Petitions Practice Within
the USPTO on Patent Matters
This page provides some of the basic principles of
petitions practice. As with
all aspects of patent prosecution, there are laws and regulations that
must be followed by employees of the USPTO in the area of petitions. The
USPTO recommends that inventors and applicants unfamiliar with the patent
laws, rules, and USPTO procedures, consult a registered patent attorney
or agent to conduct the prosecution of their patent applications. Although
the USPTO may not recommend a particular patent attorney or agent, you
can select from a
list of patent attorneys and agents registered to practice
before the USPTO.
The links provided in this
text will take you to a page on the USPTO website where you can
either view or download the cited law, rule,
or Manual of Patent Examining Procedure (MPEP)
section. At
this time it is not possible to directly link to a specific section
for all citations of Laws (35 U.S.C.) or Rules
(37 C.F.R.). Since
all such links take you to the same location, just click on any
similar linked citation. After you view the citation
in which you are interested, use your browser's [BACK] button
to return
to this page.
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For those patent matters that are not subject to an appeal
to the Board of Patent Appeals and Interferences and the federal courts,
supervisory and administrative review is conducted, in part, by the rendering
of decisions on petitions. The Director of the USPTO (formerly
the Commissioner) has delegated to appropriate USPTO
officials the authority
to decide certain petitions. The various delegations are
set forth in Chapter 1000 of the MPEP. The
more common types of petitions handled in the Office of Petitions are
identified below and the requirements
which must be met for the granting of a petition are discussed. Where
appropriate, links to other information are provided.
REQUIREMENTS OF A PETITION In general each petition has five (5) requirements. These requirements
are as follows:
1. The petition must be in writing,
37 CFR 1.2. |
All business with the USPTO is transacted in writing. The petition
should be directed to the USPTO official delegated the
authority to decide that petition. See MPEP Chapter 1000. Since
different
matters may be considered by different branches or sections
of the USPTO,
each distinct subject, inquiry or request should be contained
in a separate paper to avoid confusion and delay in answering
papers dealing with different subjects. 37 CFR
1.4(c).
|
2. The petition must contain a statement
of facts involved, the point(s) to be
reviewed and the action requested, 37 CFR 1.181(b). |
The care and completeness with which petitions are drafted can
clearly influence the decision rendered. 37 CFR 1.181(b) sets
forth the general requirements for the content of a petition.
The petition must contain a statement of the facts involved,
the point(s)
to be reviewed and the action or relief requested. The
petition submitted should be as complete as possible and
any evidence
necessary should
be submitted. Any error(s) in a requirement or action on
the part of the USPTO should be clearly set forth with
the reasons
why such
requirement or action is considered improper.
|
3. The petition must be accompanied by
a fee, if required, in order to avoid the petition being
summarily dismissed, 37 CFR 1.181(d). |
To avoid a petition being summarily dismissed for lack or insufficient
fee, petitioner should make certain that the correct petition fee
is submitted along with the petition. See the updated fee sheet for
guidance.
|
4. The petition must be timely filed,
as required in 37 CFR 1.181(f), or as required in a specific statute
or regulation. |
Generally a petition not filed within two (2) months from the
action complained of may be dismissed as untimely. Further,
the mere filing of a petition will not stay the period
for replying to an examiner's action that may be running
against
an application
or act as a stay of other proceedings. 37 CFR
1.181(f).
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5. The petition must comply with any specific
requirements as provided by statute, regulation or USPTO
policy. |
Care should be taken to review the applicable statute, regulation
or USPTO policy to determine if there are other requirements that
need to be met in submitting the petition.
|
Specific Types of Petitions Treated in the Office of Petitions
Inventor Unavailable • Correct Filing Date • Abandonment
or Lapse • Maintenance Fee
.
A. Petitions to Permit Filing a Patent Application When An Inventor
Refuses or Cannot Be Reached to sign the Oath or Declaration See MPEP 409.03 Where a joint inventor refuses to join in an application for patent
or cannot be found or reached after diligent effort, a petition under 37 CFR 1.47(a) may
be filed to permit acceptance of an application filed by the
other inventor(s)
on his or her behalf and that of the non-signing inventor. The submission
must set forth the diligent efforts made to contact the non-signing inventor,
the required fee and the last known address of the non-signing inventor.
