The UPSTO has published a new Federal Register notice titled “Clarification of practice for revival, reinstatement, and delayed priority petitions.”
Here, the PTO is explaining that it is going to require patent applicants to submit “additional information” to explain its claim of “unintentional” delay in meeting a particular deadline. Additional information will be required by the PTO when:
- a petition to revive an abandoned application is filed more than two years after the date the application became abandoned;
- a petition to accept a delayed maintenance fee payment is filed more than two years after the date the patent expired for nonpayment; and
- a petition to accept a delayed priority or benefit claim is filed more than two years after the date the priority or benefit claim was due.
The notice also indicates that the PTO might also require additional information in other situations where there is “a question as to whether the delay was unintentional.”
Up to now in these situations, the USPTO has simply allowed the attorney or party to sign a statement that the entire delay was unintentional — relying upon the duty of candor and good faith to ensure that the claim was accurate. However, that structural trust appears to be breaking down.
37 CFR 1.137 already indicates that the PTO “may require additional information where there is a question whether the delay was unintentional.” What is happening here appears to be an expansion of this regulation.
The subject here is PTO Petition decisions of one type – abandonment revivals. But I won’t pass up the opportunity for my biggest gripe about PTO petition decisions – petitions against clearly improper restriction requirements that were “disposed of” by delaying any petition decision until after the non-extendable deadline for a response to that office action.
I quite agree that the entire Office petition process is a charley foxtrot.
At least the (horribly supported) restriction requirements carry a silver lining for clients seeking to build a portfolio, but I can share that we pretty much NEVER engage in the petition process for the very reason you mention: there is no timing control for matters under prosecution, and there appears to be NO meaningful escalation mechanism to force the Office to meaningfully engage a petition.
To that extent, it’s a lot like trying to get people to actually (and in an inte11ectually honest manner) address many of the counter points that I provide in legal discussions on this blog.
“many of the counter points that I provide in legal discussions on this blog .”
Is it annual review time already? Tell us a counter point that you provided in a legal discussion. One. Be specific as to the law and your counter point.
You do not even have to leave the page, my shifty friend:
link to patentlyo.com
Also note:
link to patentlyo.com
Which does bring to mind another unanswered question put to you. I do realize that you at least attempted to Tr011 another recently (AAA JJ), but that attempt was a drop in the ocean as to the percentage of your posts aimed specifically at me, which is likely still well North of 95% of your posts.
Is that your line of work?
If so, I suppose that I should thank you, as your ineptitude only makes my points stronger.
So, Snowflake thinks that the provided links specify the law and the counter point in a legal discussion. Explains a lot [but not in a good way]. [hint . . . your annual review is not going well.]
As has been previously noted, YOUR view of pretty much anything carries pretty much no weight.
Maybe this is an offshoot of your current line of work.
What is your current line of work?
“As has been previously noted”
Cite?
Gif?
Snowflake did not learn what “cite” means, even with lots of help. [They said you were educable. Sadly, they were wrong].
Still no Gif?
C’mon Shifty, let’s not disappoint.
You have remarkable restraint. Did your mother ever tell you that?
Restraint? From referencing that several hundred post thread that displayed one game of yours after another…?
Too funny.
Wrong again. [Do you not get tired of being proven wrong?; Have you, sir, at long last, no shame?]. I was referencing (citation!)([hint] this is a citation to the record!) “The Rare Beast: Consisting Essentially Of”; Patently’O February 26, 2020; comments under 7.3.1.1.1.2.2.
Gif?
Now that we have taught you how to cite to the record, you can now cite where I have ever provided to you or to anybody what you call a “Gif.” Thanks in advance. [what a maroon]
Those were your best moments, Shifty. Are you want to disclaim them?
Are you sure that you want to disclaim them?
Disclaim? Go ahead and cite to the record, Snowflake. Or provide a link if you prefer. Prove to everybody that this is not yet more of your made-up stuff about me. Show where I have ever provided to you or to anybody what you call a “Gif.” [what a maroon]
Shifty,
You have not been paying attention. Your “Gif days” were from when you were younger (and your game playing was a bit more limited).
