Abandonment (Not Intended!)

Failure to respond to an office action, pay an issue fee or maintenance fee within the statutory period will generally result in the application becoming abandoned. The applicant must file a petition to revive the application under 37 CFR 1.137 or 1.378 in such situations.
Prior to a rule change on Oct. 21, 2013, there were two types of petitions: the unavoidable standard of 1.137(a) and the unintentional standard of 1.137(b). The amount of difference between the two words “unavoidable” and “unintentional” on first glance may seem low. However, there was a world of difference between these two standards.
Both types of petitions required the required reply, a terminal disclaimer if necessary and a petition fee. However, the unintentional standard merely requires 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(b) was unintentional. On the other hand, the unavoidable standard required a statement of fact establishing that the delay in filing the reply was unavoidable, as well as inadvertent. This statement had to include: (1) a satisfactory showing that the cause of the delay resulting in failure to reply in timely fashion to the Office action was unavoidable; and (2) a satisfactory showing that the cause of any delay during the time period between abandonment and filing of the petition to revive was also unavoidable.

In reality, the unavoidable standard was nearly impossible to satisfy except for situations in which a docketing error occurred in a law firm. I have heard of decisions in which an inventor’s house being destroyed by a fire was not sufficient to satisfy this standard.  Further, I have heard that the recent tsunami in Japan may be the only type of event that would satisfy this standard.

So, why did anyone ever choose the unavoidable standard? Although the petition fee was lower (620 for unavoidable vs 1700 for unintentional) this was not the reason. If the petition to revive was submitted more than 2 years from the date of abandonment, the unavoidable standard was the applicant’s only choice.

Thankfully, the new rule which took effect on Dec. 18, 2013 eliminated the unavoidable standard as well as the 2 year limit. Now, the applicants merely have to state that the entire delay in filing the required reply (or pay the fee) from the due date until the filing of a grantable petition pursuant to this section was unintentional. Of course the applicants must be honest with the PTO. Further, the PTO still may require additional information where there is a question whether the delay was unintentional.

Strangely, an applicant may find themselves in a situation in which it is cheaper to let an application become abandoned, and pay the petition fee rather than pay the extension fee. For example, extension of fees within the fourth and fifth months are $2200 and $3000. The petition fee, on the other hand, is $1700. The office of petitions has taken the position that since the petition to revive and the response/or required fee are being submitted after the maximum time period, no extension fee can be paid. Of course it would not be a wise course of action to intentionally let a case become abandoned just to pay a lower fee.  This would not be consistent with the statement of unintentionally abandoned.  Further, I doubt any registered patent practitioner will go along with such a scheme. I certainly would not.

It will be interesting to see how the PTO will treat petitions to revive cases that have been abandoned for years under the unintentional standard.