MPEP § 711 — MPEP § 711
Current through: 2022-07-01

711-Abandonment of Patent Application 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 0700 

 Section 711 
 

 
 
 
 
 
 711 Abandonment of Patent Application [R-07.2015]

 
 37 CFR 1.135 Abandonment for failure to reply within time period. 

 
 (a) If an applicant of a patent application fails to reply within the
 time period provided under § 1.134 and § 1.136 , the
 application will become abandoned unless an Office action indicates otherwise.
 

 (b) Prosecution of an application to save it from abandonment pursuant
 to paragraph (a) of this section must include such complete and proper reply as
 the condition of the application may require. The admission of, or refusal to
 admit, any amendment after final rejection or any amendment not responsive to the
 last action, or any related proceedings, will not operate to save the application
 from abandonment.
 

 (c) When reply by the applicant is a bona fide 
 attempt to advance the application to final action, and is substantially a
 complete reply to the non-final Office action, but consideration of some matter or
 compliance with some requirement has been inadvertently omitted, applicant may be
 given a new time period for reply under § 1.134 to supply the
 omission.
 

 
 

 
 37 CFR 1.138 Express abandonment. 

 
 (a) An application may be expressly abandoned by filing a written
 declaration of abandonment identifying the application in the United States Patent
 and Trademark Office. Express abandonment of the application may not be recognized
 by the Office before the date of issue or publication unless it is actually
 received by appropriate officials in time to act.
 

 (b) A written declaration of abandonment must be signed by a party
 authorized under § 1.33(b)(1) or
 (b)(3) to sign a paper in the application, except as
 otherwise provided in this paragraph. A registered attorney or agent, not of
 record, who acts in a representative capacity under the provisions of §
 1.34 when filing a continuing application, may expressly
 abandon the prior application as of the filing date granted to the continuing
 application.
 

 (c) An applicant seeking to abandon an application to avoid
 publication of the application (see § 1.211(a)(1)) must submit a
 declaration of express abandonment by way of a petition under this section
 including the fee set forth in § 1.17(h) in sufficient time to
 permit the appropriate officials to recognize the abandonment and remove the
 application from the publication process. Applicant should expect that the
 petition will not be granted and the application will be published in regular
 course unless such declaration of express abandonment and petition are received by
 the appropriate officials more than four weeks prior to the projected date of
 publication.
 

 
 

 Abandonment may be either of the invention or of an application. This
 discussion is concerned with abandonment of the application for patent.
 

 An abandoned application, in accordance with 37 CFR 1.135 and
 1.138 , is one which is removed from the Office docket of pending
 applications through:
 

 
 (A) formal abandonment
 
 (1) by the applicant, 

 (2) by the attorney or agent of record , or

 (3) by a registered attorney or agent acting in a representative
 capacity under 37 CFR 1.34 when filing a
 continuing application; or
 

 
 

 (B) failure of applicant to take appropriate action within a specified
 time at some stage in the prosecution of the application.
 

 
 
 711.01 Express or Formal Abandonment [R-01.2024]

 The applicant or the attorney/agent of record, if any, can sign an
 express abandonment. It is imperative that the attorney or agent of record exercise
 every precaution in ascertaining that the abandonment of the application is in
 accordance with the desires and best interests of the applicant prior to signing a
 letter of express abandonment of a patent application. Moreover, special care should be
 taken to ensure that the appropriate application is correctly identified in the letter
 of abandonment.
 

 A letter of abandonment properly signed becomes effective when an
 appropriate official of the Office takes action thereon. When so recognized, the date of
 abandonment may be the date of recognition or a later date if so specified in the letter
 itself. For example, where a continuing application is filed with a request to abandon
 the prior application as of the filing date accorded the continuing application, the
 date of the abandonment of the prior application will be in accordance with the request
 once it is recognized.
 

 A letter of express abandonment or a petition under 37 CFR 1.138(c) 
 for express abandonment to avoid publication of the application (see 37 CFR
 1.211(a)(1) ) accompanied by the petition fee set forth in
 37 CFR
 1.17(h) may be: 
 

 
 (A) filed electronically using the USPTO patent electronic filing
 system ; or
 

 (B) mailed to Mail Stop Express Abandonment,
 Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
 

 
 Since a petition under 37 CFR 1.138(c) will not stop
 publication of the application unless it is recognized and acted on by the Pre-Grant
 Publication Division in sufficient time to avoid publication, applicants should transmit
 the petition electronically using the USPTO patent electronic filing system in all
 instances where the projected publication date is less than 3 months from the date of
 the petition. This will increase the chance of such petition being received by the
 appropriate officials in sufficient time to recognize the abandonment and remove the
 application from the publication process. If the issue fee has been paid, the letter of
 express abandonment should be directed to the Office of Petitions instead of the
 Pre-Grant Publication Division and be accompanied by a petition to withdraw an
 application from issue under 37 CFR 1.313(c) . See subsection “I.
 After Payment of Issue Fee.”
 

 Action in recognition of an express abandonment may take the form of an
 acknowledgment by the Publishing Division of the receipt of the express abandonment,
 indicating that it is in compliance with 37 CFR 1.138 .
 

 It is suggested that divisional applications be reviewed before filing
 to ascertain whether the prior application should be abandoned. Care should be exercised
 in situations such as these as the Office looks on express abandonments as acts of
 deliberation, intentionally performed.
 

 Applications may be expressly abandoned as provided for in
 37 CFR
 1.138 . When a letter expressly abandoning an application (not in
 issue) is received, the Office should acknowledge receipt thereof, and indicate whether
 it does or does not comply with the requirements of 37 CFR 1.138 .
 

 The filing of a request for a continued prosecution application (CPA)
 under 37 CFR
 1.53(d) in a design application is considered to be a request to
 expressly abandon the prior application as of the filing date granted the continuing
 application.
 

 If the letter expressly abandoning the application does comply with
 37 CFR
 1.138 , the Office personnel should respond by using a “Notice of
 Abandonment” form PTO-1432, and by checking the appropriate box(es). If such a letter
 does not comply with the requirements of 37 CFR 1.138 , a fully explanatory
 letter should be sent.
 

 A letter of express abandonment which is not timely filed (because it
 was not filed within the period for reply), is not acceptable to expressly abandon the
 application. The letter of express abandonment should be placed in the application file
 but not formally entered.
 

 The application should be pulled for abandonment after expiration of the
 maximum permitted period for reply (see MPEP § 711.04(a) ) and applicant
 notified of the abandonment for failure to reply within the statutory period. See
 MPEP §§
 711.02 and 711.04(c) .
 

 An amendment canceling all of the claims is not an express abandonment.
 The Office will not enter any amendment that would cancel all of the claims in an
 application without presenting any new or substitute claims. See Exxon Corp. v.
 Phillips Petroleum Co. , 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001).
 Such an amendment is regarded as nonresponsive and is not a bona fide 
 attempt to advance the application to final action. The practice set forth in
 37 CFR
 1.135(c) does not apply to such amendment. Applicant should be
 notified as explained in MPEP §§ 714.03 to 714.05 .
 

 An attorney or agent not of record in an application may file a
 withdrawal of an appeal under 37 CFR 1.34 except in those
 instances where such withdrawal would result in abandonment of the application. In such
 instances the withdrawal of appeal is in fact an express abandonment.
 

 I. AFTER PAYMENT OF ISSUE FEE If a letter of express abandonment is being submitted in an allowed
 application after the payment of the issue fee, the express abandonment must be
 accompanied by a petition to withdraw from issue under 37 CFR 1.313(c) 
 and the fee set forth in 37 CFR 1.17(h) . Also see
 MPEP §
 1308 . The express abandonment may not be recognized by the
 Office unless it is actually received by appropriate officials in time to withdraw
 the application from issue. A petition under 37 CFR 1.313 will not be
 effective to withdraw the application from issue unless it is actually received and
 granted by the appropriate official before the date of issue. After the issue fee has
 been paid, the application will not be withdrawn upon petition by the applicant for
 any reason except those reasons listed in 37 CFR 1.313(c) , which include
 express abandonment of the application. An application may be withdrawn from issue
 for express abandonment of the application in favor of a continuing application. The
 petition under 37
 CFR 1.313(c) accompanied by the petition fee should be
 addressed to the Office of Petitions. If the petition and the letter of abandonment
 are received by appropriate officials in sufficient time to act on the petition and
 remove the application from the issue process, the letter of abandonment will be
 acknowledged by the Office of Data Management after the petition is granted.
 Petitions to withdraw an application from issue under 37 CFR 1.313(c) 
 may be:
 

 
 (A) mailed to Mail Stop Petition, Commissioner for Patents, P.O.
 Box 1450, Alexandria, VA 22313-1450;
 

 (B) transmitted by facsimile transmission to (571) 273-0025; or

 (C) hand-carried to the Office of Petitions, Madison West,
 7 th Floor, 600 Dulany Street, Alexandria, VA
 22314. At the guard station in Madison West, the security guard should call the
 Office of Petitions at (571) 272-3282 for delivery assistance; or
 

 (D) submitted electronically by the USPTO patent
 electronic filing system.
 

 
 Applicants are strongly encouraged to either transmit by the USPTO
 patent electronic filing system, or facsimile or hand-carry the petition to the
 Office of Petitions to allow sufficient time to process the petition and if the
 petition can be granted, withdraw the application from issue.
 

 See MPEP §§ 711.05 and 1308 . In cases where
 37 CFR
 1.313 precludes giving effect to an express abandonment, the
 appropriate remedy is a petition, with fee, under 37 CFR 1.183 , showing an
 extraordinary situation where justice requires suspension of 37 CFR
 1.313 .
 

 II. TO AVOID PUBLICATION OF APPLICATION A petition under 37 CFR 1.138(c) will not stop
 publication of the application unless it is recognized and acted on by the Pre-Grant
 Publication Division in sufficient time to avoid publication. The petition will be
 granted when it is recognized in sufficient time to avoid publication of the
 application. The petition will be denied when it is not recognized in time to avoid
 publication. Generally, a petition under 37 CFR 1.138(c) will not be
 granted and the application will be published in regular course unless such
 declaration of express abandonment and petition are received by the appropriate
 officials more than four weeks prior to the projected date of publication. It is
 unlikely that a petition filed within four weeks of the projected date of publication
 will be effective to avoid publication. Also note that withdrawal of an application
 from issue after payment of the issue fee may not be effective to avoid publication
 of an application under 35 U.S.C. 122(b) . See
 37 CFR
 1.313(d) .
 

 III. TO OBTAIN REFUND OF SEARCH FEE AND EXCESS CLAIMS FEE 
 37 CFR 1.138 Express abandonment. 

 *****

 
 (d) An applicant seeking to abandon an application filed under
 35
 U.S.C. 111(a) and § 1.53(b) on or after December 8, 2004, to obtain a
 refund of the search fee and excess claims fee paid in the application, must
 submit a declaration of express abandonment by way of a petition under this
 paragraph before an examination has been made of the application. The date
 indicated on any certificate of mailing or transmission under §
 1.8 will not be taken into account in determining
 whether a petition under § 1.138(d) was filed
 before an examination has been made of the application. If a request for
 refund of the search fee and excess claims fee paid in the application is
 not filed with the declaration of express abandonment under this paragraph
 or within two months from the date on which the declaration of express
 abandonment under this paragraph was filed, the Office may retain the entire
 search fee and excess claims fee paid in the application. This two-month
 period is not extendable. If a petition and declaration of express
 abandonment under this paragraph are not filed before an examination has
 been made of the application, the Office will not refund any part of the
 search fee and excess claims fee paid in the application except as provided
 in § 1.26 . 
 

 
 

 As provided in 37 CFR 1.138(d) , refund of the
 search fee and excess claims fee paid in an application filed under 35 U.S.C.
 111(a) and 37 CFR 1.53(b) on or after
 December 8, 2004 may be obtained by submitting a petition and declaration of express
 abandonment before an examination has been made of the application.
 

 A petition under 37 CFR 1.138(d) will be granted
 if it was filed before an examination has been made of the application and will be
 denied if it was not filed before an examination has been made of the application.
 This averts the situation in which an applicant files a declaration of express
 abandonment to obtain a refund of the search fee and excess claims fee, the request
 for a refund is not granted because the declaration of express abandonment was not
 filed before an examination has been made of the application, the applicant then
 wishes to rescind the declaration of express abandonment upon learning that the
 declaration of express abandonment was not filed before an examination has been made
 of the application, and the Office cannot revive the application (once the
 declaration of express abandonment is recognized) because the application was
 expressly and intentionally abandoned by the applicant.
 

 An “examination has been made of the application” for purposes of
 37 CFR
 1.138(d) once an action (e.g., restriction or election of
 species requirement, requirement for information under 37 CFR 1.105 ,
 first Office action on the merits, notice of allowability or notice of allowance, or
 action under Ex parte Quayle , 1935 Dec. Comm’r Pat. 11 (1935)) is
 shown in the One Patent Service Gateway as having been counted. For purposes of
 37 CFR
 1.138(d) , “before” means occurring earlier in time, in that if
 a petition under 37
 CFR 1.138(d) is filed and an action is counted on the same day,
 the petition under 37 CFR 1.138(d) was not filed before an examination has been
 made of the application. In addition, the date indicated on any certificate of
 mailing or transmission under 37 CFR 1.8 is not taken into
 account in determining whether a petition under 37 CFR 1.138(d) was filed before
 an examination has been made of the application.
 

 The Patent Data Portal (PDP) system maintains computerized contents
 records of all patent applications and reexamination proceedings. The PDP system will
 show a status higher than 031 once an action has been counted. If the status of an
 application as shown in PDP is higher than 031 before or on the day that the petition
 under 37 CFR
 1.138(d) was filed, the petition under 37 CFR 1.138(d) 
 will be denied and the search fee and excess claims fee will not be refunded except
 as provided in 37
 CFR 1.26 .
 

 A petition under 37 CFR 1.138(d) may not be
 effective to stop publication of an application unless the petition under
 37 CFR
 1.138(d) is granted and the abandonment processed before
 technical preparations for publication of the application has begun. Technical
 preparations for publication of an application generally begin four months prior to
 the projected date of publication.
 