Similarly, whenever all of the inventors or the sole inventor refuse(s)
to execute an application for patent, or cannot be found or reached after
diligent effort, a person to whom the inventors have assigned or agreed
in writing to assign the invention or who otherwise shows sufficient
proprietary interest in the matter justifying such action may file an
application for patent on behalf of the non-signing inventor(s). A petition
to permit filing under 37 CFR 1.47(b) must
be submitted with the oath or declaration executed by the Rule 47 applicant
on behalf of the non-signing inventor(s).
Either of the above petitions must include:
1. Proof that the non-signing inventors were
presented with
the application papers and refused to sign the oath or declaration
or that the non-signing inventor(s) could not be found or reached
after diligent effort;
2. The required fee; and
3. The last known address of the non-signing inventor(s).
Additionally, when filing under 37 CFR 1.47(b) petitioner
must provide proof of proprietary interest and state that the filing of
the application for patent is necessary to preserve the rights of the parties
or to prevent irreparable damage. Proof of proprietary interest may be
provided with a copy of an assignment, a written
agreement to assign or
a memorandum of law establishing that a court of competent jurisdiction
would award title of the invention to the Rule 47 applicant.
In a continuation or divisional application, a copy of an oath
or declaration from a prior application may be filed. If a petition under 37 CFR 1.47 was
granted in the prior application and the non-signing inventor(s) did
not later join in the application, a copy of the decision granting
status under 37 CFR 1.47 in
the prior application must also be filed.
B. Petitions to Obtain or Correct a Filing Date See MPEP 600
37 CFR 1.53 provides procedures for filing patent applications.
All applications filed under 37 CFR 1.53(b) require
a specification, including at least one claim, drawings,
if necessary to understand the claimed subject matter, an oath or declaration, and
the required filing fee. Before an application is examined to determine
patentability, the application, by law, must be complete so as to receive
an official filing date. If the application is complete, the applicant
will receive a filing date receipt. Failure to file a complete application
will result in the USPTO forwarding a communication to the applicant
noting that errors/problems exist in the application filing which require
correction.
When filing an application for patent, applicant is encouraged to submit
a self addressed postcard with the application papers. See MPEP
503. The
postcard should indicate what is being submitted to the USPTO. For example
only, the postcard should state "transmitted herewith is an application
for patent for John J. Johns, including 5 pages of specification, 6 claims,
4 sheets of drawings having 9 figures therein, a signed declaration,
and a check in the amount of $_____for the statutory filing fee." (Be
sure to check the latest fee
sheet for the correct amount of fees to submit.) The postcard
will be date stamped by the USPTO mailroom and will serve as proof of
what was submitted by applicant. It is important that the postcard
itemize all of the components of an application. If
the postcard does not itemize each of the components of the application,
it
will not serve as evidence that any component which was not itemized
was received by the USPTO.
Once the official filing receipt for the patent application is received,
a review of the filing receipt should be made to ascertain whether the
filing date and other application data are correct. If the information
there on is incorrect, applicant should promptly contact the
USPTO. Keep
in mind that the filing date receipt is not an indication that
a patent will issue. It merely signifies that a complete application has been
filed and that the application will be forwarded to a patent examiner
for examination purposes.
To provide applicants with a more detailed recitation of the typical
types of errors committed in filing applications and how to rectify such
errors, the following topics and discussion relating thereto is provided.
1. Common Errors When Filing Applications
- The application is not accompanied by a return postcard
listing the parts of the application in sufficient
detail to serve as evidence of the exact papers which were filed.
- The application is not accompanied by the correct filing
fee or
the appropriate declaration for application (see for
example, http://www.uspto.gov/web/forms/sb0001.pdf).
- The applicant wants the date the application was mailed to the
USPTO as the application filing date, but fails to use the "Express
Mail Post
Office to Addressee" service of the U.S. Postal
Service to deliver the
application. Only the "Express Mail Post Office to Addressee" service
of the US Postal Service can be used
to obtain
the date of mailing as an application
filing date.
- The applicant fails to retain a complete copy of the application.
- The nonprovisional application is filed without a claim.
- The copy of the application forwarded to the USPTO is missing one
or more pages of the specification or drawings.
- The application is filed without a correspondence address.
2. Things to Remember
- The patent application
process is complex. The USPTO cannot assist in the preparation of
application papers. If you are ready to apply for
a patent, we strongly advise you to contact a registered
patent
attorney
or agent to assist you.
- There are several types of patent application, for example, utility,
design, provisional, nonprovisional, each of
which requires different filing fee and has a different legal effect.
- The application must be accompanied by a request
not to publish the application, if pre-patent grant publication
is not desired.
