711.02(b) Special Situations Involving Abandonment [R-07.2015]

Created On
byChhabra Law Firm

The following situations involving questions of abandonment often arise, and should be specially noted:

  • (A) Copying claims from a patent when not suggested by the U.S. Patent and Trademark Office does not constitute a reply to the last Office action and will not save the application from abandonment, unless the last Office action relied solely on the patent for the rejection of all the claims rejected in that action.
  • (B) An application may become abandoned through withdrawal of, or failure to prosecute, an appeal to the Patent Trial and Appeal Board. See MPEP §§ 1215.01 to 1215.04.
  • (C) An application may become abandoned through dismissal of appeal to the Court of Appeals for the Federal Circuit or civil action, where there was not filed prior to such dismissal an amendment putting the application in condition for issue or fully responsive to the Board’s decision. Abandonment results from failure to perfect an appeal as required by the Court of Appeals for the Federal Circuit. See MPEP §§ 1215.04 and 1216.01.
  • (D) Where claims are suggested for interference near the end of the period for reply running against the application. See MPEP Chapter 2300.
  • (E) Where a continued prosecution application (CPA) under 37 CFR 1.53(d) is filed. See MPEP §§ 201.06(d) and 711.01.
  • (F) Prior to a decision by the Board, an application on appeal that has no allowed claims may become abandoned when a Request for Continued Examination (RCE) is improperly filed without the appropriate fee or a submission (37 CFR 1.114(d)) in the application. The filing of an RCE will be treated as a withdrawal of the appeal by the applicant. See MPEP § 706.07(h), subsection X.
  • (G) When a reply to a final Office action is outstanding, an application may become abandoned if an RCE is filed without a timely submission that meets the reply requirements of 37 CFR 1.111. The filing of an improper RCE will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application. See MPEP § 706.07(h), subsection VI.
  • (H) Prior to payment of the issue fee, an allowed application may become abandoned if an RCE is improperly filed without the appropriate fee or a submission in the application. The improper RCE will not operate to toll the running of the time period for payment of the issue fee. See MPEP § 706.07(h), subsection IX.