 The Office recommends that petitions under 37 CFR 1.138(d) 
 be submitted by the USPTO patent electronic filing system. The use of form PTO/SB/24B
 (or PTO/AIA/24B), reproduced in MPEP § 711.01 , subsection V., is
 recommended.
 

 IV. APPLICATION IN INTERFERENCE An express abandonment pursuant to 37 CFR 1.138 of
 an application involved in an interference under pre-AIA 35 U.S.C. 135 is
 considered an abandonment of the contest and it is construed as a request for entry
 of an adverse judgment against the applicant. See 37 CFR 41.127(b)(4) .
 

 V. FORMS FOR FILING EXPRESS ABANDONMENT Form PTO/AIA/24 (or PTO/SB/24 for applications filed before September
 16, 2012) may be used for filing a letter of express abandonment or a letter of
 express abandonment in favor of a continuing application. Form PTO/AIA/24A (or
 PTO/SB/24A for applications filed before September 16, 2012) may be used for filing a
 petition for express abandonment under 37 CFR 1.138(c) to avoid
 publication of the application. Form PTO/AIA/24B (or PTO/SB/24B for applications
 filed before September 16, 2012) may be used for filing a petition for express
 abandonment under 37 CFR 1.138(d) to obtain a refund of the search fee and
 excess claims fee.
 

 

 

 

 

 

 

 

 
 711.02 Failure To Take Required Action During Statutory Period [R-07.2022]

 37 CFR
 1.135(a) specifies that an application becomes abandoned if
 applicant “fails to reply” to an Office action within the fixed statutory period. This
 failure may result either from (A) failure to reply within the statutory period, or (B)
 insufficiency of reply, i.e., failure to file a “complete and proper reply, as the
 condition of the case may require” within the statutory period ( 37 CFR
 1.135(b) ).
 

 To determine if an application is abandoned, it is
 essential that the examiner know the dates that mark the beginning and end of the
 statutory period under varying situations. Applicant’s reply must be considered timely
 filed within the set shortened statutory period for reply, or full statutory period for
 reply if applicable, dating from the notification or mail date on the Office letter or
 within the extended time period obtained under 37 CFR 1.136 . See
 MPEP §§
 512 , 513 , and 710 et seq. See MPEP § 711.04(a) for examples to
 illustrate the expiration of the shortened statutory period and corresponding date the
 abandonment in different situations.
 

 When an amendment is filed after the expiration of the statutory period
 and is not considered timely under 35 U.S.C. 21 and 37 CFR 1.7 , the
 application is abandoned and the remedy is to petition to revive it. The examiner should
 notify the applicant or the applicant's attorney or agent of record at once with
 notification that the application has been abandoned by using Notice of Abandonment form
 PTOL-1432. The proper boxes on the form should be checked and the blanks for the dates
 of the proposed amendment and the Office action completed. The late amendment is placed
 in the file wrapper but not formally entered. See MPEP § 714.17 .
 

 Form paragraph 7.90 or 7.98.02 may also be
 used.
 

 ¶ 7.90 Abandonment, Failure to Reply

 This application is abandoned in view of applicant’s failure to submit a proper reply to the Office action mailed on [1] within the required period for reply.
 

 Examiner Note:
 
 1. A letter of abandonment should not be mailed until after the period for requesting an extension of time under 37 CFR 1.136(a) has expired.
 

 2. In pro se cases see form paragraph 7.98.02 .
 
 
 

 ¶ 7.98.02 Reply Is Late, Petition To Revive Suggested, Pro Se

 Applicant’s reply to the Office Action of [1] was received in
 the Patent and Trademark Office on [2] , which is after the expiration of the
 period for reply set in the last Office Action. Since no time remains for applicant to obtain
 an extension of the period for reply by filing a petition under 37 CFR 1.136(a) , this
 application is abandoned. Applicant is advised that the abandonment of this
 application may only be overcome by filing a petition to revive under 37 CFR 1.137 . A petition
 to revive may be appropriate if applicant’s failure to reply was unintentional, as set forth
 below.
 

 A petition to revive an abandoned application on the grounds that the
 failure to reply was unintentional ( 37 CFR 1.137 ) must be accompanied by: (1)
 the required reply (which has been filed); (2) 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 37 CFR
 1.137 was unintentional; (3) any terminal disclaimer required pursuant
 to 37 CFR
 1.137(d) ; and (4) the $ [3] petition fee as set forth in
 37 CFR
 1.17(m) . No consideration to the substance of a petition will be given
 until this fee is received. The Director may require additional information where there is a
 question whether the delay was unintentional.
 

 The required items and fees must be
 submitted promptly under a cover letter entitled “Petition to Revive.” 
 

 Further correspondence with respect
 to this matter should be addressed as follows:
 

 

 By mail:

 Mail Stop Petition
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

 

 By FAX:

 
 571-273-8300

Attn: Office of Petitions

 Telephone inquiries with respect to
 this matter should be directed to the Office of Petitions Staff at (571) 272-3282. For more
 detailed information, see MPEP §
 711.03(c) .
 

 

 For a petition to withdraw a holding of abandonment based upon failure
 to receive an Office action, see MPEP § 711.03(c) .
 

 
 711.02(a) Insufficiency of Reply [R-08.2012]

 Abandonment may result from a situation where applicant’s reply is
 within the period for reply but is not fully responsive to the Office action. But see
 MPEP §
 710.02(c) . See also MPEP § 714.02 to
 § 714.04 .
 

 ¶ 7.91 Reply Is Not Fully Responsive, Extension of Time Suggested

 The reply filed on [1] is not fully responsive to the prior Office action because: [2] . Since the period for reply set forth in the prior Office action has expired, this application will become abandoned unless
 applicant corrects the deficiency and obtains an extension of time under 37 CFR 1.136(a) . 
 

 The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee have been filed is the date for purposes of determining the period of extension and the
 corresponding amount of the fee. In no case may an applicant reply outside the SIX (6) MONTH statutory period or obtain an
 extension for more than FIVE (5) MONTHS beyond the date for reply set forth in an Office action. A fully responsive reply
 must be timely filed to avoid abandonment of this application. 
 

 Examiner Note:
 
 1. In bracket 2, set forth why the examiner considers there to be a failure to take “complete and proper action” within the statutory
 period.
 

 2. If the reply appears to be a bona fide attempt to respond with an inadvertent omission, do not use this form paragraph; instead use form paragraph 7.95 .
 
 
 

 

 
 711.02(b) Special Situations Involving Abandonment [R-07.2015]

 The following situations involving questions of abandonment often
 arise, and should be specially noted:
 

 
 (A) Copying claims from a patent when not suggested by the U.S.
 Patent and Trademark Office does not constitute a reply to the last Office
 action and will not save the application from abandonment, unless the last
 Office action relied solely on the patent for the rejection of all the claims
 rejected in that action.
 

 (B) An application may become abandoned through withdrawal of, or
 failure to prosecute, an appeal to the Patent Trial and Appeal Board. See
 MPEP
 §§ 1215.01 to 1215.04 .
 

 (C) An application may become abandoned through dismissal of appeal
 to the Court of Appeals for the Federal Circuit or civil action, where there
 was not filed prior to such dismissal an amendment putting the application in
 condition for issue or fully responsive to the Board’s decision. Abandonment
 results from failure to perfect an appeal as required by the Court of Appeals
 for the Federal Circuit. See MPEP §§ 1215.04 and
 1216.01 .
 

 (D) Where claims are suggested for interference near the end of the
 period for reply running against the application. See MPEP Chapter
 2300 .
 

 (E) Where a continued prosecution application (CPA) under
 37 CFR
 1.53(d) is filed. See MPEP
 §§ 201.06(d) and 711.01 . 
 

 (F) Prior to a decision by the Board, an application on appeal
 that has no allowed claims may become abandoned when a Request for Continued
 Examination (RCE) is improperly filed without the appropriate fee or a
 submission ( 37 CFR 1.114(d) ) in the application. The filing of an
 RCE will be treated as a withdrawal of the appeal by the applicant. See
 MPEP §
 706.07(h) , subsection X.
 

 (G) When a reply to a final Office action is outstanding, an
 application may become abandoned if an RCE is filed without a timely submission
 that meets the reply requirements of 37 CFR 1.111 . The filing of
 an improper RCE will not operate to toll the running of any time period set in
 the previous Office action for reply to avoid abandonment of the application.
 See MPEP §
 706.07(h) , subsection VI.
 

 (H) Prior to payment of the issue fee, an allowed application may
 become abandoned if an RCE is improperly filed without the appropriate fee or a
 submission in the application. The improper RCE will not operate to toll the
 running of the time period for payment of the issue fee. See
 MPEP §
 706.07(h) , subsection IX.
 

 
 

 
 711.02(c) Termination of Proceedings [R-11.2013]

 “Termination of proceedings” is an expression found in
 35 U.S.C.
 120 . As there stated, a second application is considered to be
 copending with an earlier application if it is filed before 
 

 
 (A) the patenting, 

 (B) the abandonment of, or 

 (C) termination of proceedings on the earlier application. 

 
 “Before” has consistently been interpreted, in this context, to mean
 “not later than.”
 

 In each of the following situations, proceedings are terminated:

 
 (A) When the issue fee is not paid and the application is abandoned
 for failure to pay the issue fee, proceedings are terminated as of the date the
 issue fee was due and the application is the same as if it were abandoned after
 midnight on that date (but if the issue fee is later accepted, on petition, the
 application is revived). See MPEP § 711.03(c) .
 

 (B) If an application is in interference wherein all the claims
 present in the application correspond to the counts and the application loses
 the interference as to all the claims, then proceedings on that application are
 terminated as of the date appeal or review by civil action was due if no appeal
 or civil action was filed.
 

 (C) Proceedings are terminated in an application after decision by
 the Patent Trial and Appeal Board as explained in MPEP §
 1214.06 .
 

 (D) Proceedings are terminated after a decision by the court as
 explained in MPEP § 1216.01 .
 

 
 

 

 
 711.03 Reconsideration of Holding of Abandonment; Revival [R-08.2012]

 When advised of the abandonment of his or her application, applicant may
 either ask for reconsideration of such holding, if he or she disagrees with it on the
 basis that there is no abandonment in fact; or petition for revival under
 37 CFR
 1.137 .
 

 
 711.03(a) Holding Based on Insufficiency of Reply [R-08.2012]

 Applicant may deny that the reply was incomplete.

 While the primary examiner has no authority to act upon an
 application in which no action by applicant was taken during the period for reply, he
 or she may reverse his or her holding as to whether or not an amendment received
 during such period was responsive and act on an application of such character which
 he or she has previously held abandoned. This is not a revival of an abandoned
 application but merely a holding that the application was never abandoned. See also
 MPEP §
 714.03 .
 

 

 
 711.03(b) Holding Based on Failure To Reply Within Period [R-08.2012]

 When an amendment reaches the U.S. Patent and Trademark Office after
 the expiration of the period for reply and there is no dispute as to the dates
 involved, no question of reconsideration of a holding of abandonment can be
 presented.
 

 However, the examiner and the applicant may disagree as to the date
 on which the period for reply commenced to run or ends. In this situation, as in the
 situation involving sufficiency of reply, the applicant may take issue with the
 examiner and point out to him or her that his or her holding was erroneous.
 

 

 
 711.03(c) Petitions Relating to Abandonment [R-01.2024]

 
 37 CFR 1.135 Abandonment for failure to reply within time period. 

 
 (a) If an applicant of a patent application fails to reply
 within the time period provided under § 1.134 and
 § 1.136 , the application will become abandoned unless
 an Office action indicates otherwise.
 

 (b) Prosecution of an application to save it from abandonment
 pursuant to paragraph (a) of this section must include such complete and
 proper reply as the condition of the application may require. The admission
 of, or refusal to admit, any amendment after final rejection or any
 amendment not responsive to the last action, or any related proceedings,
 will not operate to save the application from abandonment.
 

 (c) When reply by the applicant is a bona
 fide attempt to advance the application to final action, and is
 substantially a complete reply to the non-final Office action, but
 consideration of some matter or compliance with some requirement has been
 inadvertently omitted, applicant may be given a new time period for reply
 under § 1.134 to supply the omission.
 

 
 

 
 37 CFR 1.137 Revival of abandoned application, or
 terminated or limited reexamination prosecution. 

 
 (a) Revival on the basis of unintentional delay. If the delay
 in reply by applicant or patent owner was unintentional, a petition may be
 filed pursuant to this section to revive an abandoned application or a
 reexamination prosecution terminated under § 1.550(d) or § 1.957(b) or limited
 under § 1.957(c) . 
 

 (b) Petition requirements. A grantable petition pursuant to
 this section must be accompanied by: 
 
 (1) The reply required to the outstanding
 Office action or notice, unless previously filed;
 

 (2) The petition fee as set forth in §
 1.17(m) ;
 

 (3) Any terminal disclaimer (and fee as set
 forth in § 1.20(d) ) required
 pursuant to paragraph (d) of this section; and
 

 (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. The Director may require additional information where
 there is a question whether the delay was unintentional.
 

 
 

 (c) Reply. In an application abandoned under §
 1.57(a) , the reply must include a copy of the
 specification and any drawings of the previously filed application. In an
 application or patent abandoned for failure to pay the issue fee or any
 portion thereof, the required reply must include payment of the issue fee or
 any outstanding balance. In an application abandoned for failure to pay the
 publication fee, the required reply must include payment of the publication
 fee. In a nonprovisional application abandoned for failure to prosecute, the
 required reply may be met by the filing of a continuing application. In a
 nonprovisional utility or plant application filed on or after June 8, 1995,
 abandoned after the close of prosecution as defined in § 1.114(b) , the required reply may also be met by the
 filing of a request for continued examination in compliance with §
 1.114 .
 

