I Didn’t Respond To An Office Action and now My Patent Is Abandoned – Now What?

By: Mark R. Malek

If you haven’t noticed, many of my posts lately have revolved around the questions that I get from various clients.  This one was a tough one. Not necessarily from the perspective of not knowing what to do, but having to hear the horror story from this client.  Unfortunately, it is a horror story that I have heard numerous times. I received a call recently from someone that was going the patent process alone.  At least he was until he received a “Notice of Abandonment” from the Patent Office.  How could this happen?  All those years of hard work down the drain?  Is there anything he can do?  Yes.

First and foremost, the patent process is not a simple one.  There are several nuances, and the process itself is very unforgiving.  There really is not much room for error.  For example, the deadlines are real deadlines.  These are not suggestions.  It is not ok to submit something one day late.  That’s not going to cut it in the patent prosecution system.  The one great thing about the patent system, however, is that you always have plenty of time to respond to any issue that may arise during the patent process.

The initial findings as to patentability of your invention are usually contained in an Office Action, which is a decision on patentability as expressed by the patent Examiner.  Many times, Office Actions include rejections of the claims that define the scope of the invention.  There are several ways to respond to an Office Action.  For example, you may chose to amend the claims, add new claims, or simply present arguments to the Examiner as to why the claims as filed define over any prior art that was cited.  No matter what you decide to do, however, you need to respond to the Office Action within three months from the date that the Office Action was mailed.  This is generally the case – sometimes it is two months, sometimes it is one month, and there are always extensions of time that can be filed (for a fee).

As you have probably guessed, if you do not timely respond to an Office Action, the application goes abandoned.  This is outlined in 711.02 of the Manual of Patent Examining Procedures (MPEP).  Is that it?  Is all lost?  Not necessarily.  If your application goes abandoned, there is a mechanism to revive the application.  You can file a petition to revive the application, which is not at all cheap.  The same section of the MPEP mentioned above also outlines the two types of petitions to revive – a petition to revive because the application was unintentionally abandoned (the expensive, and more common one) and a petition to revive because the application was unavoidably abandoned (less expensive, but nearly impossible to prove).

Upon filing the petition to revive, along with the appropriate fee, the application will generally be revived by the PTO.  For a petition to revive an application that was unavoidably abandoned, you will need to provide some kind of story as to why the application was unavoidably abandoned.  For a petition to revive an application that was unintentionally abandoned, all you pretty much need to say is “my bad” and the petition will be granted.  Personally, I have only seen one petition to revive for an unavoidable abandonment that was granted.  In that case, it turns out that the Applicant never received the Office Action because it got stuck somewhere in  patent office mail room limbo.  How could you possibly have avoided that?  I have filed plenty of petitions to revive based on unintentional abandonment (these are for clients that have come to me with an abandoned application and a check), and these are generally very smooth and simple to get granted.