You used a different pseudonym. What IS similar though is the level of targeted response percentage. I would be curious to see what percentage of all of your posts are directed to me.
Is that your current line of work?
Is that why you refuse to answer questions about your current line of work?
By the by, I find it immensely humorous that you DO have such a focus — and you absolutely
S
U
C
K
at your game-playing.
How predictable you are. Where did you get the idea that, when cornered, changing the subject works for you? Nobody is fooled, Snowflake. [what a maroon]
There is no change of subject.
This is merely yet another of your games: accusations that entirely lack merit.
It’s odd that you seem to think that such games have any effect whatsoever. You probably should realize that you and I are the only ones still reading this particular discourse (much like that multi-hundred post thread that saw you frequently being taken to the woodshed).
“There is no change of subject.”
Yeah. Uh huh. Come on, boy. Focus! Cite to the record. Or provide a link. Whatever you prefer. Prove to everybody that this is not more of your made-up stuff about me. Now is your chance. Show where I have ever provided to you or to anybody what you call a “Gif.” [what a maroon] [cornered; now he will try to change the subject some more] [but nobody is fooled]
What remarkable restraint you have to not get embarrassed further! [what a maroon]
My tolerance for his antics is at an all-time low.
How predictable you are. A smiley face (or two) or even, who would predict it, three!!! [before he slinks away]
Four!! Four!!! Who woulda thunk it? Four!!!! [then, he slinks away, as is his wont, beat down again] [bet he can’t do five or more!] [what a maroon]
My tolerance for your antics is at an all-time low.
Because ‘your’ tolerance means…
Anything?
(maybe when you speak to yourself, Shifty)…
Now that I have your attention again. Focus! Cite to the record. Or provide a link. Whichever you prefer. Prove to everybody that this is not more of your made-up stuff about me. Now is your chance. Show where I have ever provided to you or to anybody what you call a “Gif.” [what a maroon]
What is your current line of work?
Is it related to how you seem not quite ‘there?’
Who coulda thunk it? Still thinks changing the subject works for him!! [what a maroon]
I do have to wonder – Did your diet as a youngster feature paint chips?
As has been previously noted: YOUR view of pretty much anything carries pretty much no weight.
Maybe this is an offshoot of your current line of work.
What is your current line of work?
Cite to the record. Or provide a link. Prove to everybody that it’s not more of your made-up stuff about me. Show where I have ever provided to you or to anybody what you call a “Gif.” [what a maroon.]
Shifty,
You messed up again keeping your memes separated amongst your historical pseudonyms.
For all of your deliberate targeting of me (I think that you are back up to 98% of every post of yours being directed to me), you rather ‘excel at saying nothing.
This is the exact same pattern that the prior Tr011 of mine employed.
That you seem to think that a citation is necessary (much less appropriate) is just one of your rather peculiar games in your current targeting efforts.
It would be rather humorous if THIS was your current line of work (because you rather
S
I
C
K
at it.
Your game of ‘count’ post just broke through…
You may try as you want to co-opt the woodshed beatdowns that YOU receive, but at this point, as only you and I are following along, and we BOTH know that it is you that are on the receiving end, your attempt at Accuse Others just makes you look silly.
Snowflake: so proud to be so clueless. It continues to amaze. You had five chances to back up your allegation that I ever provided, to you or to anybody, what you call a “Gif.” Three strikes and you are out. Five strikes and you have admitted that your “Gif” thing is just more stuff you made up about me. Have a nice day.
“so proud to be so clueless.”
You are doing that “Accuse Others” thing again, as I have already responded to your attempt to obtain something that just is not necessary.
My, you are a dullard.
By the way, what is your current line of work, and how many times have YOU ‘struck out’ at that?
Feeling a little blue? It would have been so easy to provide a cite or a link. If there was one.