 (d) Terminal disclaimer. 
 (1) Any petition to revive pursuant to this
 section in a design application must be accompanied by a terminal
 disclaimer and fee as set forth in § 
 1.321 dedicating to the public a terminal part
 of the term of any patent granted thereon equivalent to the period of
 abandonment of the application. Any petition to revive pursuant to
 this section in either a utility or plant application filed before
 June 8, 1995, must be accompanied by a terminal disclaimer and fee as
 set forth in § 1.321 dedicating
 to the public a terminal part of the term of any patent granted
 thereon equivalent to the lesser of:
 
 (i) The period of abandonment of the
 application; or
 

 (ii) The period extending beyond twenty
 years from the date on which the application for the patent was
 filed in the United States or, if the application contains a
 specific reference to an earlier filed application(s) under
 35 U.S.C.
 120 , 121 ,
 365(c) , or
 386(c) from
 the date on which the earliest such application was filed.
 

 
 

 (2) Any terminal disclaimer pursuant to
 paragraph (d)(1) of this section must also apply to any patent granted
 on a continuing utility or plant application filed before June 8,
 1995, or a continuing design application, that contains a specific
 reference under 35 U.S.C. 120 ,
 121 , 365(c) , or
 386(c) to the
 application for which revival is sought.
 

 (3) The provisions of paragraph (d)(1) of
 this section do not apply to applications for which revival is sought
 solely for purposes of copendency with a utility or plant application
 filed on or after June 8, 1995, to reissue applications, or to
 reexamination proceedings.
 

 
 

 (e) Request for reconsideration. Any request for
 reconsideration or review of a decision refusing to revive an abandoned
 application, or a terminated or limited reexamination prosecution, upon
 petition filed pursuant to this section, to be considered timely, must be
 filed within two months of the decision refusing to revive or within such
 time as set in the decision. Unless a decision indicates otherwise, this
 time period may be extended under:
 
 (1) The provisions of § 1.136 for an abandoned application;
 

 (2) The provisions of § 1.550(c) for a terminated ex
 parte reexamination prosecution, where the ex
 parte reexamination was filed under § 1.510 ; or
 

 (3) The provisions of § 1.956 for a terminated inter
 partes reexamination prosecution or an inter
 partes reexamination limited as to further prosecution,
 where the inter partes reexamination was filed
 under § 1.913 .
 

 
 

 (f) Abandonment for failure to notify the Office of a foreign
 filing. A nonprovisional application abandoned pursuant to
 35
 U.S.C. 122(b)(2)(B)(iii) for failure to timely notify
 the Office of the filing of an application in a foreign country or under a
 multinational treaty that requires publication of applications eighteen
 months after filing, may be revived pursuant to this section. The reply
 requirement of paragraph (c) of this section is met by the notification of
 such filing in a foreign country or under a multinational treaty, but the
 filing of a petition under this section will not operate to stay any period
 for reply that may be running against the application.
 

 (g) Provisional applications. A provisional application,
 abandoned for failure to timely respond to an Office requirement, may be
 revived pursuant to this section. Subject to the provisions of
 35
 U.S.C. 119(e)(3) and § 1.7(b) , a provisional application will not be regarded
 as pending after twelve months from its filing date under any
 circumstances.
 

 
 

 
 37 CFR 1.181 Petition to the Director. 

 
 (a) Petition may be taken to the Director:
 
 (1) From any action or requirement of any examiner in the
 ex parte prosecution of an application, or in
 ex parte or inter partes
 prosecution of a reexamination proceeding which is not
 subject to appeal to the Patent Trial and Appeal Board or to the
 court; 
 

 (2) In cases in which a statute or the rules specify that
 the matter is to be determined directly by or reviewed by the
 Director; and
 

 (3) To invoke the supervisory authority of the Director in
 appropriate circumstances. For petitions involving action of the
 Patent Trial and Appeal Board, see § 41.3 of this title.
 

 
 

 
 *****

 
 (f) The mere filing of a petition will not stay any period for
 reply that may be running against the application, nor act as a stay of
 other proceedings. Any petition under this part not filed within two months
 of the mailing date of the action or notice from which relief is requested
 may be dismissed as untimely, except as otherwise provided. This two-month
 period is not extendable.
 

 
 *****

 
 I. PETITION TO WITHDRAW HOLDING OF ABANDONMENT A petition to revive an abandoned application (discussed below)
 should not be confused with a petition from an examiner’s holding of abandonment.
 Where an applicant contends that the application is not in fact abandoned (e.g.,
 there is disagreement as to the sufficiency of the reply, or as to controlling
 dates), a petition under 37 CFR 1.181(a) requesting
 withdrawal of the holding of abandonment is the appropriate course of action, and
 such petition does not require a fee. Where there is no dispute as to whether an
 application is abandoned (e.g., the applicant’s contentions merely involve the
 cause of abandonment), a petition under 37 CFR 1.137 (accompanied by
 the appropriate petition fee) is necessary to revive the abandoned
 application.
 

 The procedure available for reviving an application that has
 become abandoned due to a failure to reply to an Office Action is a petition under
 37 CFR
 1.137 based on unintentional delay.
 

 A. Petition To Withdraw Holding of Abandonment Based on Failure To
 Receive Office Action In Delgar v. Schuyler , 172 USPQ 513 (D.D.C.
 1971), the court decided that the Office should mail a new Notice of Allowance
 in view of the evidence presented in support of the contention that the
 applicant’s representative did not receive the original Notice of Allowance.
 Under the reasoning of Delgar , an allegation that an Office
 action was never received may be considered in a petition to withdraw the
 holding of abandonment. If adequately supported, the Office may grant the
 petition to withdraw the holding of abandonment and remail the Office action.
 That is, the reasoning of Delgar is applicable regardless of
 whether an application is held abandoned for failure to timely pay the issue
 fee ( 35
 U.S.C. 151 ) or for failure to prosecute
 ( 35 U.S.C. 133 ).
 

 A showing by the applicant’s representative may not be
 sufficient if there are circumstances that point to a conclusion the Office
 action may have been lost after receipt rather than a conclusion that the
 Office action was lost in the mail (e.g., if the practitioner has a history of
 not receiving Office actions).
 

 Evidence of nonreceipt of an Office communication or action
 (e.g., Notice of Abandonment or an advisory action) other than that action to
 which reply was required to avoid abandonment would not warrant withdrawal of
 the holding of abandonment. Abandonment takes place by operation of law for
 failure to reply to an Office action or timely pay the issue fee, not by
 operation of the mailing of a Notice of Abandonment. See Lorenz v.
 Finkl , 333 F.2d 885, 889-90, 142 USPQ 26, 29-30 (CCPA 1964);
 Krahn v. Commissioner , 15 USPQ2d 1823, 1824 (E.D. Va.
 1990); In re Application of Fischer , 6 USPQ2d 1573, 1574
 (Comm’r Pat. 1988).
 

 1. Showing of Nonreceipt Required
 of a Practitioner The showing required to establish nonreceipt of an Office
 communication must include a statement from the practitioner describing the
 system used for recording an Office action received at the correspondence
 address of record with the USPTO. The statement should establish that the
 docketing system is sufficiently reliable. It is expected that the record
 would include, but not be limited to, the application number, attorney
 docket number, the mail date of the Office action and the due date for the
 response. 
 

 Practitioner must state that the Office action was not
 received at the correspondence address of record, and that a search of the
 practitioner’s record(s), including any file jacket or the equivalent, and
 the application contents, indicates that the Office action was not received.
 A copy of the record(s) used by the practitioner where the non-received
 Office action would have been entered had it been received is required.
 

 A copy of the practitioner’s record(s) required to show
 non-receipt of the Office action should include the master docket for the
 firm. That is, if a three month period for reply was set in the nonreceived
 Office action, a copy of the master docket report showing all replies
 docketed for a date three months from the mail date of the nonreceived
 Office action must be submitted as documentary proof of nonreceipt of the
 Office action. If no such master docket exists, the practitioner should so
 state and provide other evidence such as, but not limited to, the following:
 the application file jacket; incoming mail log; calendar; reminder system;
 or the individual docket record for the application in question.
 

 2. Showing of Nonreceipt Required
 of a Pro Se Applicant When the petitioner is a pro
 se applicant, the Office understands the petitioner may not
 have developed a formal docket record system for tracking correspondence.
 Nevertheless, petitioner must provide some sort of showing explaining the
 manner in which petitioner receives mail from the USPTO, maintains files for
 patent matters, and treats mail received for such matter. 
 

 Specifically, petitioner must explain the
 system for keeping track of patent matters - where petitioner keeps the
 correspondence; where due dates are recorded; how petitioner knows replies
 are due, etc. In essence, petitioner must explain how petitioner is reminded
 of response due dates and shows that the due date for an Office action was
 not entered into that system. Petitioner should include any available
 documentary evidence of the mail received, covering a reasonable period
 after the mailing date of an Office action, to demonstrate non-receipt of an
 Office action. Petitioner should also provide the USPTO with copies of any
 records or other methods, which could serve as a reminder of the due date
 for a response to an Office action, and where petitioner would have entered
 the receipt date of the Office action if petitioner received it (for
 example, a copy of the outside of a file or a calendar maintained by
 petitioner), if these documents are available. Furthermore, petitioner must
 include a statement from petitioner, or any other person at the address who
 may have handled the Office action, indicating that a search was conducted
 of the location where the correspondence from the USPTO would have been
 kept; however, the Office action was not found. Lastly, petitioner must
 state that petitioner was, in fact, residing at (or routinely checked) the
 correspondence address of record for a reasonable time after the mailing
 date of an Office action; the period when the Office action would have been
 received.
 

 B. Petition To Withdraw Holding of Abandonment Based on Evidence That
 a Reply Was Timely Mailed or Filed 37 CFR
 1.10(c) through 1.10(e) and
 1.10(g) set forth procedures for petitioning the
 Director of the USPTO to accord a filing date to correspondence as of the date
 of deposit of the correspondence as Priority Mail
 Express ® . A petition to withdraw the holding of
 abandonment relying upon a timely reply placed in Priority Mail
 Express ® must include an appropriate petition
 under 37 CFR
 1.10(c), (d), (e), or (g) (see MPEP § 513 ).
 When a paper is shown to have been mailed to the Office using the “Express
 Mail” procedures, the paper must be entered in One Patent Service Gateway (via
 Patent Data Portal) with the Priority Mail Express ® 
 date.
 

 Similarly, applicants may establish that a reply was filed with
 a postcard receipt that properly identifies the reply and provides
 prima facie evidence that the reply was timely filed. See
 MPEP § 503 . For example, if the application has been
 held abandoned for failure to file a reply to a first Office action, and
 applicant has a postcard receipt showing that an amendment was timely filed in
 response to the Office action, then the holding of abandonment should be
 withdrawn upon the filing of a petition to withdraw the holding of abandonment.
 When the reply is shown to have been timely filed based on a postcard receipt,
 the reply must be entered into One Patent Service Gateway (via Patent Data
 Portal) using the date of receipt of the reply as shown on the post card
 receipt. 
 

 Where a certificate of mailing under 37 CFR
 1.8 , but not a postcard receipt, is relied upon in a
 petition to withdraw the holding of abandonment, see 37 CFR
 1.8(b) and MPEP § 512 . As stated in
 37 CFR
 1.8(b)(3) the statement that attests to the previous
 timely mailing or transmission of the correspondence must be on a personal
 knowledge basis, or to the satisfaction of the Director of the USPTO. If the
 statement attesting to the previous timely mailing is not made by the person
 who signed the Certificate of Mailing (i.e., there is no personal knowledge
 basis), then the statement attesting to the previous timely mailing should
 include evidence that supports the conclusion that the correspondence was
 actually mailed (e.g., copies of a mailing log establishing that correspondence
 was mailed for that application). When the correspondence is shown to have been
 timely filed based on a certificate of mailing, the correspondence is entered
 into One Patent Service Gateway (via Patent Data Portal) with the actual date
 of receipt (i.e., the date that the duplicate copy of the papers was filed with
 the statement under 37 CFR 1.8 ).
 

 37 CFR
 1.8(b) also permits applicant to notify the Office of a
 previous mailing or transmission of correspondence and submit a statement under
 37 CFR
 1.8(b)(3) accompanied by a duplicate copy of the
 correspondence when a reasonable amount of time (e.g., more than one month) has
 elapsed from the time of mailing or transmitting of the correspondence.
 Applicant does not have to wait until the application becomes abandoned before
 notifying the Office of the previous mailing or transmission of the
 correspondence. Applicant should check the USPTO patent electronic filing
 system (currently Patent Center) for the status of the correspondence before
 notifying the Office. See MPEP § 512 .
 

 C. Treatment of Untimely Petition To Withdraw Holding of
 Abandonment 37 CFR
 1.181(f) provides that, inter alia ,
 except as otherwise provided, any petition not filed within 2 months from the
 action complained of may be dismissed as untimely. Therefore, any petition
 (under 37 CFR
 1.181 ) to withdraw the holding of abandonment not filed
 within 2 months of the mail date of a notice of abandonment (the action
 complained of) may be dismissed as untimely. 37 CFR
 1.181(f) . 
 

 Rather than dismiss an untimely petition to withdraw the
 holding of abandonment under 37 CFR 1.181(f) , the Office
 may require a terminal disclaimer as a condition of granting an untimely
 petition to withdraw the holding of abandonment. 
 

 Where the record indicates that the applicant intentionally
 delayed the filing of a petition to withdraw the holding of abandonment, the
 Office may simply dismiss the petition as untimely ( 37 CFR
 1.181(f) ) solely on the basis of such intentional delay
 in taking action in the application without further addressing the merits of
 the petition. Obviously, intentional delay in seeking the revival of an
 abandoned application precludes relief under 37 CFR
 1.137 (discussed below).
 