3. Remedy to Correct Errors
The usual remedy to correct a 37 CFR 1.53 filing error is to file a
petition directed to the Office of Petitions explaining the delay in
submitting the omitted item . Any missing items should accompany the
petition and should be accompanied by the fee required by 37 CFR 1.17(h).
Remember, copendency cannot be waived as it is a statutory requirement. Therefore,
applicant must petition to revive the
parent application under 37 CFR 1.137 to obtain copendency if the parent
application became abandoned
prior to filing of the continuing application.
4a. Express Mail Errors
Typical Errors committed by applicants who use the provisions of
37 CFR 1.10 ("Express Mail" procedures) are described below.
- Problems arise when correspondence is deposited in
an Express Mail drop box late in the day after the
last pick-up has occurred. The "Date-In" on
the label is the date the Post Office receives the correspondence. Applicants
should deposit the correspondence directly with an employee of the US Postal
Service at the Post Office window when possible and get a legible copy
of the "Express Mail" mailing label with the "Date-In" clearly marked. Applicants
should then check the "Date-In" on the receipt. The "Date-In" must
be entered by the Post Office, not applicant (See MPEP 513);
- Applicants file separate papers or different applications
in the same mailing envelope which do not each
have the Express Mail number thereon;
- The proper postage has not been provided.
- The Express Mail label is not properly addressed.
4b. Remedy to Correct Errors
Express Mail correspondence received in the USPTO, but
given a date other than "date-in" on the receipt.
In accordance with 37 CFR 1.10(c),
one may file a petition to have an earlier
filing date accorded, provided that:
(1) The petition is filed promptly after the person becomes
aware that the Office has accorded, or will accord, a filing date other
than the USPS deposit date;
(2) The number of the "Express Mail" mailing label was
placed on the
paper(s) or fee(s) that constitute
the correspondence prior to the original mailing by "Express Mail;" and
(3) The petition includes a true copy of the "Express
Mail" mailing label showing the "date-in," and
of any other official notation
by the USPS relied
upon
to show the date
of deposit.
Express Mail correspondence given incorrect date or no date
by the USPS.
In accordance with 37 CFR 1.10(d), one may file a petition to accord
the correspondence a filing date as of the date
the correspondence is shown to have been deposited with the USPS, provided
that:
(1) The petition is filed promptly after the person becomes
aware that the Office has accorded, or will accord, a filing date based
upon an incorrect entry by the USPS;
(2) The number of the "Express Mail" mailing label was
placed on the
paper(s) or fee(s) that constitute the
correspondence prior to the original mailing by "Express Mail";
and
(3) The petition includes a showing which establishes, to the
satisfaction of the Commissioner, that the
requested filing date was the date
the correspondence was deposited in "Express
Mail Post Office to Addressee" service
prior to the last scheduled pickup for that day. Any showing pursuant
to this paragraph must be corroborated by evidence from the USPS or that
came into being after deposit and within one business day of the deposit
of the correspondence in the "Express Mail Post Office to Addressee" service
of the USPS.
Express Mail correspondence not received in the USPTO.
In accordance with 37 CFR 1.10(e), one may file a petition to have
such correspondence considered as having
been filed in the USPTO on the USPS
deposit date, provided that:
(1) The petition is filed promptly after the person becomes
aware that the Office has no evidence of receipt of the correspondence;
(2) The number of the "Express Mail" mailing label was
placed on the
paper(s) or fee(s) that constitute the correspondence
prior to the original mailing by "Express Mail;"
(3) The petition includes a copy of the originally deposited paper(s)
or fee(s) that constitute the correspondence
showing the number of the "Express
Mail" mailing label thereon, a copy of any returned postcard
receipt,
a copy of the "Express Mail" mailing label showing
the "date-in," a copy
of any other official notation by the
USPS relied upon to show the date
of deposit, and, if the requested filing date
is a date other than the "date-in" on
the "Express Mail" mailing label or other official notation entered by
the USPS, a showing pursuant to paragraph B(3), above, that the requested
filing date was the date the correspondence was deposited in "Express
Mail Post Office to Addressee" service prior
to the last scheduled pickup for that day;
and
(4) The petition includes a statement which establishes, to the
satisfaction of the Commissioner, the original
deposit of the correspondence, and that the copies of the correspondence,
the copy
of the "Express Mail" mailing label, the copy of any returned postcard
receipt, and any official
notation entered by the USPS are true
copies of the originally mailed
correspondence and original " Express Mail" mailing
label, returned postcard receipt, and official
notation
entered
by the USPS.