BTW, docketing errors used to be a leading source of unintentional abandonments, and still might be? The PTO’s petitions attorneys may require evidence of affirmative acts of improvements in a firm or corporation docketing system if abandonments happen more than once for that reason.
Is the delay unintentional if the patent owner was in dire financial straits at the time?
No.
Re: “Is the delay unintentional if the patent owner was in dire financial straits at the time?”
Might depend on the facts, e.g., maybe if the application was being handled by a patent attorney who simply refused to respond to an office action until his or her last invoice was paid without formally withdrawing representation or adequately notifying the client of consequences? Definitely not if the patent owner had decided to let applications or patents go abandoned in a cost-savings program.
What is the standard for “unintentional”? Fact pattern. Client does not have sufficient funds to pay for attorney to prepare response within the statutory period, including extensions. Client receives additional funding afterwards, and instructs attorney to prepare response and file petition to revive.
The client intended to have sufficient funds throughout the patent process. So when he or she did n to — is that an unintentional delay?
I similarly am confused by the unavoidable standard. What is unavoidable? Say the EFS-Web system and their fax system goes down at the three-month extension date. And say USPS is down, too, for good measure, on that same day. So the response which was ready to go, wasn’t able to filed.
Unavoidable? The attorney could have filed it the day before.
MikeD,
Sorry but no. Lack of funds is not an excuse (let alone for unintentional).
If one discovers the error after EOB on a Friday and begins preparing, for example, the petition to revive on Monday morning, is the “entire delay” unintentional?
I think so, if it never became anyone’s “intention” to delay. There doesn’t seem to be any requirement to give it any particular level of priority or rush (although at some point, a long enough lapse in time could conceivably raise suspicion that “lack of priority” is masking an actual “intention”).
Interestingly, your hypothetical really proves the point that in this context the “purposeful” definition of intentional is the one that applies (vs. the “awareness” definition that’s sometimes used in other areas of law).
“in this context the “purposeful” definition of intentional is the one that applies (vs. the “awareness” definition that’s sometimes used in other areas of law).”
Interesting. Do you happen to have a cite that explores this distinction?
“Do you happen to have a cite”
L. O. L.
Hi Shifty, maybe note the context, eh?
Do you know about that in your current line of work?
By the way, what is your current line of work?
Context, Snowflake? As you have demonstrated, you think “citation” only means a citation to legal authority. With more experience (maybe) you will learn that “citation” can also refer to a citation to the record.
But I expect you will learn nothing. Now is the time you will flap around a squawk a lot.
Not at all, as it is you that misfocuses on ‘citation,’ while you should focus on context.
Try again (it’s still your turn).
As expected, you learned nothing. Now feel free to flap around and squawk some more, as is your wont.
The issue right here is NOT ‘whether I learned anything about what “citation” means’
Let’s try (yet again):
maybe note the context, eh?
Do you know about that in your current line of work?
By the way, what is your current line of work?
Your flapping and squawking has gotten so tired, Snowflake. I am blocking you. Sorry.
Lol – YOU reach out to Tr011 me (in error as is typical), and when the error is pointed out, you want to ‘block me’…?
You are indeed ‘Sorry’ — just not in the manner that you may be thinking of.
As to “purposeful” vs. “awareness” of abandonment, the latter is often a difficult question when it comes to pro se inventors, and the PTO does tend to give them a break.
They wouldn’t really need a “break,” because you’re allowed to have “awareness” of the delay, so long as it never becomes your intention/purpose. (Again, there’s never been any indication of a requirement to give it any particular level of urgency or prioritization…)
My question meant to focus on “entire delay.” One could have gotten to work immediately Friday evening… Isn’t there an argument that the delay of Saturday and Sunday was intentional and therefore it can’t be said that the “entire delay.” was unintentional? What if there are other pressing matters to attend to on Monday, and correcting this is pushed off till Wednesday?