 1. Design Applications, Utility Applications Filed Before June 8, 1995,
 and Plant Applications Filed Before June 8, 1995 

 (a) Applicant Receives Notice of Abandonment In any design application, any utility application filed
 before June 8, 1995, or any plant application filed before June 8, 1995,
 if applicant receives a notice of abandonment, 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 period to be disclaimed is the
 terminal part of the term of any patent granted on the application, or of
 any patent granted on any utility or plant application that claims the
 benefit of the filing date of the application under 35 U.S.C.
 120 , 121 , or
 365(c) , equivalent to the period between:
 

 
 (A) the date that is two months after the mail date of
 the notice of abandonment; and
 

 (B) the filing date of a grantable petition to withdraw
 the holding of abandonment.
 

 
 See MPEP § 711.03(c) ,
 subsection II.G.
 

 (b) Applicant Does Not Receive Notice of Abandonment In any design application, any utility application filed
 before June 8, 1995, or any plant application filed before June 8, 1995,
 if applicant never receives the notice of abandonment, any petition to
 withdraw the holding of abandonment that is not filed within twelve
 months from the date of applicant’s filing (or date of submission, if the
 correspondence was never received by the Office) of correspondence with
 the Office for which further action by the Office can reasonably be
 expected, will not (absent extraordinary circumstances) be
 treated on its merit 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
 period to be disclaimed is the terminal part of the term of any patent
 granted thereon, or of any patent granted on any utility or plant
 application that claims the benefit of the filing date of the application
 under 35 U.S.C. 120 ,
 121 , or 365(c) , equivalent to
 the period between:
 

 
 (A) the date that is twelve months from the date of
 applicant’s filing or submission of correspondence with the Office,
 for which further action by the Office can reasonably be expected;
 and
 

 
 
 (B) the filing date of a grantable petition to withdraw
 the holding of abandonment.
 

 
 See MPEP § 711.03(c) ,
 subsection II.G.
 

 2. Utility and Plant Applications Filed on or After June 8, 1995 but
 Before May 29, 2000 In utility and plant applications filed on or after June 8,
 1995, but before May 29, 2000, a terminal disclaimer should not 
 be required as a condition of granting an untimely petition to withdraw the
 holding of abandonment. However, the Office of Patent Legal Administration
 (OPLA) must be consulted in such situations if the holding of abandonment
 involves a period during: (A) appellate review by the Patent Trial and
 Appeal Board; (B) an interference or derivation proceeding under
 35 U.S.C. 135 , including
 any suspension due to an interference or derivation proceeding; or (C) which
 the application was in a sealed condition or prosecution was suspended due
 to a secrecy order under 35 U.S.C. 181 . This is
 because it is necessary to effect (if appropriate) a reduction of patent
 term extension under the “due diligence” provisions of 37 CFR
 1.701(d)(2) .
 

 3. Utility and Plant Applications Filed on or After May 29, 2000 In utility and plant applications filed on or after May 29,
 2000, a terminal disclaimer should not be required as a
 condition of granting an untimely petition to withdraw the holding of
 abandonment. This is because any patent term adjustment is automatically
 reduced under the provisions of 37 CFR 1.704(c)(4) in
 applications subject to the patent term adjustment provisions of the
 American Inventors Protection Act of 1999 (AIPA) if a petition to withdraw a
 holding of abandonment is not filed within two months from the mailing date
 of the notice of abandonment, and if applicant does not receive the notice
 of abandonment, any patent term adjustment is reduced under the provisions
 of 37 CFR
 1.704(a) by a period equal to the period of time
 during which the applicant “failed to engage in reasonable efforts to
 conclude prosecution” (processing or examination) of the application. 
 

 II. PETITIONS TO REVIVE AN ABANDONED APPLICATION, OR ACCEPT LATE PAYMENT OF
 ISSUE FEE Effective December 18, 2013, the Patent Law Treaties
 Implementation Act of 2012 (PLTIA), Public Law 112-211, amended the patent laws to
 implement the provisions of the Patent Law Treaty (PLT) in title II. Notable
 changes to the law included the restoration of patent rights via the revival of
 abandoned applications and acceptance of delayed maintenance fee payments. Section
 201(b) of the PLTIA specifically added new 35 U.S.C.
 27 , providing that the Director may establish procedures to
 revive an unintentionally abandoned application for patent, accept an
 unintentionally delayed payment of the fee for issuing a patent, or accept an
 unintentionally delayed response by the patent owner in a reexamination
 proceeding, upon petition by the applicant for patent or patent owner. The PLTIA
 eliminated the provisions of the patent statutes relating to revival of abandoned
 applications or acceptance of delayed maintenance fee payments on the basis of a
 showing of “unavoidable” delay.
 

 
 35 U.S.C. 27 
 Revival of applications; reinstatement of
 reexamination proceedings. 

 The Director may establish procedures,
 including the requirement for payment of the fee specified in section
 41(a)(7) , to revive an unintentionally abandoned
 application for patent, accept an unintentionally delayed payment of the fee
 for issuing each patent, or accept an unintentionally delayed response by the
 patent owner in a reexamination proceeding, upon petition by the applicant for
 patent or patent owner.
 

 

 37 CFR
 1.137 provides for the revival of abandoned applications, or
 terminated or limited reexamination prosecution on the basis of unintentional
 delay for the failure:
 

 
 (A) to timely reply to an Office requirement in a provisional
 application; 
 

 (B) to timely prosecute in a nonprovisional application;

 (C) to timely pay the issue fee for a design application;

 (D) to timely pay the issue fee for a utility or plant
 application; and
 

 (E) to provide copendency between the abandoned
 application and a subsequently filed application.
 

 
 A petition under 37 CFR 1.137 requires:
 

 
 (A) the required reply, unless previously filed; 

 (B) the petition fee as set forth in 37 CFR
 1.17(m) ; 
 

 (C) any terminal disclaimer (and fee as set forth
 in 37 CFR
 1.20(d) ) required pursuant to 37 CFR
 1.137(d) ; and
 

 (D) 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 37 CFR 1.137 was
 unintentional.
 

 
 The Director of the USPTO may require additional information where
 there is a question whether the delay was unintentional. In particular, any
 applicant filing a petition to revive an abandoned application more than two years
 after the date of abandonment must provide additional explanation of the
 circumstances surrounding the delay that establishes that the entire delay was
 unintentional.
 

 A. Reply Requirement Unlike a petition to withdraw the holding of abandonment, a
 petition to revive under 37 CFR 1.137 must be
 accompanied by, inter alia, the required reply. Generally,
 the required reply is the reply sufficient to have avoided abandonment, had
 such reply been timely filed. A petition for an extension of time under
 37 CFR
 1.136 and a fee for such an extension of time are not
 required to be included with the reply.
 

 37 CFR
 1.137(c) applies to the reply requirement for a petition
 under 37 CFR
 1.137 . In an application abandoned under
 37 CFR
 1.57(a) , the reply must include a copy of the
 specification and any drawings of the previously filed application. In an
 application or patent abandoned for failure to pay the issue fee or any portion
 thereof, the required reply must include payment of the issue fee or any
 outstanding balance. In an application abandoned for failure to pay the
 publication fee, the required reply must include payment of the publication
 fee. In a nonprovisional application abandoned for failure to prosecute, the
 required reply may be met by the filing of a continuing application. In a
 nonprovisional utility or plant application filed on or after June 8, 1995,
 abandoned after the close of prosecution as defined in 37 CFR
 1.114(b) , the required reply may also be met by the
 filing of a request for continued examination (RCE) in compliance with
 37 CFR
 1.114 . See below for more details on the reply
 requirement in specific situations of abandonment.
 

 1. Abandonment for Failure To Timely Submit A Copy of the Specification
 and Any Drawings In An Application Filed By Reference Under 35 U.S.C.
 111(c) and 37 CFR 1.57(a) In an application abandoned under
 37 CFR
 1.57(a) , the required reply must include a copy of the
 specification and any drawings of the previously filed application. Although
 not required as a condition for revival, a certified copy of the previously
 filed application may be required for an application filed by reference. If the
 certified copy is required and is not filed within the later of four months
 from the filing date of the application or sixteen months from the filing date
 of the previously filed application, a petition including a showing of good and
 sufficient cause for the delay and the petition fee set forth in
 37 CFR 1.17 are required.
 For more details regarding an application filed by reference under
 35
 U.S.C. 111(c) and 37 CFR 1.57(a) , see
 MPEP §
 601.01(a) , subsection III.
 

 2. Abandonment for Failure To Pay the Issue Fee or Publication
 Fee In an application abandoned for failure to timely pay the
 issue fee, the required reply must include the issue fee (and any required
 publication fee).
 

 Section 202(b)(6) of the PLTIA amended 35 U.S.C.
 151 to provide that: (1) if it appears that an
 applicant is entitled to a patent under the law, a written notice of
 allowance of the application shall be given or mailed to the applicant; (2)
 the notice of allowance shall specify a sum, constituting the issue fee and
 any required publication fee, which shall be paid within three months
 thereafter; and (3) upon payment of this sum, the patent may issue, but if
 payment is not timely made, the application shall be regarded as abandoned.
 Under the changes to 35 U.S.C. 151 in the
 PLTIA, the sum specified in the notice of allowance will constitute the
 issue fee and any required publication fee, and the Office will proceed to
 issue a patent when the applicant pays the sum specified in the notice of
 allowance, regardless of the issue fee and/or publication fee in effect on
 the date the sum specified in the notice of allowance is paid.
 

 Section 201(b) of the PLTIA specifically added
 new 35 U.S.C. 27 , providing
 that the Director may establish procedures to revive an unintentionally
 abandoned application for a patent, accept an unintentionally delayed
 payment of the fee for issuing a patent, or accept an unintentionally
 delayed response by the patent owner in a reexamination proceeding, upon
 petition by the applicant for patent or patent owner.
 

 35 U.S.C. 27 authorizes the acceptance of an
 “unintentionally delayed payment of the fee for issuing each patent.” Thus,
 35 U.S.C. 27 requires
 payment of the issue fee as a condition of reviving an application abandoned
 for failure to pay the issue fee. Therefore, the filing of a continuing
 application without payment of the issue fee is not an acceptable reply in
 an application abandoned for failure to pay the issue fee.
 

 The issue fee due with the petition to revive
 is the issue fee dollar amount specified in the notice of allowance. If the
 notice of allowance also specified a publication fee, then the publication
 fee must also be paid in the dollar amount specified on the notice of
 allowance. An applicant may change the entity status with the filing of the
 petition to revive, if appropriate, and pay the petition fee in the new
 entity status amount, but the issue fee (and any publication fee) must be
 paid in the dollar amount specified in the notice of allowance. By contrast,
 for timely filed issue fee payments, in the event of an entity status
 change, payment is made in the amount corresponding to the newly established
 status. This practice is reflected in section I of the “HOW TO REPLY TO THIS
 NOTICE” section of the Notice of Allowance, which is reproduced in
 MPEP §
 1303 . 
 

 In an application abandoned for failure to pay the
 publication fee, the required reply must include payment of the publication
 fee. Even if an application abandoned for failure to pay the publication fee
 is being revived solely for purposes of continuity with a continuing
 application, the petition to revive under 37 CFR
 1.137 must include payment of the publication fee.
 

 3. Abandonment for Failure To Provide Required Drawings In an application abandoned for failure to
 provide required drawings, a petition to revive the application will be
 dismissed unless the required drawings are filed before or with the petition
 to revive the application.
 

 4. Abandonment for Failure To Reply in a Nonprovisional
 Application 

 (a) Abandonment for Failure To Reply to a Non-Final Action The required reply to a non-final action in a
 nonprovisional application abandoned for failure to prosecute may be
 either:
 

 
 (A) an argument or an amendment under 37 CFR
 1.111 ; 
 

 (B) the filing of a continuing application under
 37 CFR 1.53(b) 
 (or a continued prosecution application (CPA) under
 37 CFR 1.53(d) 
 if the application is a design application).
 

 
 The grant of a petition under 37 CFR
 1.137 is not a determination that any reply under
 37
 CFR 1.111 is complete. Where the proposed reply is
 to a non-final Office action, the petition may be granted if the reply
 appears to be bona fide . After revival of the
 application, the patent examiner may, upon more detailed review,
 determine that the reply is lacking in some respect. In this limited
 situation, the patent examiner should send out a letter giving a 2-month
 shortened statutory period under 37 CFR 1.135(c) for
 correction of the error or omission. Extensions of time under
 37 CFR 1.136(a) are permitted. If applicant does
 not correct the omission within the time period set in the letter
 (including any extension), the application is again abandoned. 
 

 (b) Abandonment for Failure To Reply to a Final Action A reply under 37 CFR 1.113 to a
 final action must include a request for continued examination (RCE) under
 37
 CFR 1.114 or cancellation of, or appeal from the
 rejection of, each claim so rejected. Accordingly, in a nonprovisional
 application abandoned for failure to reply to a final action, the reply
 required for consideration of a petition to revive must be: 
 

 
 (A) a Notice of Appeal and appeal fee; 

 (B) an amendment under 37 CFR
 1.116 that cancels all the rejected claims or
 otherwise prima facie places the application in
 condition for allowance; 
 

 (C) the filing of an RCE (accompanied by a submission
 that meets the reply requirements of 37 CFR
 1.111 and the requisite fee) under
 37 CFR 1.114 
 for utility or plant applications filed on or after June 8, 1995
 (see paragraph (d) below); or 
 

 (D) the filing of a continuing application under
 37 CFR 1.53(b) 
 (or a CPA under 37 CFR 1.53(d) 
 if the application is a design application). 
 

 
 When a notice of appeal is the reply filed pursuant to
 37
 CFR 1.137(b)(1) , the time period under
 37
 CFR 41.37 for filing the appeal brief will be set
 by the Director of the USPTO in the decision granting the petition.
 