5a. Missing Drawing(s)/Figure(s) or Omitted Specification
Page(s)
(1) A drawing is required for a filing
date where it is necessary for the understanding
of the subject matter sought to be patented ( 35 U.S.C.
111 and 113, 1st sentence), or if described in the specification (MPEP, 506,
601.01 and 608.02);
(2) Check the application before filing to ensure that
any drawing referred to in the
specification is present;
(3) Check the drawings to ensure that each figure is properly labeled;
(4) Number each page of the specification in consecutive
order and review the application
for completeness before filing;
(5) A postcard receipt should contain a specific
itemization of all the items being submitted
(MPEP 503). Therefore, the post card receipt should specifically
itemize
the
number of pages of the specification, the number of pages of
the declaration and the number
of sheets of drawings (including
the number of
figures contained
thereon) being submitted. (Note:
hundreds of
postcard receipts each year are never returned to counsel
because correct postage or return
address is lacking);
(6) The best evidence of what the Office received is a
properly itemized postcard receipt
stamped with the mail room date.
5b. Remedy to Correct Errors
If an application is filed without all the pages of the specification
or without all of the figures of the drawings, the Office
will still accord a filing date to any application that contains
something that
can be construed as a written description, any necessary
drawing,
and, in a nonprovisional application, at least one
claim.
The Office will
mail a notice to applicant indicating that the application
has been accorded a filing date, but is missing pages of the specification
or figures of drawings. The mailing of the notice will permit applicant
to either: (1) promptly establish prior receipt in the USPTO the pages
at issue (generally by way of a date-stamped postcard receipt); or
(2) promptly submit the omitted page(s) and accept the date of submission
as the application filing date. See MPEP 601.01 (d).
An applicant asserting that the page(s) was in fact deposited
in the Office with the application papers must promptly
file a petition under 37 CFR 1.53(e) (and the petition fee under
37 CFR 1.17(h) which will be refunded if it is determined that
the page(s) was in fact received by the USPTO) with evidence
of such deposit.
Applicants desiring to submit the omitted page(s) and accept
the date of submission as the application filing
date must promptly submit the omitted pages or drawings and include
an oath
or
declaration
in compliance with 37 CFR
1.63 and 1.64 referring to such page(s) and a
petition under 37 CFR
1.182 (with the petition fee under 37 CFR 1.17(h))
requesting the later filing date.
Failure to promptly (within an extendable two month period)
file a petition under 37 CFR 1.53(e)
or 1.182 in response to such notice will result in the Office treating
the
application as including only those papers originally deposited. Amendment
of the specification is required in
a nonprovisional application to renumber the pages consecutively
and to cancel any incomplete
sentences.
Petitions to obtain or correct a
filing date should be directed
to the attention of the Office of Petitions and must
include the petition fee or an authorization to charge the petition
fee to a deposit account. If the petition alleges that no
defect exists, a request for refund of the petition fee
maybe included
in the petition. C. Petitions Relating to Abandoned Applications or Lapsed Patents See MPEP 711.03
(c)
Revival
37 CFR 1.137 covers petitions to revive applications abandoned for
failure to prosecute, or failure to pay the required issue fee and
petitions
to revive a lapsed patent for failure to pay any balance of the issue
fee due. There are two kinds of petitions to revive identified
in this regulation. 37 CFR 1.137(a) addresses revival based upon
an unavoidable delay in prosecution or payment of the required issue
fee, whereas 37
CFR 1.137(b) addresses revival based upon an unintentional delay
in prosecution or payment of the required issue fee.
(a) Requirements for a petition under 37 CFR 1.137(a) (delay
was unavoidable): >>obtain
form
(1) Required reply, unless previously filed.
(2) Petition fee set forth in 37 CFR 1.17(l).
(3) Showing that the entire delay in filing the required reply
from the due date for the reply until the filing of a grantable petition
was unavoidable.
(4) Any terminal disclaimer under 37 CFR 1.321 (with fee; 37 CFR
1.20(d)) dedicating to the public a terminal part of the term of any
patent granted thereon equivalent to the period of abandonment of the
application if the application is a design application (regardless of
filing date) or a utility application filed before June 8, 1995, or a
plant patent application filed before June 8, 1995. The terminal disclaimer
provisions of this paragraph do not apply to lapsed patents.
(b) Requirements for a petition under 37 CFR 1.137(b) (delay was
unintentional): >>obtain form
(1) Required reply, unless previously filed.
(2) Petition fee set forth in 37 CFR 1.17(m).
(3) 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 was unintentional.
