The examination of a U.S. patent application at the U.S. Patent and Trademark Office (USPTO) is typically a lengthy process. The time required for a patent application to be approved can vary based on the technical area of the invention, the complexity of the invention, and the volume of existing relevant applications and patents to review. According to the USPTO’s patent pendency data, the average pendency of a utility patent application is nearly two and a half years as of February 2022. Once granted, the patent is enforceable for up to 20 years from the earliest filing date. However, there are requirements to keep patent applications and granted patents alive over these periods. If these requirements are not met, the result is abandonment of the patent application or granted patent.
In many cases, abandonment is intentional, for example, due to changing business objectives, a lack of commercial interest, or cost of the examination process or maintenance fees. In other cases, abandonment is unintentional. Fortunately, in select situations, unintentionally abandoned patents and patent applications may be revived.
Abandoning a U.S. Patent or Patent Application
There are several ways in which a patent or patent application may be abandoned, such as a failure to pay official USPTO fees, failure to respond to an Office action, and express abandonment of the patent application.
Official USPTO fees must be paid at various timeframes after grant of the patent and during the pendency of the patent application. A frequent occurrence of abandonment for failure to pay official USPTO fees is a scenario in which the patent owner fails to pay the maintenance fees due to the USPTO 3.5 years, 7.5 years, and 11.5 years after a patent is granted. Although the maximum term of a utility patent is 20 years from its filing date, a patent owner may decide to allow a granted patent to become abandoned if the costs of maintaining the patent (e.g., the maintenance fees, other associated legal fees) outweigh the benefits derived from maintaining the patent “in force.”
A patent application may also become abandoned through a failure to respond to an official USPTO communication within the allowable time frame. For example, an Office Action is a very common USPTO communication that provides information to the applicant regarding the patentability of an invention. Office Actions typically provide an initial three-month period to respond which is extendable three additional months with payment of extension fees. An applicant may choose not to respond to an Office Action if they no longer wish to pursue patent protection for the invention. Other types of official USPTO communications include Notices of Allowability and Notices to File Corrected Application Papers, each specifying a response period to avoid abandonment.
Another option for abandoning a patent application is express abandonment. Express abandonment occurs when an applicant files a written declaration explicitly requesting that the patent application be abandoned. This option is rarely used but can be beneficial in certain circumstances. For example, an applicant can expressly abandon a patent to avoid publication of the patent application to thereby keep the invention out of the public eye.
Reviving a U.S. Patent or Patent Application
Generally, when a patent is allowed to expire or a patent application is abandoned intentionally, the intentional abandonment cannot be reversed. However, erroneously expired patents and abandoned patent applications may be revived if the abandonment was unintentional or unavoidable.
In the case of unintentional abandonment, the patent or patent application may be revived by filing a petition declaring that the entire delay in filing a reply or paying a fee that led to abandonment was unintentional and not the result of a deliberate and intentional course of action. Importantly, the decision to abandon a patent or patent application is considered intentional even if new information is discovered or circumstances pertaining to the decision that led to intentional abandonment changes after the patent or patent application is abandoned. This means that an intentional decision to abandon a patent or patent application will likely prevent revival of the patent or patent application even when the decision to abandon was incorrect or based on incorrect information.
An unavoidably abandoned patent or patent application may be similarly revived with a petition declaring that the entire delay in filing a reply or paying a fee was unavoidable. However, petitions to revive on the grounds of an unavoidable delay are subject to much more scrutiny than those based on an unintentional delay, as a patent owner or an applicant must show either truly dire and uncontrollable circumstances or reasonable actions that unexpectedly resulted in abandonment. An example of such circumstances would be the death of the prosecuting patent attorney.
A decision to allow a patent or patent application to become expired or abandoned is relatively straightforward in many cases. However, given the finality of such a decision, it is important to consider the legal implication of doing so. Furthermore, depending on the specific facts of the abandonment, revival of the patent or patent application may be possible. As such, please contact your attorney at Andrus Intellectual Property Law to discuss the implications of abandoning patents or patent applications and if applicable, whether an erroneously abandoned patent or patent application can be revived.
Andrus was proud to have supported and attended the Inaugural Gala for the Institute for Women's Leadership Marquette University (IWL) on March 8, 2022 (International Women’s Day). The IWL was launched in 2019 and its mission is to advance women’s leadership locally and globally through pioneering research, innovative programming, and collaborative engagement.