 An application subject to a final action in which a
 proposed amendment under 37 CFR 1.116 is filed
 as the required reply will normally be routed by the Office of Petitions
 to the Technology Center (TC) to determine whether a proposed amendment
 places the application in condition for allowance prior to granting any
 petition to revive such application. The examiner is instructed that if
 the reply places the application in condition for allowance, the examiner
 should use the typewriter tool in Adobe Acrobat to write in the margin of
 the reply “OK to enter upon revival.” If the petition is otherwise
 grantable and the examiner indicates that the reply places the
 application in condition for allowance, the petition will be granted. If,
 on the other hand, the reply would not place the application in condition
 for allowance, the examiner is instructed to complete form PTOL-303 and
 return the form to the Office of Petitions with the application. Form
 PTOL-303 should not be mailed to the applicant by the examiner. In this
 situation, the Office of Petitions will not grant the petition. A copy of
 the form PTOL-303 is marked with the notation “Courtesy Copy” by the
 Office of Petitions. The courtesy copy is sent as an attachment with the
 decision on the petition. The advisory form PTOL-303 merely serves as an
 advisory notice to the Office of Petitions regarding the decision of the
 examiner on the amendment after final rejection.
 

 (c) Abandonment for Failure To File an Appeal Brief In those situations where abandonment occurred because of
 the failure to file an appeal brief, the reply required pursuant to
 37 CFR 1.137(b)(1) must be either:
 

 
 (A) an appeal brief in compliance with
 37 CFR
 41.37(c) ; 
 

 (B) the filing of an RCE accompanied by a submission
 and the requisite fee in compliance with 37 CFR
 1.114 for utility or plant applications filed
 on or after June 8, 1995, abandoned after the close of prosecution
 as defined in 37 CFR 1.114(b) 
 (see paragraph (d) below); or
 

 (C) the filing of a continuing application under
 37 CFR 1.53(b) 
 (or a CPA under 37 CFR 1.53(d) 
 if the application is a design application).
 

 (d) Filing an RCE as the Required Reply For utility or plant applications abandoned for failure
 to reply to a final Office action or for failure to file an appeal brief,
 the required reply may be the filing of an RCE accompanied by a
 submission and the requisite fee. When an RCE is the reply filed pursuant
 to 37 CFR 1.137(b)(1) to revive such an application,
 the submission accompanying the RCE must be a reply responsive within the
 meaning of 37 CFR 1.111 to the
 last Office action. Consideration of whether the submission is responsive
 within the meaning of 37 CFR 1.111 to the
 last Office action is done without factoring in the “final” status of
 such action. The submission may be a previously filed amendment after
 final or a statement that incorporates by reference the arguments in a
 previously filed appeal or reply brief. See MPEP §
 706.07(h) , subsection II.
 

 The petition may be granted if the submission appears to
 be a bona fide attempt to provide a complete reply to
 the last Office action. After revival of the application, the examiner
 may, upon a more detailed review, determine that the reply is lacking in
 some respect. In this limited situation, the examiner should send out a
 letter giving a 2-month shortened statutory period under
 37
 CFR 1.135(c) for correction of the error or
 omission. Extensions of time under 37 CFR 1.136(a) are
 permitted. If the applicant does not correct the omission within the time
 period set in the letter (including any extension), the application is
 again abandoned. 
 

 (e) A Continuing Application or RCE May Be Required by the
 Office The Office may require the filing of a continuing
 application or an RCE (if the prosecution prior to abandonment was
 closed) (or request for further examination pursuant to 37 CFR
 1.129(a) ) to meet the reply requirement of
 37
 CFR 1.137(b)(1) where, under the circumstances of
 the application, treating a reply under 37 CFR
 1.111 or 1.113 would place an
 inordinate burden on the Office. Exemplary circumstances of when treating
 a reply under 37 CFR 1.111 or
 1.113 may place an inordinate burden on the Office
 are where: 
 

 
 (A) an application has been abandoned for an inordinate
 period of time; 
 

 (B) an application file contains multiple or
 conflicting replies to the last Office action; or 
 

 (C) the reply or replies submitted under
 37 CFR
 1.137(b)(1) ) are questionable as to
 compliance with 37 CFR 1.111 or
 1.113 .
 

 5. Abandonment for Failure To Notify the Office of a Foreign Filing
 After the Submission of a Non-Publication Request If an applicant makes a nonpublication request upon filing
 with the appropriate certifications, the utility or plant application filed
 on or after November 29, 2000 will not be published under 35 U.S.C.
 122(b)(1) . See 35 U.S.C.
 122(b)(2)(B)(i) . If an applicant makes a
 nonpublication request and then rescinds, pursuant to 35 U.S.C.
 122(b)(2)(B)(ii) , the nonpublication request before or
 on the date a counterpart application is filed in a foreign country, or
 under a multilateral international agreement, that requires eighteen-month
 publication, the nonpublication request will be treated as annulled and the
 application will be treated as if the nonpublication request were never
 made. See MPEP §§ 1123 and 1124 . An
 applicant who has made a nonpublication request, but who subsequently files
 an application directed to the invention disclosed in the U.S. application
 in a foreign country, or under a multilateral international agreement, that
 requires eighteen-month publication before the nonpublication request is
 rescinded, must, in addition to the rescission, notify the Office of such
 filing within forty-five days after the date of such filing. The requirement
 in 35 U.S.C. 122(b)(2)(B)(iii) for notice of the foreign
 filing is in addition to any rescission of the nonpublication request under
 35
 U.S.C. 122(b)(2)(B)(ii) . If an applicant files a
 counterpart application in a foreign country after having filed an
 application in the USPTO with a nonpublication request, filing a rescission
 of the nonpublication request under 35 U.S.C.
 122(b)(2)(B)(ii) without also providing a notice of
 the foreign filing in a timely manner will result in the abandonment of the
 U.S. application under 35 U.S.C.
 122(b)(2)(B)(iii) . 37 CFR 1.137(f) ,
 however, provides that an application abandoned as a result of the failure
 to timely provide such a notice to the Office is subject to revival pursuant
 to 37 CFR
 1.137 if the delay in submitting the notice was
 unintentional.
 

 A nonprovisional application abandoned pursuant to
 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely
 notify the Office of the filing of an application in a foreign country or
 under a multinational treaty that requires eighteen-month publication may be
 revived only on the basis of unintentional delay pursuant to
 37 CFR
 1.137 . The reply requirement of 37 CFR
 1.137(c) is met by the notification of such filing in
 a foreign country or under a multinational treaty, but the filing of a
 petition under 37 CFR 1.137 will not
 operate to stay any period for reply that may be running against the
 application. Since the Office cannot ascertain whether an application is
 abandoned under 35 U.S.C.
 122(b)(2)(B)(iii) , the Office may continue to process
 and examine the application until the Office is notified of applicant’s
 failure to meet the forty-five days notice requirement of 35 U.S.C.
 122(b)(2)(B)(iii) . Therefore, the filing of a petition
 under 37 CFR 1.137 to revive such an application will not
 operate to stay any period for reply that may be running against the
 application. Applicants may use form PTO/SB/64a to file a petition for
 revival under 37 CFR 1.137 .
 

 B. Petition Fee Requirement 35 U.S.C.
 41(a)(7) provides that the Office shall charge $1,700.00
 on filing each petition for the revival of an abandoned application for a
 patent, for the delayed payment of the fee for issuing each patent, for the
 delayed response by the patent owner in any reexamination proceeding, for the
 delayed payment of the fee for maintaining a patent in force, for the delayed
 submission of a priority or benefit claim, or for the extension of the 12-month
 period for filing a subsequent application. 35 U.S.C. 41(a)(7) also
 provides that the Director may refund any part of the fee, in exceptional
 circumstances as determined by the Director. This provision permits the Office
 to refund (or waive) the fee specified in 35 U.S.C. 41(a)(7) in
 situations in which the failure to take the required action or pay the required
 fee was due to a widespread disaster, such as a hurricane, earthquake, or
 flood, in the manner that the Office would waive surcharges that are not
 required by statute. The “exceptional circumstances” provision does not permit
 applicants to request a refund on the basis of there being exceptional
 circumstances. 
 

 The phrase “[o]n filing” in 35 U.S.C. 41(a)(7) means
 that the petition fee is required for the filing (and not merely the grant) of
 a petition under 37 CFR 1.137 . See H.R. Rep.
 No. 542, 97th Cong., 2d Sess. 6 (1982), reprinted in 1982
 U.S.C.C.A.N. 770 (“[t]he fees set forth in this section are due on filing the
 petition”). Therefore, the Office: (A) will not refund the petition fee
 required by 37 CFR 1.17(m) , regardless
 of whether the petition under 37 CFR 1.137 is dismissed
 or denied (unless there are exceptional circumstances as determined by the
 Director); and (B) will not reach the merits of any petition under
 37 CFR
 1.137 lacking the requisite petition fee.
 

 C. Unintentional Delay The Office usually relies upon the applicant’s duty of candor
 and good faith and accepts the 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 37 CFR 1.137 was
 unintentional” without requiring further information in the vast majority of
 petitions under 37 CFR 1.137 . This is
 because the applicant is obligated under 37 CFR 11.18 to inquire
 into the underlying facts and circumstances when a practitioner provides this
 statement to the Office. In addition, providing an inappropriate statement in a
 petition under 37 CFR 1.137 to revive an
 abandoned application may have an adverse effect when attempting to enforce any
 patent resulting from the application. See Lumenyte Int’l Corp. v.
 Cable Lite Corp., Nos. 96-1011, 96-1077, 1996 U.S. App. LEXIS
 16400, 1996 WL 383927 (Fed. Cir. July 9, 1996)(unpublished)(patents held
 unenforceable due to a finding of inequitable conduct in submitting an
 inappropriate statement that the abandonment was unintentional). An extended
 period of delay (i.e., more than two years from the date the application became
 abandoned) in filing a petition to revive an application, however, raises a
 question as to whether the entire delay was unintentional. This may create
 uncertainty and unpredictability relating to patent rights in that there is a
 greater likelihood that the entire delay may not be "unintentional" within the
 meaning of 37
 CFR 1.137 as compared to a petition that was filed within
 a shorter time period after the abandonment of the application. An applicant or
 patentee cannot meet the "unintentional delay" standard in 37 CFR
 1.137(a) if the entire delay is not unintentional. See
 Clarification of the Practice for Requiring Additional Information
 in Petitions Filed in Patent Applications and Patents Based on Unintentional
 Delay, 85 FR 12222-24 (March 2, 2020). 
 

 The Office is almost always satisfied as to whether “the entire
 delay…was unintentional” on the basis of statement(s) by the applicant or
 representative explaining the cause of the delay (accompanied at most by copies
 of correspondence relevant to the period of delay). However, the Office
 requires additional information in cases when a petition to revive an abandoned
 application is filed more than two years after the date the application became
 abandoned. The reason for requiring additional information in cases where there
 has been an extended delay—a delay of more than two years from the date the
 application became abandoned is to ensure that the Office is provided with
 sufficient information of the facts and circumstances surrounding the entire
 delay to support a conclusion that the entire delay was indeed "unintentional." 
 

 The legislative history of Public Law 97-247, § 3, 96 Stat. 317
 (1982), reveals that the purpose of the unintentional delay revival provision
 is to permit the Office to have discretion to revive abandoned applications in
 appropriate circumstances, but places a limit on this discretion stating that
 “[u]nder this section a petition accompanied by [the requisite fee] would not
 be granted where the abandonment or the failure to pay the fee for issuing the
 patent was intentional as opposed to being unintentional.” H.R. Rep. No. 542,
 97th Cong., 2d Sess. 6-7 (1982), reprinted in 1982
 U.S.C.C.A.N. 770-71. A delay resulting from a deliberately chosen course of
 action on the part of the applicant is not an “unintentional” delay within the
 meaning of 37
 CFR 1.137 .
 

 Where the applicant deliberately permits an application to
 become abandoned (e.g., due to a conclusion that the claims are unpatentable,
 that a rejection in an Office action cannot be overcome, or that the invention
 lacks sufficient commercial value to justify continued prosecution), the
 abandonment of such application is considered to be a deliberately chosen
 course of action, and the resulting delay cannot be considered as
 “unintentional” within the meaning of 37 CFR 1.137 . See
 In re Application of G , 11 USPQ2d 1378, 1380 (Comm’r Pat.
 1989). An intentional course of action is not rendered unintentional when, upon
 reconsideration, the applicant changes their mind as to the course of action
 that should have been taken. See In re Maldague , 10 USPQ2d
 1477, 1478 (Comm’r Pat. 1988).
 

 A delay resulting from a deliberately chosen course of action
 on the part of the applicant does not become an “unintentional” delay within
 the meaning of 37 CFR 1.137 because: 
 

 
 (A) the applicant does not consider the claims to be
 patentable over the references relied upon in an outstanding Office
 action;
 

 (B) the applicant does not consider the allowed or patentable
 claims to be of sufficient breadth or scope to justify the financial
 expense of obtaining a patent;
 

 (C) the applicant does not consider any patent to be of
 sufficient value to justify the financial expense of obtaining the
 patent;
 

 (D) the applicant does not consider any patent to be of
 sufficient value to maintain an interest in obtaining the patent; or
 

 (E) the applicant remains interested in eventually obtaining
 a patent, but simply seeks to defer patent fees and patent prosecution
 expenses.
 

 
 Likewise, a change in circumstances that occurred subsequent to
 the abandonment of an application does not render “unintentional” the delay
 resulting from a previous deliberate decision to permit an application to be
 abandoned. These matters simply confuse the question of whether there was a
 deliberate decision not to continue the prosecution of an application with why
 there was a deliberate decision not to continue the prosecution of an
 application.
 

 Any applicant filing a petition to revive an abandoned
 application under 37 CFR 1.137 more than two
 years after the date of abandonment is required to provide an additional
 explanation of the circumstances surrounding the delay that establishes that
 the entire delay was unintentional. This requirement is in addition to the
 requirement to provide a statement that the entire delay was unintentional.
 Electronic petitions, that are automatically processed and immediately decided,
 may be filed using the web-based ePetition process for the following types of
 petitions: (1) Petitions to Accept Late Payment of Issue Fee - Unintentional
 Late Payment ( 37 CFR 1.137(a) ); (2) Petitions for Revival of an
 Application based on Failure to Notify the Office of a Foreign or International
 Filing ( 37
 CFR 1.137(f) ); (3) Petitions for Revival of an
 Application for Continuity Purposes Only ( 37 CFR 1.137(a) ); and (4)
 Petitions for Revival of an Abandoned Patent Application Abandoned
 Unintentionally ( 37 CFR 1.137(a) ) (For Cases
 Abandoned After 1st Action and Prior to Notice of Allowance). Applicants may
 use the forms provided by the Office (PTO/SB/64, PTO/SB/64a, or PTO/SB/64PCT).
 Additional information regarding the ePetition process is available from:
 www.uspto.gov/Epetitions . 
 

