Steps To Draft Revival Petitions For Patents And Applications

Steps To Draft Revival Petitions For Patents And Applications

Strap – An insight into the grantable appeals

In March 2020, the United States Patent and Trademark Office (USPTO) changed the rule on revival petitions. It required an additional statement explaining unintentional delays of over two years.

The rule has been in effect since, and the PTO responded to several relevant petitions, providing an insight into the grantable revival petition (GRP).

It states that an applicant may seek revival of an abandoned application or patent by certifying that the entire delay (from abandonment to the filing of a GRP) was unintentional. The PTO relies on the applicant's duty of candor and good faith.

The ‘unintentional delay’ has been the revival standard since 2013. Before that, the standard was ‘unavoidable’ delay.

Between 2013 and 2020, an applicant met the requirements of certification by checking a box on a standardized form. The PTO deferred to the applicant's duty of candor. It seldom demanded supplemental information.

However, on 02 March 2020, the PTO's clarification in the Federal Register added a new requirement for delays longer than two years. It said that the applicant/patentee must provide "sufficient information of the facts and circumstances surrounding the entire delay."

For cases under two years, the rule remained unchanged (check-the-box).

Based on the recent responses, the PTO has applied the 2020 rule change rather strictly. It requires a detailed account of the entire delay period. Patent practitioners must consider on drafting the additional statement when preparing a revival petition.

While the PTO provides guidance on the unintentional delay standard in the Manual of Patent Examining Procedure (MPEP) § 711, the inquiry into the unintentional delay aspect is fact-specific.

MPEP § 711(c)(3)(II)(C) explains that an ‘unintentional delay’ requires a certification that "the entire delay in filing the reply from the due date, until the filing of a grantable petition, pursuant to 37 CFR 1.137, was unintentional."

However, the statement leaves ambiguities. The MPEP does not provide specific examples constituting ‘unintentional delay’. It only provides examples of ‘deliberately chosen course of action’, which does not constitute ‘unintentional delay’ (MPEP § 711.03(c)(3)(II)(C) and (D)).

The examiners have responded to revival petitions along with statements, providing detailed guidance than the general (negative) MPEP examples.

The PTO publishes the Official Gazette for Patents weekly and archives the editions. It contains a section ‘Patents Reinstated Due to the Acceptance of a Late Maintenance Fee from (a specific date)’, listing past week’s revived patents.

Based on the Official Gazette, the PTO’s Patent Center accessed a copy of the revival petitions and the responses. The analysis provided some interesting insights.

The examiners assigned importance to certain details relating to the reason for the delay:

• The cause of the petitioner's lack of action that resulted in abandonment.

• When (approximate date) and how the abandonment was discovered.

• The delay between the discovery of the abandonment and filing the revival petition.

The information on the relevant dates and the identification of the responsible parties:

• In cases involving transfer(s) of assignment, the examiners may require a petitioner to make an inquiry reasonable to determine that a previous assignee's delay was unintentional (and explain about the inquiry and results).

By providing such information in the revival petition, the chance of being granted permission on the first attempt is high as the examiner will have more information to base the decision of the petition.

The examiners noted that the applicants must include detailed timelines in a revival petition covering the delay period (accounting for every day). This aligns well, and fulfils the MPEP's requirement that each petition include an "explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional."

MPEP 711(c)(3)(II)(D) defines three distinct delay periods:

• The delay in reply that originally resulted in the abandonment;

• The delay in filing an initial petition pursuant to 37 CFR 1.137 to revive the application; an

• The delay in filing a grantable petition pursuant to 37 CFR 1.137 to revive the application.

A timeline should ideally include three types of information: Date, responsible applicant during each date range, and why the delay was unintentional.

The steps helpful for information:

• Analyze the prosecution history and divide the unintentional delay period into date ranges based on the responsible applicant. When patent portfolios are transferred between two or more different legal entities, date ranges can provide the examiner with a clear understanding of the specific person or entity responsible at each point.

• Ensure that the date ranges line up consecutively without discrepancies for the entire delay.

• For each date range, provide a brief explanation on why the delay was unintentional.

An example of an exchange, involving Patent No.7,721,763, between a petitioner and the PTO illustrates several points.

In a first petition to revive for failure to pay a maintenance fee, the petitioner asserted that the petitioner was unaware of payment requirement.

On 23 October 2023, the examiner dismissed the first petition on the premise that the petitioner did not provide sufficient information on the cause of the abandonment.

It said, "While the petitioner identifies that the maintenance fee was not paid because he was unaware of the requirement for the payment, this explanation is not consistent with the patent issuance packet, which informs the patentee of the need to pay maintenance fees. The petitioner should clarify whether he received this information.”

On 13 December 2023, the petitioner complied with a second petition that demonstrated why the patent owner was unaware of the fee. The petitioner provided a full list of attempts of prior counsel to reach the patent owner regarding the maintenance fees.

The petitioner included the relevant date with each letter:

"Exhibit A is a copy of the letter of 01 June 2010, purportedly sent to me by my prior counsel. The letter reports the issuance of the patent and mentions the maintenance fees owed for the patent in the future. It indicates that the Ribbon Copy of the [atent was enclosed."

"I do not recall receiving this letter via physical mail or email, and do not possess the original letter or any copies. I also do not recall receiving the Ribbon Copy of the patent, and did not find the Ribbon Copy after searching through the files.”

"Exhibit B is a letter of 08 May 2013, purportedly sent to me by my prior counsel. The letter purports to advise of the maintenance fee that was owed by 05 November 2013. Exhibit B states that 'If you desire not to maintain the patent and let it lapse for nonpayment, we will need a written record of your decision.”

"I do not recall receiving this letter via physical mail or email, and do not possess the original letter or any copies.”

The examiner subsequently granted the second petition.

While every potential case of revival was unique, a common thread was the PTO's effort to ensure that the process was implemented. By researching and including important information for the detailed timelines, an applicant can increase the chance of revival at the PTO.