711.02 Failure To Take Required Action During Statutory Period [R-07.2022]
37 CFR 1.135(a) specifies that an application becomes abandoned if applicant “fails to reply” to an Office action within the fixed statutory period. This failure may result either from (A) failure to reply within the statutory period, or (B) insufficiency of reply, i.e., failure to file a “complete and proper reply, as the condition of the case may require” within the statutory period (37 CFR 1.135(b)).
To determine if an application is abandoned, it is essential that the examiner know the dates that mark the beginning and end of the statutory period under varying situations. Applicant’s reply must be considered timely filed within the set shortened statutory period for reply, or full statutory period for reply if applicable, dating from the notification or mail date on the Office letter or within the extended time period obtained under 37 CFR 1.136. See MPEP §§ 512, 513, and 710et seq. See MPEP § 711.04(a) for examples to illustrate the expiration of the shortened statutory period and corresponding date the abandonment in different situations.
When an amendment is filed after the expiration of the statutory period and is not considered timely under 35 U.S.C. 21 and 37 CFR 1.7, the application is abandoned and the remedy is to petition to revive it. The examiner should notify the applicant or the applicant’s attorney or agent of record at once with notification that the application has been abandoned by using Notice of Abandonment form PTOL-1432. The proper boxes on the form should be checked and the blanks for the dates of the proposed amendment and the Office action completed. The late amendment is placed in the file wrapper but not formally entered. See MPEP § 714.17.
Form paragraph 7.90 or 7.98.02 may also be used.
¶ 7.90 Abandonment, Failure to Reply
This application is abandoned in view of applicant’s failure to submit a proper reply to the Office action mailed on [1] within the required period for reply.
Examiner Note:
- 1. A letter of abandonment should not be mailed until after the period for requesting an extension of time under 37 CFR 1.136(a) has expired.
- 2. In pro se cases see form paragraph 7.98.02.
¶ 7.98.02 Reply Is Late, Petition To Revive Suggested, Pro Se
Applicant’s reply to the Office Action of [1] was received in the Patent and Trademark Office on [2], which is after the expiration of the period for reply set in the last Office Action. Since no time remains for applicant to obtain an extension of the period for reply by filing a petition under 37 CFR 1.136(a), this application is abandoned. Applicant is advised that the abandonment of this application may only be overcome by filing a petition to revive under 37 CFR 1.137. A petition to revive may be appropriate if applicant’s failure to reply was unintentional, as set forth below.
A petition to revive an abandoned application on the grounds that the failure to reply was unintentional (37 CFR 1.137) must be accompanied by: (1) the required reply (which has been filed); (2) 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 pursuant to 37 CFR 1.137 was unintentional; (3) any terminal disclaimer required pursuant to 37 CFR 1.137(d); and (4) the $[3] petition fee as set forth in 37 CFR 1.17(m). No consideration to the substance of a petition will be given until this fee is received. The Director may require additional information where there is a question whether the delay was unintentional.
The required items and fees must be submitted promptly under a cover letter entitled “Petition to Revive.”
Further correspondence with respect to this matter should be addressed as follows:
By mail:
Mail Stop Petition
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX:
571-273-8300
Attn: Office of Petitions
Telephone inquiries with respect to this matter should be directed to the Office of Petitions Staff at (571) 272-3282. For more detailed information, see MPEP § 711.03(c).
For a petition to withdraw a holding of abandonment based upon failure to receive an Office action, see MPEP § 711.03(c).