 Applicants may use the forms provided by the
 Office (PTO/SB/64, PTO/SB/64a, or PTO/SB/64PCT).
 

 

 

 

 

 

 

 

 

 

 

 
 D. Delay Until the Filing of a Grantable Petition There are three periods to be considered during the evaluation
 of a petition under 37 CFR 1.137 : 
 

 
 (A) the delay in reply that originally resulted in the
 abandonment; 
 

 (B) the delay in filing an initial petition pursuant to
 37 CFR 1.137 to revive the application; and 
 

 (C) the delay in filing a grantable petition
 pursuant to 37 CFR 1.137 to
 revive the application.
 

 
 As discussed above, the abandonment of an application is
 considered to be a deliberately chosen course of action, and the resulting
 delay cannot be considered as “unintentional” within the meaning of
 37 CFR
 1.137 , where the applicant deliberately permits the
 application to become abandoned. See Application of G, 11
 USPQ2d at 1380. Likewise, where the applicant deliberately chooses not to seek
 or persist in seeking the revival of an abandoned application, or where the
 applicant deliberately chooses to delay seeking the revival of an abandoned
 application, the resulting delay in seeking revival of the abandoned
 application cannot be considered as “unintentional” within the meaning of
 37 CFR
 1.137 . 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.
 

 
 Obviously, delaying the revival of an abandoned application, by
 a deliberately chosen course of action, until the industry or a competitor
 shows an interest in the invention is the antithesis of an “unintentional”
 delay. An intentional abandonment of an application, or an intentional delay in
 seeking the revival of an abandoned application, precludes a finding of
 unintentional delay pursuant to 37 CFR 1.137 . See
 Maldague, 10 USPQ2d at 1478.
 

 The Office does not generally question whether there has been
 an intentional or otherwise impermissible delay in filing an initial petition
 pursuant to 37 CFR 1.137 , when such petition is filed: (A) within 3
 months of the date the applicant is first notified that the application is
 abandoned; and (B) within 1 year of the date of abandonment of the
 application. Thus, an applicant seeking revival of an abandoned application is
 advised to file a petition pursuant to 37 CFR 1.137 within 3
 months of the first notification that the application is abandoned to avoid the
 question of intentional delay being raised by the Office (or by third parties
 seeking to challenge any patent issuing from the application).
 

 Where a petition pursuant to 37 CFR
 1.137 is not filed within 3 months of the date the
 applicant is first notified that the application is abandoned, the Office may
 consider there to be a question as to whether the delay was unintentional. In
 such instances the Office may require further information as to the cause of
 the delay between the date the applicant was first notified that the
 application was abandoned and the date a 37 CFR 1.137 petition was
 filed, and how such delay was “unintentional.”
 

 To avoid delay in the consideration of the merits of a petition
 under 37 CFR
 1.137 in instances in which such petition was not filed
 within 3 months of the date the applicant was first notified that the
 application was abandoned, applicants should include a showing as to how the
 delay between the date the applicant was first notified by the Office that the
 application was abandoned and the filing of a petition under 37 CFR
 1.137 was “unintentional.”
 

 Where a petition pursuant to 37 CFR
 1.137 is not filed within 1 year of the date of
 abandonment of the application (note that abandonment takes place by operation
 of law, rather than by the mailing of a Notice of Abandonment), the Office may
 require:
 

 
 (A) further information as to when the applicant (or the
 applicant’s representative) first became aware of the abandonment of the
 application; and
 

 (B) a showing as to how the delay in discovering the
 abandoned status of the application occurred.
 

 
 To avoid delay in the consideration of the merits of a petition
 under 37 CFR
 1.137 in instances in which such petition was not filed
 within 1 year of the date of abandonment of the application, applicants should
 include:
 

 
 (A) the date that the applicant first became aware of the
 abandonment of the application; and 
 

 (B) a showing as to how the delay in discovering the
 abandoned status of the application occurred.
 

 
 Applicant’s failure to carry the burden of proof to establish
 that the “entire” delay was “unintentional” may lead to the denial of a
 petition under 37 CFR 1.137 , regardless of
 the circumstances that originally resulted in the abandonment of the
 application.
 

 E. Party Whose Delay Is Relevant The question under 37 CFR 1.137 is whether the
 delay on the part of the party having the right or authority to reply to avoid
 abandonment (or not reply) was unintentional. When the applicant assigns the
 entire right, title, and interest in an invention to a third party (and thus
 does not retain any legal or equitable interest in the invention), the
 applicant’s delay is irrelevant in evaluating whether the delay was
 unintentional. See Kim v. Quigg, 718 F. Supp. 1280, 1284, 12
 USPQ2d 1604, 1607-08 (E.D. Va. 1989). When an applicant assigns the application
 to a third party (e.g., the inventor/applicant’s employer), and the third party
 decides not to file a reply to avoid abandonment, the applicant’s actions,
 inactions or intentions are irrelevant under 37 CFR
 1.137 , unless the third party has reassigned the
 application to the applicant prior to the due date for the reply.
 Id. 

 Likewise, where the applicant permits a third party (whether a
 partial assignee, licensee, or other party) to control the prosecution of an
 application, the third party’s decision whether or not to file a reply to avoid
 abandonment is binding on the applicant. See Winkler, 221 F.
 Supp. at 552, 138 USPQ at 667. Where an applicant enters an agreement with a
 third party for the third party to take control of the prosecution of an
 application, the applicant will be considered to have given the third party the
 right and authority to prosecute the application to avoid abandonment (or not
 prosecute), unless, by the express terms of the contract between applicant and
 the third party, the third party is conducting the prosecution of the
 application for the applicant solely in a fiduciary capacity. See
 Futures Technology Ltd. v. Quigg, 684 F. Supp. 430, 431,
 7 USPQ2d 1588, 1589 (E.D. Va. 1988). Otherwise, the applicant will be
 considered to have given the third party unbridled discretion to prosecute (or
 not prosecute) the application to avoid abandonment, and will be bound by the
 actions or inactions of such third party.
 

 F. Burden of Proof To Establish Unintentional Delay 

 37 CFR
 1.137(b)(4) requires that a petition under
 37 CFR
 1.137 must be accompanied by a statement that the entire
 delay in providing the required reply from the due date for the reply until the
 filing of a grantable petition pursuant to 37 CFR 1.137 was
 unintentional, but also provides that “[t]he Director may require additional
 information where there is a question whether the delay was unintentional.”
 While the Office will generally require only the statement that the entire
 delay in providing the required reply from the due date for the reply until the
 filing of a grantable petition pursuant to 37 CFR 1.137 was
 unintentional, the Office may require an applicant to carry the burden of proof
 to establish that the delay from the due date for the reply until the filing of
 a grantable petition was unintentional within the meaning of 35 U.S.C.
 27 and 37 CFR 1.137 where there is
 a question whether the entire delay was unintentional. See Application
 of G, 11 USPQ2d at 1380.
 

 G. Terminal Disclaimer Requirement 37 CFR
 1.137(d) requires that a petition under 37 CFR
 1.137 be accompanied by a terminal disclaimer (and fee),
 regardless of the period of abandonment, in:
 

 
 (A) a design application;

 (B) a nonprovisional utility application (other than a
 reissue application) filed before June 8, 1995; or 
 

 (C) a nonprovisional plant application (other than a reissue
 application) filed before June 8, 1995. 
 

 
 In addition, a terminal disclaimer (and fee) is also required
 for a utility or plant application filed on or after June 8, 1995, but before
 May 29, 2000, where the application became abandoned (1) during appeal, (2)
 during interference, or (3) while under a secrecy order. The reason being that
 utility and plant patents issuing on applications filed on or after June 8,
 1995, but before May 29, 2000, are eligible for the patent term extension under
 former 35 U.S.C.
 154(b) (as a result of the Uruguay Round Agreements Act
 (URAA)). See 35 U.S.C. 154(b) (1999); see also 37 CFR
 1.701 . If such an application is abandoned (1) during
 appeal, (2) during interference, or (3) while under a secrecy order, the
 patentee of a patent issuing from such an application is eligible for patent
 term extension for the entire period of abandonment. The requirement for a
 terminal disclaimer for these situations will make certain that any patent term
 extension obtained for the period of abandonment while the application is under
 appeal, interference, or a secrecy order will be dedicated to the public. For
 utility and plant applications filed on or after May 29, 2000, a terminal
 disclaimer (and fee) is not required since the period of abandonment is reduced
 from the patent term adjustment pursuant to 37 CFR 1.704 .
 

 The terminal disclaimer submitted in a design application must
 dedicate to the public a terminal part of the term of any patent granted
 thereon equivalent to the period of abandonment of the application. The
 terminal disclaimer submitted in either a utility or plant application filed
 before June 8, 1995 must dedicate to the public a terminal part of the term of
 any patent granted thereon equivalent to the lesser of: (1) the period of
 abandonment of the application; or (2) the period extending beyond twenty years
 from the date on which the application for the patent was filed in the United
 States or, if the application contains a specific reference to an earlier filed
 application(s) under 35 U.S.C. 120 ,
 121 , or 365(c) , from the date on
 which the earliest such application was filed. The terminal disclaimer must
 also apply to any patent granted on any continuing utility or plant application
 filed before June 8, 1995, or any continuing design application, entitled under
 35
 U.S.C. 120 , 121 , or 365(c) to
 the benefit of the filing date of the application for which revival is sought.
 The terminal disclaimer requirement of 37 CFR 1.137(d) does not
 apply to (A) applications for which revival is sought solely for purposes of
 copendency with a utility or plant application filed on or after June 8, 1995,
 (B) reissue applications, or (C) reexamination proceedings.
 

 The Office cannot determine (at the time a petition to revive
 is granted) the period disclaimed (i.e., which period is lesser: the period of
 abandonment of the application, or the period extending beyond twenty years
 from the date on which the application for the patent was filed in the United
 States or, if the application contains a specific reference to an earlier filed
 application(s) under 35 U.S.C. 120 ,
 121 , or 365(c) , from the date on
 which the earliest such application was filed). Therefore, the Office will not
 indicate the period disclaimed under 37 CFR 1.137(d) in its
 decision granting a petition to revive an abandoned application.
 

 The filing of a terminal disclaimer is not a substitute for
 unintentional delay. See Application of Takao, 17 USPQ2d at
 1159. The requirement that the entire delay have been unintentional
 ( 37 CFR
 1.137 ) is distinct from the requirement for a terminal
 disclaimer. Therefore, the filing of a terminal disclaimer cannot excuse an
 intentional delay in filing a petition or renewed petition to revive an
 abandoned application. Likewise, an unintentional delay in filing a petition or
 renewed petition to revive an abandoned application will not warrant waiver of
 the terminal disclaimer requirement of 37 CFR 1.137(d) .
 

 In the event that an applicant considers the requirement for a
 terminal disclaimer to be inappropriate under the circumstances of the
 application at issue, the applicant should file a petition under
 37 CFR
 1.183 (and petition fee) to request a waiver of this
 requirement of 37 CFR 1.183 . Such a
 petition may request waiver of this requirement in toto , or
 to the extent that such requirement exceeds the period considered by applicant
 as the appropriate period of disclaimer. The grant of such a petition, however,
 is strictly limited to situations wherein applicant has made a showing of an
 “extraordinary situation” in which “justice requires” the requested relief. An
 example of such a situation is when the abandonment of the application caused
 no actual delay in prosecution (e.g., an application awaiting decision by the
 Board of Appeals and Interferences during period of abandonment).
 

 See MPEP § 1490 for additional
 information pertaining to terminal disclaimers.
 

 H. Request for Reconsideration 37 CFR
 1.137(e) requires that any request for reconsideration or
 review of a decision refusing to revive an abandoned application must be filed
 within 2 months of the decision refusing to revive or within such time as set
 in the decision. 37 CFR 1.137(e) further
 provides that, unless a decision indicates otherwise, this time period for
 requesting reconsideration or review may be extended under the provisions of
 37 CFR
 1.136 .
 

 37 CFR
 1.137(e) specifies a time period within which a renewed
 petition pursuant to 37 CFR 1.137 must be filed
 to be considered timely. Where an applicant files a renewed petition, request
 for reconsideration, or other petition seeking review of a prior decision on a
 petition pursuant to 37 CFR 1.137 outside the
 time period specified in 37 CFR 1.137(e) , the Office
 may require, inter alia , a specific showing as to how the
 entire delay was “unintentional.” As discussed above, a delay resulting from
 the applicant deliberately choosing not to persist in seeking the revival of an
 abandoned application cannot be considered “unintentional” within the meaning
 of 37 CFR
 1.137 , and the correctness or propriety of the decision
 on the prior petition pursuant to 37 CFR 1.137 , the
 correctness of the applicant’s (or the applicant’s representative’s) decision
 not to persist in seeking revival, the discovery of new information or
 evidence, or other change in circumstances subsequent to the abandonment or
 decision to not persist in seeking revival are immaterial to such intentional
 delay caused by the deliberate course of action chosen by the applicant.
 

 I. Provisional Applications 37 CFR
 1.137 is applicable to a provisional application
 abandoned for failure to reply to an Office requirement. A petition under
 37 CFR
 1.137(a) must be accompanied by any outstanding reply to
 an Office requirement, since 37 CFR 1.137(c) permits the
 filing of a continuing application in lieu of the required reply only in a
 nonprovisional application.
 

