Instructions for Responding to a Notice of Abandonment
Respond to the Notice of Abandonment by filing one of the
following petitions:
1. Petition To Withdraw Holding of Abandonment (See Manual of Patent Examining Procedure 711.03(c) I) and 37 CFR
§ 1.181). No fee required.
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. 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 may be dismissed as
untimely under 37 CFR § 1.181(f).
For a petition to be granted, the evidence must be sufficient according
to one of the following standards:
- 37 CFR § 1.8(b) Certificate of Mailing
- 37 CFR § 1.10 “Express Mail” mailing
- MPEP 503 Postcard Receipt as Prima Facie Evidence
Petition To Withdraw Holding Of Abandonment should be addressed
as follows:
Mail Stop: Issue Fee
Commissioner For Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Or faxed to: 571.273.8300
2. Petition To Withdraw Holding Of Abandonment Based On
Failure To Receive Office Action (See Manual
of Patent Examining Procedure 711.03(c) II). No fee required.
Where an applicant contends that the original Notice of Allowance
and Issue Fee Due was never received. If adequately supported, the
Office may grant the petition and re-mail the Office action. The
showing required establishing non-receipt of an Office communication
must include a statement from the practitioner stating that the
Office communication was not received and attesting to the fact
that a search of the file jacket and docket records indicates that
the Office communication was not received. A copy of the docket
record where the non-received Office would have been entered had
it been received and docketed must be attached to and referenced
in practitioner’s statement.
Petition should be addressed to the Technology Center handling
the application as follows:
Commissioner for Patents
(Mark attention of a particular office or individual)
P.O. Box 1450
Alexandria, VA 22313-1450
Or faxed to: 571.273.8300
3. Petition To Revive An Abandoned Application (See Manual
of Patent Examining Procedure, 711.03(c) III).
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 (a) unavoidable
or 37 CFR § 1.137(b) unintentionally (accompanied by the appropriate
petition fee) is necessary to revive the abandoned application. The text of the rules is available at: http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf [PDF].
Petitions under 37 CFR § 1.137 should be addressed as follows:
Mail Stop Petitions
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Or faxed to: 571.273.8300
4. Petition
For Revival Of An Application For Patent Abandoned Unavoidably Under
37 CFR § 1.137(a) [PDF], PTO/SB/61
and Petition
For Revival Of An Application For Patent Abandoned Unintentionally
Under 37 CFR 1.137(b) [PDF], PTO/SB/64,
forms are available at USPTO web site:
http://www.uspto.gov/web/forms/index.html
Note: Abandonment takes place by operation of
law for failure to reply to an Office action or to timely pay the
issue fee, not by operation of the mailing of a Notice of Abandonment.
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