Again – the Saturday and Sunday “delay” there was with *knowledge* that delay was transpiring, but not with the intention (purpose) itself being to delay. You’re allowed to *know* the delay is happening; you’re just not allowed to have the delay be your purpose.
There’s no requirement to give it any particular level of urgency, etc.
Real life example: Patent attorney 1 becomes mentally ill, and sets up shop under a highway overpass, where he does not receive mail with the notice of allowance. Client retains patent attorney 2 to revive and pay the issue fee. Patent attorney two puts it in his queue for three months, and client calls patent attorney 3 on a Friday morning. Patent attorney 3 files a petition to revive based on unavoidable delay for both patent attorney 1 and 2 (this was back in the day) and unintentional delay on Friday afternoon (fearing a determination the three month delay might be deemed “not unintentional). The PTO agreed that the initial abandonment was unavoidable. The PTO held that the three month delay by patent attorney 2 was not unavoidable, but was unintentional. SO, if they were willing to see a three month delay as unintentional, they should see a weekend of delay as unintentional. But in cases where the applicant dithers, and take a week or two to decide if revival is worthwhile, you might not get the same result.
I’d agree that taking time “to decide if” they even want to revive would probably cross the line from merely being *aware* of the increasing delay to actually having the delay become the *purpose* of waiting.
However, per your example, an applicant merely waiting a while to follow up with the attorney probably isn’t a problem, because there doesn’t seem to be any particular level of active urgency required (and certainly no guidance as to what such a level would be, etc.). Of course, the longer that a delay occurs with the knowledge of relevant parties, the more likely someone could argue/infer that delay might’ve in fact really been the intention, but that’s a very murky area.
But the required wording refers to the “entire delay.”
Right, but you’re allowed to become *aware* of the delay during that time; you’re just not allowed to have the delay ever become your intention/purpose.
Imagine there is a filing at the USPTO (acting as WIPO-RO) of a PCT application that declares the priority of an earlier USPTO filing. The intention was to file PCT within the Paris Convention priority year. However, there was unintentional delay, with the consequence that the PCT filing date at the USPTO was more than one year after the declared priority date.
Suppose that the USPTO accepts the unintentionality. However, with regard to the benefit of the US priority date outside the USA, in the further prosecution of the PCT case, what happens next? Does anybody here know?
That would be a good thing to know. I think it goes country by country, as to whether they respect the restoration of priority right. The EPO did not, the last time I encountered the problem.
Yep. Thanks DC. But I don’t think there is any disrespect going on here. PCT Member States all accept the PCT ‘s Regulations. Those Rules flag up two criteria for restoration and contemplate that each Member State will apply whichever one of the two complies with its own domestic standard. How else could it be, when some Applicants use the PCT route and others don’t. There has to be fairness, as between these two groups of Applicants.
Most of the world (including the EPO) requires evidence that the lapse was “despite all due care” having been taken to complete the act in question by the due date. Otherwise, no go. It’s a tougher standard to meet than “unintentional”, likely a nasty shock for Applicants coming out of the USA.
I’m just curious, what experience other Americans have with Restitutio in Integrum, in countries other than the USA.
Real life example: Patent attorney 1 becomes mentally ill, and sets up shop under a highway overpass, where he does not receive mail with the notice of allowance. Client retains patent attorney 2 to revive and pay the issue fee. Patent attorney two puts it in his queue for three months, and client calls patent attorney 3 on a Friday morning. Patent attorney 3 files a petition to revive based on unavoidable delay for both patent attorney 1 and 2 (this was back in the day) and unintentional delay on Friday afternoon (fearing a determination the three month delay might be deemed “not unintentional). The PTO agreed that the initial abandonment was unavoidable. The PTO held that the three month delay by patent attorney 2 was not unavoidable, but was unintentional. SO, if they were willing to see a three month delay as unintentional, they should see a weekend of delay as unintentional. But in cases where the applicant dithers, and take a week or two to decide if revival is worthwhile, you might not get the same result.
4.1.1.1 is a dupe. Maybe Dennis can delete it.