 35 U.S.C.
 111(b)(5) provides that a provisional application shall
 be regarded as abandoned 12 months after its filing date and shall not be
 subject to revival after such 12-month period. 37 CFR
 1.137(g) provides that a provisional application,
 abandoned for failure to timely respond to an Office requirement, may be
 revived pursuant to 37 CFR 1.137 , however a
 provisional application will not be regarded as pending after twelve months
 from its filing date under any circumstances. Note that the pendency of a
 provisional application is extended to the next succeeding secular or business
 day if the day that is twelve months after the filing date of the provisional
 application falls on a Saturday, Sunday, or federal holiday within the District
 of Columbia. See 35 U.S.C. 119(e)(3) .
 

 A provisional application may be abandoned prior to 12 months
 from its filing date for failure to reply to an Office requirement (e.g.,
 failure to submit the filing fee and/or cover sheet). Applicant may petition to
 have an abandoned provisional application revived as a pending provisional
 application for a period of no longer than 12 months
 from the filing date of the provisional application where the delay was
 unintentional. It would be permissible to file a petition for revival later
 than 12 months from the filing date of the provisional application but only to
 revive the application for the 12-month period following the filing of the
 provisional application. Thus, even if the petition were granted to establish
 the pendency up to the end of the 12-month period, the provisional application
 would not be considered pending after 12 months from its filing date.
 

 

 
 711.03(d) Examiner’s Statement on Petition To Set Aside Examiner’s
 Holding [R-08.2012]
 

 37 CFR
 1.181 states that the examiner “may be directed by the Director
 to furnish a written statement, within a specific time, setting forth the reasons for
 his or her decision upon the matters averred in the petition, supplying a copy to the
 petitioner.” Unless requested, however, such a statement should not be prepared. See
 MPEP
 § 1002.01 .
 

 

 

 
 711.04 Public Access to Abandoned Applications [R-07.2022]

 Access to the application file itself for any non-Image File Wrapper
 (IFW) abandoned published application may be available through the Patent and Trademark
 Copy Fulfillment Branch’s Certified Copy Center (CCC). For ordering issues or general
 questions please call : 1-800-972-6382 or 571-272-3150; Monday – Friday (except federal
 holidays) Hours: 8:30 am – 5 pm ET. The file contents of the published application or a
 specific document in the file of the published application from the Patent and Trademark
 Copy Fulfillment Branch of the Public Records Division and payment of the appropriate
 fee set forth in 37
 CFR 1.19(b) . See 37 CFR 1.14(a)(1)(ii) .
 

 Access to an abandoned unpublished application may be provided to any
 person if a written request for access is submitted, and the abandoned application is
 identified or relied upon:
 

 
 (A) in a U.S. patent application publication or patent; 

 (B) in statutory invention registration; or 

 (C) in an international application that is published in accordance
 with PCT Article
 21(2) . 
 

 
 An application is considered identified in a document such as a patent
 when the application number or serial number and filing date, first named inventor,
 title and filing date or other application specific information are provided in the text
 of the patent, but not when the identification is made in a paper in the file contents
 of the patent and is not included in the printed patent. See 37 CFR
 1.14(a)(1)(iv) . A copy of the application-as-filed, the file
 contents of the abandoned application, or a specific document in the file of the
 abandoned application may also be provided to any person upon written request, and
 payment of the fee set forth in 37 CFR 1.19(b) . See
 37 CFR
 1.14(a)(1)(iv) . See also MPEP § 103 . Form PTO/SB/68 may be used
 to request access of an abandoned application under 37 CFR
 1.14(a)(1)(iv) .
 

 
 711.04(a) Date of Abandonment [R-07.2022]

 Applications are not ordinarily reviewed for possible abandonment
 until the maximum permissible period for which an extension of time under
 37 CFR
 1.136(a) plus 1 month has expired. 
 

 The applications should be carefully scrutinized by the appropriate
 examiner to verify that they are actually abandoned. A check should be made of files
 containing a decision of the Patent Trial and Appeal Board for the presence of
 allowed claims to avoid erroneously treating the proceedings as terminated (see
 MPEP §
 1214.06 , subsections II-IV for proper treatment of any
 claims that stand allowed). 
 

 If the application is abandoned, the date of the
 abandonment is after midnight of the date on which the set shortened statutory
 period, including any extensions under 37 CFR 1.136 , expired. This is
 normally the end of the 3-month shortened statutory period.
 

 The following examples in which no retroactive
 extension of time is sought and no reply is filed by the applicant illustrate the
 expiration of the shortened statutory period and corresponding date the abandonment
 in different situations:
 

 
 1. A non-final Office action was mailed on May 15,
 2019 and set a 3 month shortened statutory period that expired on Thursday,
 August 15, 2019, which was a normal business day when the Office was open. In
 this situation, the date of abandonment is Friday, August 16, 2019.
 

 2. A non-final Office action was mailed on May 16,
 2019 and set a 3 month shortened statutory period that expired on Friday,
 August 16, 2019, which was a normal business day when the Office was open. In
 this situation, the date of abandonment is Saturday, August 17, 2019.
 

 3. A non-final Office action was mailed on May 17,
 2019 and set a 3 month shortened statutory period that expired on Saturday,
 August 17, 2019. Monday, August 19, 2019 was a normal business day when the
 Office was open. In this situation, the date of abandonment is Tuesday, August
 20, 2019. The period for reply is extended to Monday, August 19, 2019 due to
 35 U.S.C.
 21 and 37 CFR 1.7 . See
 MPEP §
 710.05 .
 

 4. A non-final Office action was mailed on May 31,
 2019 and set a 3 month shortened statutory period that expired on Saturday,
 August 31, 2019. Monday, September 2, 2019 was a federal holiday. Tuesday,
 September 3, 2019, was a normal business day when the Office was open. In this
 situation, the date of abandonment is Wednesday, September 4, 2019. The period
 for reply is extended to Tuesday, September 3, 2019 due to 35 U.S.C.
 21 and 37 CFR 1.7 . See
 MPEP §
 710.05 .
 

 
 

 
 711.04(b) Ordering of Patented and Abandoned Files [R-07.2022]

 In examination of an application it is sometimes necessary to inspect
 the application papers of a previously patented or abandoned application. It is
 always necessary to do so in the examination of a reissue application.
 

 Recently patented and abandoned paper files are stored at the Files
 Repository. Older files are housed in warehouses located off site. Image File Wrapper
 (IFW) applications are stored electronically and do not have a paper file wrapper to
 be stored other than certain artifact material. The electronic file is the official
 record of the application. 
 

 Patented and abandoned paper files or artifact folders are ordered by
 means of the File Ordering System (FOS). To place such an order, the system requires
 a delivery organization (i.e. the examiner's art unit), employee number, and patent
 number(s) and/or application number(s) of the file(s) that are needed. After
 transmission of the requested transaction by the examiner, a “response” screen
 displays the status of the request for each file. The examiner is informed that the
 request is:
 

 
 (A) accepted; 

 (B) accepted, but for which the file is stored at a warehouse off
 site (in which case delivery time is increased); 
 

 (C) not accepted because the file is not located at the repository
 or warehouse; 
 

 (D) not accepted because a previous request for the file has not
 yet been filled; or 
 

 (E) not accepted because the patent or application number inputted
 is not valid.
 

 
 Personnel at the Files Repository regularly perform a FOS print
 transaction which produces a list of all accepted requests in patent number order
 and, for requests for abandoned files, in application number order. The printed
 record of each request is detached from the list when its associated file is found
 and then stapled to it. Periodic deliveries of files are made to the offices of their
 requestors by Files Repository personnel, and files that are ready to be returned to
 the repository are picked up. For applications stored in IFW, this process is not
 necessary.
 

 With the exception of certain older files, the drawings of patented
 and abandoned files, if any, are now stored within their respective application file
 wrappers. Since it is desired not to separate one from the other, both the file and
 its drawings are delivered when a file is ordered. 
 

 

 
 711.04(c) Notifying Applicants of Abandonment [R-07.2015]

 The Patent Examining Corps currently mails to the correspondence
 address of record, a Notice of Abandonment form PTOL-1432 in all applications which
 become abandoned for failure to prosecute. However, in no case will mere failure to
 receive a notice of abandonment affect the status of an abandoned application.
 

 This procedure should enable applicants to take appropriate and
 diligent action to reinstate an application inadvertently abandoned for failure to
 timely reply to an official communication. In most cases, a petition to revive under
 37 CFR
 1.137 will be the appropriate remedy. It may be that a reply to
 the Office action was mailed to the Office with a certificate of mailing declaration
 as a part thereof ( MPEP
 § 512 ) but was not received in the Office. In this
 instance, adequate relief may be available by means of a petition to withdraw the
 holding of abandonment. See MPEP § 711.03(c) .
 

 In any instance, if action is not taken promptly after receiving the
 notice of abandonment, appropriate relief may not be granted. If a lack of diligent
 action is predicated on the contention that neither the Office action nor the notice
 of abandonment was received, one may presume that there is a problem with the
 correspondence address of record. Accordingly, attention is directed to
 MPEP §§
 403 and MPEP § 601.03(a) and (b) 
 dealing with changes of address. In essence, it is imperative that a paper notifying
 the Office of a change of address be filed promptly in each application in which the
 correspondence address is to be changed (except as provided for under Customer Number
 practice — see MPEP
 § 403 ).
 

 

 

 
 711.05 Letter of Abandonment Received After Application Is
 Allowed [R-08.2012]
 

 Receipt of a letter of abandonment while an application is allowed is
 acknowledged by the Publishing Division.
 

 An express abandonment arriving after the issue fee has been paid will
 not be accepted without a showing of one of the reasons indicated in 37 CFR 1.313(c) ,
 or else a showing under 37 CFR 1.183 justifying suspension
 of 37 CFR
 1.313 . See also MPEP § 711.01 .
 

 

 
 711.06 Abstracts, Abbreviatures, and Defensive Publications [R-10.2019]
 I. ABSTRACTS Abstracts were prepared and published in accordance with the Notice
 of January 25, 1949, 619 OG 258. Each abstract includes a summary of the disclosure
 of the abandoned application, and in applications having drawings, a figure of the
 drawing. The publication of such abstracts was discontinued in 1953.
 

 II. ABBREVIATURES Abbreviatures were prepared and published in accordance with the
 procedure indicated in the Notice of October 13, 1964, 808 OG 1. Each abbreviature
 contains a specific portion of the disclosure of the abandoned application,
 preferably a detailed representative claim, and, in applications having drawings, a
 figure of the drawing. The publication of such abbreviatures was discontinued in
 1965.
 

 III. DEFENSIVE PUBLICATIONS The Defensive Publication Program, which provided for the publication
 of the abstract of the technical disclosure of a pending application if the applicant
 waived his or her rights to an enforceable patent, was available between April 1968
 and May 8, 1985. The program was ended in view of the applicant’s ability to obtain a
 Statutory Invention Registration.
 

 An application was laid open for public inspection under the
 Defensive Publication Program and the applicant provisionally abandoned the
 application, retaining rights to an interference for a limited period of 5 years from
 the earliest effective U.S. filing date.
 

 The Defensive Publication Abstract and a selected figure of the
 drawing, if any, were published in the Official Gazette . Defensive
 Publication Search Copies, containing the defensive publication abstract and suitable
 drawings, if any, were provided for the application file, the Patent Search Room and
 the examiner’s search files. A defensive publication is not a patent or an
 application publication under 35 U.S.C. 122(b) ; it is a
 publication. Therefore, it is prior art only as of its publication date.
 

 The defensive publication application files are accessible by request
 to the File Information Unit (Record Room).
 

 Defensive Publication Number Distinct numbers are assigned to all Defensive Publications
 published December 16, 1969 through October 1980, for example.
 

 

 For Defensive Publications published on and after November 4,
 1980, a different numbering system is used.
 

 The revised numbering system is as follows:

 

 Defensive Publications are included in subclass lists and
 subscription orders. The distinct numbers are used for all official reference and
 document copy requirements.
 

 A conversion table from the application serial number to the
 distinct number for all Defensive Publications published before December 16, 1969
 appears at 869 OG 687.
 

 
 711.06(a) Citation and Use of Abstracts, Abbreviatures, and Defensive
 Publications as References [R-10.2019]
 

 It is important that abstracts, abbreviatures, and defensive
 publications (OG Defensive Publication and Defensive Publication Search Copy) be
 referred to as publications.
 

 These printed publications are cited as prior art under
 35
 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) or
 102(b) effective from the date of publication in the Official
 Gazette . See Ex parte Osmond, 191 USPQ 334 (Bd. App.
 1973) and Ex Parte Osmond , 191 USPQ 340 (Bd. App. 1976).
 

 An application or portion thereof from which an abstract,
 abbreviature or defensive publication has been prepared may be used as a reference
 under 35
 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) ,
 effective from the actual date of filing in the United States, only for evidence of
 prior knowledge of another.
 

 These publications may be used alone or in combination with other
 prior art in rejecting claims under 35 U.S.C. 102(a)(1) or
 103 or pre-AIA 35 U.S.C. 102 and
 103 .
 

 Defensive Publications are listed with “U.S. Patent Documents.”
 Abstracts and Abbreviatures are listed under “Other References” in the citation
 thereof as follows:
 

 
 (A) Abstracts and Abbreviatures
 
 Brown, (abstract or abbreviature) of Serial No. ........,
 filed ............., published in OG ........., on ........, (list
 classification).
 

 
 

 (B) Applications or designated portions thereof, abstracts,
 abbreviatures, and defensive publications
 
 Jones, Application Serial No. ........, filed
 ............., laid open to public inspection on ............... as noted
 at .......... OG (portion of application relied on), (list
 classification, if any).
 