No showing of reasons for delay is necessary. However, the Commissioner
may require additional information where there is a question whether the delay
was unintentional.
(4) Any terminal disclaimer under 37 CFR 1.321 (with
fee; 37 CFR 1.20(d)) dedicating to the public a terminal part of the term of
any patent granted thereon equivalent to the period of abandonment of the application
if the application is a design application (regardless of filing date) or a
utility application filed before June 8,1995 or a plant patent application
filed before June 8, 1995. The terminal disclaimer provisions of this paragraph
do not apply to lapsed patents.
Typical
Problems Found in 37 CFR 1.137 Petitions (1) Statements
are filed by a petitioner who was not the party responsible for prosecuting the
application at the time of the abandonment. Therefore, the petitioner is
not in a position to know whether the delay was unavoidable or unintentional.
(2) The petitioner attributes fault for the delay in filing
a reply to an employee such as a secretary, clerk or courier without
submitting a statement from that person.
(3) Petitions are not signed prior to being sent by facsimile
transmission or other delivery means to the Office.
(4) Petitioner intentionally delays the filing of a petition
after first becoming aware of the abandonment. While questions are
not normally raised when petitions under the unintentional standard
are filed within one year of the date of abandonment, it is not appropriate
to intentionally delay the filing of a petition after becoming aware
of the abandoned status of the application.
(5) Petitioner does not submit a proper reply to an outstanding
office action with the petition. By way of example, amendments filed
after a final rejection, do not constitute a proper reply if the
examiner refuses to have the amendment entered due to non-compliance
with 37 CFR 1.116. Unless an amendment filed after a final
rejection clearly places the application in condition for allowance,
it is recommended that the reply filed be a Notice of Appeal, a CPA,
or RCE.
(6) Petitioners mistakenly believe that lack of knowledge
of the rules or reliance on oral statements by Office employees are
acceptable reasons for a petition under the unavoidable standard
to be granted.
(7) Some petitioners attempt to revive a provisional application
beyond twelve months from filing. While the petition can be
filed outside the twelve-month period (usually for copendency), a provisional
application can only be pending for a period of twelve
months from filing.
THINGS
TO REMEMBER (1) Petitions to revive filed under either
the unavoidable or the unintentional standards should be filed within two
months
of becoming aware of the abandonment of the application to avoid any question
of timeliness.
(2) Renewed petitions to revive must be filed within
two months of an adverse decision on the earlier petition to revive to be
considered timely, unless a proper extension of time up to an additional
five months (for a total of seven months) is obtained under 37 CFR 1.136(a).
Otherwise, the Office may require a specific showing as to how the entire
delay was unavoidable or unintentional.
(3) A petition under 37 CFR 1.137(a) must be accompanied
by the petition fee set forth in 37
CFR 1.17(l) and a petition under 37 CFR 1.137 (b) must be accompanied
by the petition fee set forth in 37 CFR 1.17(m). The
petition fee is required by statute. See 35 U.S.C. 41(a)(7). Thus,
the Office cannot grant requests for waiver or reduction of the requisite
petition fee.
(4) In a non-provisional application abandoned for failure
to prosecute, the required reply may be met by the filing of a continuing
application .
(5) In an application abandoned for failure to pay the issue
fee or any portion thereof, the required reply must be the payment of
the issue fee or any outstanding balance thereof even if the application
is to then be abandoned in favor of a continuing application. In a patent
lapsed for failure to pay the balance of issue fee due, the required
reply is payment of the balance of issue fee due.
(6) In a provisional application abandoned for failure to
timely comply with an Office requirement, the reply requirement must
be met by a complete reply to such Office requirement.
(7) 37 CFR 1.137(b) is applicable to applications abandoned
and patents lapsed, regardless of the length of time that the application
was abandoned or the patent was lapsed. However, note that 37 CFR
1.137(b) requires that the entire period of delay, from the due date
of the reply to the date of filing a grantable petition to revive, was
unintentional for a petition under 37 CFR 1.137(b) to be granted.
(8) While a statement of unintentional delay for the entire
period of abandonment is generally sufficient, 37 CFR 1.137(b) authorizes
the Office to require additional information when there is a question
whether the entire delay was unintentional. In such instances,
the Office may require evidence for each of the three critical periods:
(1) the delay in filing a timely reply before abandonment of the application
or lapse of the patent; (2) the delay in filing an initial petition to
revive; and (3) the delay in filing a grantable petition to revive.
