Reviving Abandoned Applications

Around 5,200 utility patents issued on November 6, 2012. I was surprised to find that at least 76 of those had been abandoned at some point during prosecution and later revived and then patent. Although only about 1.5% of the patents, the number is still surprising. Of course, revival has become somewhat regularlized these days and is done with little consequence beyond a substantial fee ($1,890 plus any late fees) and loss of some PTA. In fact, the USPTO has created an automated computer system to grant petitions to revive so long as they are submitted and signed (electronically) by a registered patent practitioner. Further, the current thinking is that a patent cannot be later challenged for improper revival because that issue does not serve as a condition for patentability that qualifies as a defense under 35 U.S.C. § 282.

Even though my sample here is quite small, it still included many patent-industry leaders such as Fujitsu, GlaxoSmithKline, Texas Instruments, Carl Zeiss, Wi-LAN, Philips, IBM, Johnson Control, University of Texas, Illinois Tool Works, Intel, 3M, Seagate, University of Maryland, EMC, Sharp, LG, Kodak, Microsoft, FEI, etc. Each of these entities now has at least one new patent that was accidentally abandoned during the application processing and then later revived.

From my analysis of these cases, I do not perceive any attempts to game the system. Rather, the abandonments seem to be truly unintentional misses by offices and attorneys managing hundreds of cases. Luckily for the parties involved, the revival process is almost as easy as the abandonment.

7 thoughts on “Reviving Abandoned Applications

  1. In my opinion, nearly everything should be able to be revived with payment of a fee, including filing dates.

    Which raises a question, if a party files a PCT without paying fee, I understand the party has at least a month to pay the filing fee.

    Can that date be extended with payment of an extension fee OR the PCT revived at a later date if missed?

    I assume no, but wanted to double check.

  2. There does seem to be some tension in the degree of forgiveness afforded to those who miss deadlines for responding to the patent office versus those who miss statutory conversion dates. I’d personally prefer that the former deadlines be treated more strictly (automatic processing? without requiring any specific explanation of what happened? really?) but that ship has momentarily sailed away.

    is their any great harm in affording provisionals the same treatment as nonprovisionals?

    It’s easy to imagine facts where there could be great harm to someone. Maybe Dennis can provide the data regarding the average length and distribution of time between the actual abandonment and the filing of the request for revival. I wouldn’t be surprised to see cases that were abandoned for years before revival. Is that the sort of “error” that should be correctable in the context of a provisional conversion?

  3. Provisional conversion dates are less forgiving, although the motivation here seems muddy in view of the frequency of revival. You can get back your provisional filing dates in some countries through PCT, but can’t get back to your provisional filing date in the US. Unlike other bar dates, you’ve already filed – is their any great harm in affording provisionals the same treatment as nonprovisionals? With the auto-grant program for reviving abandoned nonprovisionals, it seems discontinuous to offer no recourse for provisionals that were not converted within 12 months.

  4. Some of the problem is client in-house attorneys or agents, especially foriegn, who fail to respond to requests for information and office action response instructions in time.

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