- 1年內提出復活，官方不會質疑「故意或不可力抗的延遲（impermissible delay）」。
The Office does not generally question whether there has been an intentional or otherwise impermissible delay in filing an initial petition pursuant to 37 CFR 1.137, when such petition is filed: (A) within 3 months of the date the applicant is first notified that the application is abandoned; and (B) within 1 year of the date of abandonment of the application. Thus, an applicant seeking revival of an abandoned application is advised to file a petition pursuant to 37 CFR 1.137 within 3 months of the first notification that the application is abandoned to avoid the question of intentional delay being raised by the Office (or by third parties seeking to challenge any patent issuing from the application).
Where a petition pursuant to 37 CFR 1.137 is not filed within 3 months of the date the applicant is first notified that the application is abandoned, the Office may consider there to be a question as to whether the delay was unintentional. In such instances the Office may require further information as to the cause of the delay between the date the applicant was first notified that the application was abandoned and the date a 37 CFR 1.137 petition was filed, and how such delay was “unintentional.”
To avoid delay in the consideration of the merits of a petition under 37 CFR 1.137 in instances in which such petition was not filed within 3 months of the date the applicant was first notified that the application was abandoned, applicants should include a showing as to how the delay between the date the applicant was first notified by the Office that the application was abandoned and the filing of a petition under 37 CFR 1.137 was “unintentional.”
- 超過1年，需要舉證。
Where a petition pursuant to 37 CFR 1.137 is “not” filed within 1 year of the date of abandonment of the application (note that abandonment takes place by operation of law, rather than by the mailing of a Notice of Abandonment), the Office may require:
(A) further information as to when the applicant (or the applicant’s representative) first became aware of the abandonment of the application; and
(B) a showing as to how the delay in discovering the abandoned status of the application occurred despite the exercise of due care or diligence on the part of the applicant (or applicant’s representative).
To avoid delay in the consideration of the merits of a petition under 37 CFR 1.137 in instances in which such petition was not filed within 1 year of the date of abandonment of the application, applicants should include:
(A) the date that the applicant first became aware of the abandonment of the application; and
(B) a showing as to how the delay in discovering the abandoned status of the application occurred despite the exercise of due care or diligence on the part of the applicant.
Applicant’s failure to carry the burden of proof to establish that the “entire” delay was “unintentional” may lead to the denial of a petition under 37 CFR 1.137, regardless of the circumstances that originally resulted in the abandonment of the application.
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【連結】 Before December 18, 2013, applicants who missed the deadline for responding to an office action but wanted to continue prosecuting their application would have filed a petition to the Commissioner for Patents requesting that the application be reinstated and pay the applicable fee. Sounds simple enough; however, there were two different petitions that could be filed. The first one was a petition under the "unavoidable" standard, and the second was a petition under the "unintentional" standard. The two petitions are similar but have very different standards. The unavoidable standard was less expensive, but the showing to be made was more rigorous. Thus very few of these were granted. The unintentional standard was less rigorous and thus easier to get approved, but it was more expensive.
【連結 】
An application could be revived for a fee of about $900 if the entire delay in responding was unintentional. This was an easy standard to meet and essentially required, as long as it was truthful, a check-the box style statement that the delay was unintentional.
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【連結】 Caselaw:
- Lumenyte v. Cable Lite (Fed. Cir. 1996): Patentee revived case as unintentionally abandoned. The CAFC affirmed the ruling without questioning whether such revival is ever permissible.
- Morganroth v. Quigg (Fed. Cir. 1989): Affirming that the Director does not have authority to revive an unintentionally abandoned patent application “that resulted from the applicant’s failure to appeal from a final district court judgment that upheld the Commissioner’s prior refusal to issue a patent.”
- New York Univ. v. Autodesk, Inc., 2007 U.S. Dist. LEXIS 50832 (SDNY 2007): The court found that the delay in reviving was not even unintentional. The court explicitly did not reach the question of whether revival for unintentional abandonment due to failure to respond to an office action is even permitted. (Remember, 35 USC 133 only allows for revival of unavoidably abandoned applications.)
- Field Hybrids v. Toyota (D.Minn 2005). （復活成功後，在訴訟中被質疑。The case was eventially revived through a petition claiming "unintentional abandonment." Ultimately two patents issued based on the revived case.）
- This case is not the recently decided Aristocrat v. Multimedia Games.
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Id. Clients often are inclined to take a liberal view of the term “unintentional,” and may consider it only from the perspective of whether they currently intend for the application or patent to be abandoned, which is never the case when revival is being sought. Although the Patent Office will not necessarily ask about it, the facts surrounding the abandonment must indicate that it was truly “unintentional.” Otherwise, the petition may be “materially false.” The MPEP points out several situations where an applicant decides not to respond to an office action or pay a maintenance fee which result in an abandonment that is not properly considered “unintentional” （MPEP 列了幾個不是「非故意」的情況）:
A) the applicant does not consider the claims to be patentable over the references relied upon in an outstanding Office action;
(B) the applicant does not consider the allowed or patentable claims to be of sufficient breadth or scope to justify the financial expense of obtaining a patent;
(C) the applicant does not consider any patent to be of sufficient value to justify the financial expense of obtaining the patent;
(D) the applicant does not consider any patent to be of sufficient value to maintain an interest in obtaining the patent; or
(E) the applicant remains interested in eventually obtaining a patent, but simply seeks to defer patent fees and patent prosecution expenses.
Id. Whether an abandonment is truly intentional will typically not be considered by the Patent Office. Instead, the issue will arise if a patent is obtained (or revived) and an infringement suit is filed based on it. At that point, you should expect an accused infringer to seek discovery of the circumstances that led to the abandonment. If the evidence indicates that the abandonment was actually intentional, the infringer will likely argue that the patent should be held unenforceable for inequitable conduct. Keep in mind that the entire delay between the due date of the required reply (e.g., the office action deadline or maintenance fee deadline) must have been unintentional.
An example of what can occur if a petition to revive is not properly vetted is provided by Network Signatures, Inc. v. State Farm Mutual Insurance Co. (Case No. 11-00982- JVS, C.D. Cal. 2012). In Network Signatures the U.S. District Court for the Central District of California held a patent unenforceable for inequitable conduct based on an improper petition to revive for unintentional abandonment. The patent-in-suit went abandoned due to a delayed maintenance fee payment. Discovery in the case showed that the decision not to pay the maintenance fee was deliberate and that at the time the petition to revive was filed, there was no evidence to suggest that a mistake had been made in deciding not to pay the maintenance fee. A copy of the decision can be obtained here.
