Can You Revive Your Abandoned Patent Application? – Petitions to Revive

Failure to take certain required actions can result in the abandonment of a U.S. patent application or issued patent.  For example, if an office action is not replied to within six months of issuance or if an issue fee is not paid within three months of the issuance of a Notice of Allowance, a patent application will go abandoned.  If a maintenance fee is not timely paid for an issued patent, it will go abandoned.  The question that sometimes then arises is whether the patent or application can be revived.

The answer is “maybe,” and the circumstances surrounding the abandonment need to be carefully vetted.  Otherwise, the subject patent or a patent issuing from the subject application may be unenforceable due to inequitable conduct.  In particular, it is important to sensitize clients to this issue so that they are aware of the seriousness of the statements that they make (or that counsel makes on their behalf) to the Patent Office in seeking revival.

There are two types of “petitions to revive” that can be used to revive an abandoned U.S. patent application or issued patent.  The first type of petition is a petition to revive for “unavoidable” abandonment.  The second type of petition is a petition to revive for “unintentional” abandonment.  A petition to revive for unavoidable abandonment requires a stringent showing that the abandonment could not have been avoided, which is far more difficult than the showing required for a petition to revive for unintentional abandonment.  In addition, the USPTO fee for a petition to revive for unavoidable abandonment is one-third of that for a petition to revive for unintentional abandonment.

Both petitions require that the applicant submit the response that was due at the time of abandonment (e.g., the office action response or issue fee payment).  The showing required to establish that abandonment was “unavoidable” is so stringent that many times it is not worth the time and effort (or attorney’s fees) required to attempt it.  According to the Manual of Patent Examining Procedure (MPEP):

A showing of unavoidable delay will (in addition to the above) require: (1) evidence concerning the procedures in place that should have avoided the error resulting in the delay; (2) evidence concerning the training and experience of the persons responsible for the error; and (3) copies of any applicable docketing records to show that the error was in fact the cause of the delay.

MPEP Section 711.03(c)II(C).  The MPEP further notes that petitions to revive for unavoidable abandonment are “significantly less likely to be grantable” than those for unintentional abandonment.  Id. 

In sharp contrast, the Patent Office rarely requires any sort of factual showing for a petition to revive for unintentional abandonment:

While the Office reserves the authority to require further information concerning the cause of abandonment and delay in filing a petition to revive, the Office 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(b) was unintentional” without requiring further information in the vast majority of petitions under 37 CFR 1.137(b).

Id.  Clients often are inclined to take a liberal view of the term “unintentional,” and may consider it only from the perspective of whether they currently intend for the application or patent to be abandoned, which is never the case when revival is being sought.  Although the Patent Office will not necessarily ask about it, the facts surrounding the abandonment must indicate that it was truly “unintentional.”  Otherwise, the petition may be “materially false.”  The MPEP points out several situations where an applicant decides not to respond to an office action or pay a maintenance fee which result in an abandonment that is not properly considered “unintentional”:

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.

Id.   Whether an abandonment is truly intentional will typically not be considered by the Patent Office.  Instead, the issue will arise if a patent is obtained (or revived) and an infringement suit is filed based on it.  At that point, you should expect an accused infringer to seek discovery of the circumstances that led to the abandonment.  If the evidence indicates that the abandonment was actually intentional, the infringer will likely argue that the patent should be held unenforceable for inequitable conduct.  Keep in mind that the entire delay between the due date of the required reply (e.g., the office action deadline or maintenance fee deadline) must have been unintentional.

An example of what can occur if a petition to revive is not properly vetted is provided by Network Signatures, Inc. v. State Farm Mutual Insurance Co. (Case No. 11-00982- JVS, C.D. Cal. 2012).  In Network Signatures the U.S. District Court for the Central District of California held a patent unenforceable for inequitable conduct based on an improper petition to revive for unintentional abandonment.  The patent-in-suit went abandoned due to a delayed maintenance fee payment.  Discovery in the case showed that the decision not to pay the maintenance fee was deliberate and that at the time the petition to revive was filed, there was no evidence to suggest that a mistake had been made in deciding not to pay the maintenance fee.  A copy of the decision can be obtained here.

Cases like Network Signatures illustrate why the decision to seek revival of a patent or patent application should not be made lightly.  Without proper guidance, clients may readily attest that an abandonment was “unintentional” even though the circumstances do not warrant it.  It is indeed a pyrrhic victory to revive a lapsed patent or patent application only to find out that enforcement is not possible because of an improper petition to revive.  Similarly, when performing due diligence reviews of patent portfolios, it may be important to investigate any petitions to revive that were filed for patents being purchased to ensure that the patents will be enforceable.