 
 

 
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 701-Statutory Authority for Examination 

 702-Requisites of the Application 
 702.01-Obviously Informal Cases 

 
 

 703-[Reserved] 

 704-Search and Requirements for Information 
 704.01-Search 

 704.02-704.09-[Reserved] 

 704.10-Requirements for Information 

 704.11-What Information May Be Required 
 704.11(a)-Examples of Information Reasonably Required 

 704.11(b)-When May a Requirement for Information Be Made 

 
 

 704.12-Replies to a Requirement for Information 
 704.12(a)-Relationship of Requirement for Information to Duty of Disclosure 

 704.12(b)-What Constitutes a Complete Reply 

 704.12(c)-Treatment of an Incomplete Reply 

 
 

 704.13-Time Periods for Reply 

 704.14-Making a Requirement for Information 
 704.14(a)-Format of the Requirement 

 704.14(b)-Examiner’s Obligation Following Applicant’s Reply 

 704.14(c)-Petitions to Requirements Under 37 CFR 1.105 

 704.14(d)-Relationship to Information Disclosure Statements 

 
 

 
 

 705-Patentability Reports 
 705.01-Instructions re Patentability Reports 
 705.01(a)-Nature of P.R., Its Use and Disposal 

 705.01(b)-Sequence of Examination 

 705.01(c)-Counting and Recording P.R.s 

 705.01(d)-[Reserved] 

 705.01(e)-Limitation as to Use 

 705.01(f)-Interviews With Applicants 

 
 

 
 

 706-Rejection of Claims 
 706.01-Contrasted With Objections 

 706.02-Rejection on Prior Art 
 706.02(a)-[Reserved] 
 706.02(a)(1)-[Reserved] 

 706.02(a)(2)-[Reserved] 

 
 

 706.02(b)-[Reserved] 
 706.02(b)(1)-[Reserved] 

 706.02(b)(2)-[Reserved] 

 
 

 706.02(c)-[Reserved] 
 706.02(c)(1) -[Reserved] 

 706.02(c)(2)-[Reserved] 

 
 

 706.02(d)-[Reserved] 

 706.02(e)-[Reserved] 

 706.02(f)-[Reserved] 
 706.02(f)(1)-[Reserved] 

 706.02(f)(2)-[Reserved] 

 
 

 706.02(g)-[Reserved] 

 706.02(h)-[Reserved] 

 706.02(i)-[Reserved] 

 706.02(j)-[Reserved] 

 706.02(k)-[Reserved] 

 706.02(l)-[Reserved] 
 706.02(l)(1)-[Reserved] 

 706.02(l)(2)-[Reserved] 

 706.02(l)(3)-[Reserved] 

 
 

 706.02(m)-[Reserved] 

 706.02(n)-[Reserved] 

 
 

 706.03-Rejections Not Based on Prior Art 
 706.03(a)-[Reserved] 

 706.03(b)-[Reserved] 

 706.03(c)-[Reserved] 

 706.03(d)-[Reserved] 

 706.03(e)-[Reserved] 

 706.03(f) - 706.03(j)-[Reserved] 

 706.03(k)-[Reserved] 

 706.03(l) - 706.03(n)-[Reserved] 

 706.03(o)-[Reserved] 

 706.03(p) - 706.03(r)-[Reserved] 

 706.03(s)-[Reserved] 

 706.03(t)-[Reserved] 

 706.03(u)-[Reserved] 

 706.03(v)-[Reserved] 

 706.03(w)-[Reserved] 

 706.03(x)-[Reserved] 

 706.03(y)-[Reserved] 

 
 

 706.04-Rejection of Previously Allowed Claims 

 706.05-Rejection After Allowance of Application 

 706.06-Rejection of Claims Copied From Patent 

 706.07-Final Rejection 
 706.07(a)-Final Rejection, When Proper on Second Action 

 706.07(b)-Final Rejection, When Proper on First Action 

 706.07(c)-Final Rejection, Premature 

 706.07(d)-Final Rejection, Withdrawal of, Premature 

 706.07(e)-Withdrawal of Final Rejection, General 

 706.07(f)-Time for Reply to Final Rejection 

 706.07(g)-Transitional After-Final Practice 

 706.07(h)-Request for Continued Examination (RCE) Practice 

 
 

 
 

 707-Examiner’s Letter or Action 
 707.01-Primary Examiner Indicates Action for New Assistant 

 707.02-Applications Up for Third Action and 5-Year Applications 

 707.03‑707.04-[Reserved] 

 707.05-Citation of References 
 707.05(a)-Copies of Cited References 

 707.05(b)-Citation of Related Art and Information by Applicants 

 707.05(c)-Order of Listing 

 707.05(d)-Reference Cited in Subsequent Actions 

 707.05(e)-Data Used in Citing References 

 707.05(f)-Non-Patent Documents Having a Lengthy Citation 

 707.05(g)-Incorrect Citation of References 

 
 

 707.06-Citation of Decisions, Orders Memorandums, and Notices 

 707.07-Completeness and Clarity of Examiner’s Action 
 707.07(a)-Complete Action on Formal Matters 

 707.07(b) - 707.07(c)-[Reserved] 

 707.07(d)-Language To Be Used in Rejecting Claims 

 707.07(e)-Note All Outstanding Requirements 

 707.07(f)-Answer All Material Traversed 

 707.07(g)-Piecemeal Examination 

 707.07(h)-Notify of Inaccuracies in Amendment 

 707.07(i)-Each Claim To Be Mentioned in Each Office Action 

 707.07(j)-State When Claims Are Allowable 

 707.07(k)-Numbering Paragraphs 

 707.07(l)-Comment on Examples 

 
 

 707.08-Reviewing and Initialing by Assistant Examiner 

 707.09-Signing by Primary or Other Authorized Examiner 

 707.10-Entry 

 707.11-Date 

 707.12-Mailing 

 707.13-Returned Office Action 

 
 

 708-Order of Examination 
 708.01-List of Special Cases 

 708.02-Petition To Make Special 
 708.02(a)-Accelerated Examination 

 708.02(b)-Prioritized Examination 

 708.02(c)-Patent Prosecution Highway Program 

 
 

 708.03-Examiner Tenders Resignation 

 
 

 709-Suspension of Action 
 709.01-Overlapping Applications by Same Applicant or Owned by Same Assignee 

 
 

 710-Period for Reply 
 710.01-Statutory Period 
 710.01(a)-Statutory Period, How Computed 

 
 

 710.02-Shortened Statutory Period and Time Limit Actions Computed 
 710.02(a)-[Reserved] 

 710.02(b)-Shortened Statutory Period: Situations in Which Used 

 710.02(c)-Specified Time Limits: Situations in Which Used 

 710.02(d)-Difference Between Shortened Statutory Periods for Reply and Specified Time Limits 

 710.02(e)-Extension of Time 

 
 

 710.03-[Reserved] 

 710.04-Two Periods Running 
 710.04(a)-Copying Patent Claims 

 
 

 710.05-Period Ending on Saturday, Sunday, or a Federal Holiday 

 710.06-Situations When Reply Period Is Reset or Restarted 

 
 

 711-Abandonment of Patent Application 
 711.01-Express or Formal Abandonment 

 711.02-Failure To Take Required Action During Statutory Period 
 711.02(a)-Insufficiency of Reply 

 711.02(b)-Special Situations Involving Abandonment 

 711.02(c)-Termination of Proceedings 

 
 

 711.03-Reconsideration of Holding of Abandonment; Revival 
 711.03(a)-Holding Based on Insufficiency of Reply 

 711.03(b)-Holding Based on Failure To Reply Within Period 

 711.03(c)-Petitions Relating to Abandonment 

 711.03(d)-Examiner’s Statement on Petition To Set Aside Examiner’s Holding 

 
 

 711.04-Public Access to Abandoned Applications 
 711.04(a)-Date of Abandonment 

 711.04(b)-Ordering of Patented and Abandoned Files 

 711.04(c)-Notifying Applicants of Abandonment 

 
 

 711.05-Letter of Abandonment Received After Application Is Allowed 

 711.06-Abstracts, Abbreviatures, and Defensive Publications 
 711.06(a)-Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References 

 
 

 
 

 712-[Reserved] 

 713-Interviews 
 713.01-General Policy, How Conducted 

 713.02-Interviews Prior to First Official Action 

 713.03-Interview for “Sounding Out” Examiner Not Permitted 

 713.04-Substance of Interview Must Be Made of Record 

 713.05-Interviews Prohibited or Granted, Special Situations 

 713.06-No Inter Partes Questions Discussed Ex Parte 

 713.07-Exposure of Other Cases 

 713.08-Demonstration, Exhibits, Models 

 713.09-Interviews Between Final Rejection and Notice of Appeal 

 713.10-Interview Preceding Filing Amendment Under 37 CFR 1.312 

 
 

 714-Amendments, Applicant’s Action 
 714.01-Signatures to Amendments 
 714.01(a)-Unsigned or Improperly Signed Amendment 

 714.01(b)-[Reserved] 

 714.01(c)-Signed by Attorney or Agent Not of Record 

 714.01(d)-Amendment Signed by Applicant but Not by Attorney or Agent of Record 

 714.01(e)-Amendments Before First Office Action 

 
 

 714.02-Must Be Fully Responsive 

 714.03-Amendments Not Fully Responsive, Action To Be Taken 
 714.03(a)-Supplemental Amendment 

 
 

 714.04-Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty 

 714.05-Examiner Should Immediately Review 

 714.06-[Reserved] 

 714.07-Amendments Not in Permanent Ink 

 714.08-714.09-[Reserved] 

 714.10-Claims Added in Excess of Claims Previously Paid For 

 714.11-Amendment Filed During Interference Proceedings 

 714.12-Amendments and Other Replies After Final Rejection or Action 

 714.13-Amendments and Other Replies After Final Rejection or Action, Procedure Followed 

 714.14-Amendments After Allowance of All Claims 

 714.15-Amendment Received in Technology Center After Mailing of Notice of Allowance 

 714.16-Amendment After Notice of Allowance, 37 CFR 1.312 
 714.16(a)-Amendments Under 37 CFR 1.312, Copied Patent Claims 

 714.16(b)-Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 41.208 

 714.16(c)-Amendments Under 37 CFR 1.312, Additional Claims 

 714.16(d)-Amendments Under 37 CFR 1.312, Handling 

 714.16(e)-Amendments Under 37 CFR 1.312, Entry in Part 

 
 

 714.17-Amendment Filed After the Period for Reply Has Expired 

 714.18-Entry of Amendments 

 714.19-List of Amendments, Entry Denied 

 714.20-List of Amendments Entered in Part 

 714.21-Amendments Inadvertently Entered, No Legal Effect 

 714.22-714.24-[Reserved] 

 714.25-Discourtesy of Applicant or Attorney 

 
 

 715-Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a) 
 715.01-37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits 
 715.01(a)-Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor 

 715.01(b)-Reference and Application Have Common Assignee 

 715.01(c)-Reference Is Publication of Inventor’s Own Invention 

 715.01(d)-Activities Applied Against the Claims 

 
 

 715.02-How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims 

 715.03-Genus-Species, Practice Relative to Cases Where Predictability Is in Question 

 715.04-Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations 

 715.05-U.S. Patent or Application Publication Claiming Same Invention 

 715.06-[Reserved] 

 715.07-Facts and Documentary Evidence 
 715.07(a)-Diligence 

 715.07(b)-Interference Testimony Sometimes Used 

 715.07(c)-Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country 

 715.07(d)-Disposition of Exhibits 

 
 

 715.08-Decided by Primary Examiner 

 715.09-Timely Presentation 

 715.10-Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode 

 
 

 716-Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections 
 716.01-Generally Applicable Criteria 
 716.01(a)-Objective Evidence of Nonobviousness 

 716.01(b)-Nexus Requirement and Evidence of Nonobviousness 

 716.01(c)-Probative Value of Objective Evidence 

 716.01(d)-Weighing Objective Evidence 

 
 

 716.02-Allegations of Unexpected Results 
 716.02(a)-Evidence Must Show Unexpected Results 

 716.02(b)-Burden on Applicant 

 716.02(c)-Weighing Evidence of Expected and Unexpected Results 

 716.02(d)-Unexpected Results Commensurate in Scope With Claimed Invention 

 716.02(e)-Comparison With Closest Prior Art 

 716.02(f)-Advantages Disclosed or Inherent 

 716.02(g)-[Reserved] 

 
 

 716.03-Commercial Success 
 716.03(a)-Commercial Success Commensurate in Scope With Claimed Invention 

 716.03(b)-Commercial Success Derived From Claimed Invention 

 
 

 716.04-Long-Felt Need and Failure of Others 

 716.05-Skepticism of Experts 

 716.06-Copying 

 716.07-Inoperability of References 

 716.08-Utility and Operability of Applicant’s Disclosure 

 716.09-Sufficiency of Disclosure 

 716.10-Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103 

 
 

 717-Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) 
 717.01-Affidavit or Declaration Under 37 CFR 1.130 
 717.01(a) -Declarations or Affidavits under 37 CFR 1.130(a) – Attribution 
 717.01(a)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(a) 

 
 

 717.01(b) -Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure 
 717.01(b)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(b) 

 717.01(b)(2) -Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated
 Prior Public Disclosure 

 
 

 717.01(c) -Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations 

 717.01(d)-U.S. Patent or Application Publication Claiming Same Invention 

 717.01(e) -Passed Upon (or Decided by) by Primary Examiner 

 717.01(f) -Seasonable (or Timely) Presentation 

 
 

 717.02 -Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C) 
 717.02(a) -Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C) 

 717.02(b) -Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked 

 717.02(c) -Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 717.02(d) -Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 
 

 
 

 718-Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c) 

 719-File Wrapper 
 719.01-Papers in Image File Wrapper 

 719.02-Residence of Inventor Changed 

 719.03-Classification During Examination 

 719.04-Index of Claims 

 719.05-Field of Search 

 
 

 720-Public Use Proceedings 

 721‑723-[Reserved] 

 724-Trade Secret, Proprietary, and Protective Order Materials 
 724.01-Completeness of the Patent File Wrapper 

 724.02-Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials 

 724.03-Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02 

 724.04-Office Treatment and Handling of Materials Submitted Under MPEP § 724.02 
 724.04(a)-Materials Submitted in an Application Covered by 35 U.S.C. 122 

 724.04(b)-Materials Submitted in Reissue Applications Open to the Public Under 37 CFR 1.11(b) 

 724.04(c)-Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d) 

 
 

 724.05-Petition To Expunge Information or Copy of Papers in Application File 

 724.06-Handling of Petitions To Expunge Information or Copy of Papers in Application File 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:44