonment (37 C.F.R. 1.181). If the applicant replied on time, or never received the office action, the application was arguably never properly abandoned. For non-receipt, the petition generally must include a statement that the communication was not received and evidence such as a copy of the docket record showing it was never entered. The petition should be filed within two months of the notice of abandonment. No petition fee is required, and the original deadline is reset or the reply is accepted.

Petition to revive for unintentional delay (37 C.F.R. 1.137(a)). In all other cases, this is the route. The former, stricter "unavoidable" standard was eliminated by the Patent Law Treaties Implementation Act, effective December 2013, so every revival petition is now decided under the unintentional standard.

Step 3: Assemble the 1.137(a) Petition

A complete petition includes:

1. The required reply, such as a complete response to the office action, the unpaid issue fee, or the missing appeal filing
2. The petition fee set out in 37 C.F.R. 1.17(m), which differs by entity status
3. A statement that the entire delay in filing the required reply, from the due date until the filing of a grantable petition, was unintentional
4. Any terminal disclaimer the rules require, which applies mainly to design applications and applications filed before June 8, 1995

The statement covers the entire period of delay, not just the original lapse. A delay that became intentional at any point, for example a documented decision to let the application go followed by a change of mind, does not qualify.

Step 4: Address Delays Longer Than Two Years

The USPTO may require additional information when there is a question about whether the delay was unintentional. Under current practice, a petition filed more than two years after the date the reply was due must include additional information explaining the circumstances of the delay, and the Office may ask for more detail in other cases. Because this practice has been adjusted over time, check the current rule text and Manual of Patent Examining Procedure section 711.03(c) before filing a petition for a long-abandoned case.

Step 5: Understand the Consequences

Revival restores the application, but it is not free of cost:

• Patent term adjustment is reduced under 37 C.F.R. 1.704(c) for the period between abandonment and the filing of the petition, so a patent issuing from a revived application may lose days of term
• Foreign rights may already be affected if the lapse caused a missed priority or national phase deadline abroad
• Continuity can break if a continuation needed the abandoned parent to be pending on the day it was filed; revival may help, but the benefit claim should be reviewed

Expired Patents: A Related Petition

When an issued patent expires for failure to pay a maintenance fee, the corresponding remedy is a petition to accept the delayed payment under 37 C.F.R. 1.378, again under the unintentional standard. Third parties who began using the invention in the gap may have intervening rights under 35 U.S.C. 41(c)(2), which is a strong reason to act as soon as the lapse is discovered.

Preventing the Next One

Most abandonments trace back to a docketing gap: a communication filed to the wrong matter, an address that was never updated after a transfer, or a reminder that went to someone who had left the team. A post-mortem on each revival, covering why the date was missed and what control failed, is more valuable than the petition itself. ArcPrime's workflow automation routes every incoming USPTO communication to a responsible owner with a docketed response date.