(9) An applicant who deliberately delays the filing of a petition
under 37 CFR 1.137 will not be able to show that "the entire delay in
filing the required reply from the due date of the reply until the filing
of a grantable petition pursuant to 37 CFR 1.137(b) was unintentional".
(10) Examples of situations where unintentional delay was argued
but the Office held these activities to constitute intentional
delay:
(A) where the applicant deliberately permits an application
to become abandoned (i.e., due to a conclusion that the claims are
unpatentable, that a rejection in an Office action cannot be overcome,
or that an invention lacks sufficient commercial value to justify continued
prosecution);
(B) where the applicant chooses not to
seek or persist in seeking revival of an abandoned application, or where the
applicant deliberately chooses to delay seeking revival of an abandoned
application;
(11) An intentional delay resulting
from a deliberate course of action chosen by the applicant is
not affected by: (a) the
correctness of the applicant (or applicant's representative) 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.
(12) An intentional abandonment of an application, or an
intentional delay in seeking either the withdrawal of a holding
of abandonment in, or the revival of, an abandoned application,
precludes a finding of unavoidable or unintentional delay pursuant
to 37 CFR 1.137.
(13) Where an applicant chooses not to seek revival of an application,
or chooses not to persist in seeking revival after an adverse decision
on an earlier petition, the resulting delay cannot be considered
to be unavoidable or unintentional.
(14) A provisional application can be revived for a period not
to exceed 12 months from the date of filing, even if the petition
is filed outside this 12 month period.
. D. Relating to Maintenance Fees Maintenance fees may be paid during the 6
month period following the
3rd, 7th, and 11th anniversary of issuance of a utility patent. If not
timely paid, a surcharge will be required between 3 ½ and 4 years, 7 ½ and
8 years, and 11 ½ and 12 years after issuance of the patent. Utility
patents will expire after 4 years, 8 years and 12
years from issuance
if the maintenance fee and surcharge, if required, are not timely
paid.
The due date for payment of maintenance fees in reissue applications is
computed from the date of grant of the original non reissue application. See
MPEP
Chapter 2500.
1. Payment Prior to Expiration See
MPEP 2580
A patentee who is not satisfied with the USPTO refusal to accept and
record a maintenance fee paid prior to expiration of a patent may petition
under 37 CFR 1.377. The requirements for acceptance of the payment are:
(1) Petition under 37 CFR 1.377;
(2) Filing within 2 months of action complained of or within the time
set in the action complained of;
(3) Petition fee; 37 CFR 1.17(h). The petition may include a request
for refund of the petition fee if the refusal to accept and record the
maintenance fee is determined to be Office error;
(4) Statement of facts as outlined at 37 CFR
1.181(b);
(5) Signature by registered attorney or party in interest as outlined
at 37 CFR 1.377(c);
2. Payment After Expiration See MPEP
2590 (a) Requirements when the delay was unavoidable. >>obtain
form
Payment of maintenance fees after expiration of the patent will
be accepted and the patent will be reinstated as if it had never
expired, provided the following are filed: (1) Petition under 37 CFR 1.378(b) signed by registered
attorney or party in interest as outlined at 37 CFR 1.378(d).
(2) Maintenance fee set forth in 37 CFR 1.20 (e)-(g).
(3) Surcharge set forth in 37 CFR 1.20(i)(1).
(4) Showing of unavoidable delay including an enumeration
of steps taken to ensure timely payment, the date and the manner
in which patentee became aware of the expiration of the patent, and
the steps taken to file the petition promptly.
(b) Requirements when the delay was unintentional. >>obtain
form
Payment of maintenance fees after expiration of the patent will be
accepted and the patent will be reinstated as if it had never expired,
provided the following are filed:
(1) Petition under 37 CFR 1.378(c) filed within 24
months after the six-month grace period signed by registered attorney
or party in interest as outlined at 37 CFR 1.378(d).
(2) Maintenance fee set forth in 37 CFR 1.20 (e)-(g).
(3) Surcharge set forth in 37 CFR 1.20(i)(2).
(4) A statement that the delay in payment of the maintenance fee
was unintentional.
3. Reconsideration
A first request for reconsideration will be entertained provided
the following are filed within two months, or such other time as set
in an adverse decision on a petition filed under 2(a) or 2(b) above:
(1)
Petition under 37 CFR 1.378(e).
(2) Petition fee set forth in 37 CFR 1.17(h).
(3) All pertinent evidence or arguments presented since no further
request for reconsideration will be entertained.
A common error made in the filing of a maintenance fee
petition is the lack of proper identification (by both the patent number
and the application number) of the patent as required by § 1.366(c).
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