Patents are a tool used to protect innovation and foster economic growth. The inventor agrees to disclose their invention in return for a grant from the U.S. Patent and Trademark Office (USPTO) for the exclusive right to exclude others from practicing the invention. Patents can be abandoned, intentionally or inadvertently, by a patent owner or by the USPTO.
The process of achieving a patent grant and maintaining a patent through the life term of the patent is complex with numerous challenges and potential pitfalls. Due dates, response periods, and deadlines are a primary point of failure resulting in delays, potential reduction in patent term adjustment, loss of momentum in examination, additional fees incurred for taking extensions of time for replying to a Patent Office communication, and in some cases, abandonment.
Abandonment can mean loss of patent rights. These rights can include the entire bundle of patent rights included with the patent grant, or rights to hold certain infringers accountable for infringement occurring during examination, or rights to hold infringers accountable for infringement occurring during the period of abandonment.
Abandonment alone does not necessarily mean permanent loss of rights. Indeed, the prudent patent portfolio is prepared to recover patent rights that are inadvertently abandoned. And the prudent market player knows that the abandoned status of a competitor's patent does not necessarily mean the patent is cleared as an infringement risk.
Understanding patent abandonment and revival is essential for inventors, entrepreneurs, and businesses. In this guide, we provide a comprehensive overview.
I. What is Patent Abandonment?
Patent abandonment occurs when an applicant or patent holder fails to meet certain requirements or deadlines set by the USPTO. Typically, abandonment of a patent or patent application occurs due to failure to respond to office actions, pay maintenance fees, or comply with formalities during the application process. These failures can occur for improper docketing, miscommunication or broken communication between an Applicant and Applicant's representative patent attorney or patent agent.
Additionally, abandonment may occur due to voluntary abandonment. An Applicant may voluntarily withdraw the application or abandon the patent for strategic reasons, such as changes in business priorities or market dynamics.
Abandonment may also occur due to a mistake made by the USPTO. For example, the USPTO may fail to issue or mail a communication or may commit a docketing or processing error. While mailing issues are less common than they were ten years ago, USPTO-caused abandonment for docketing or workflow processing issues do occur.
II. What are the Consequences of Abandonment?
When a patent application is abandoned, examination ends and eventually the disclosure, if published, enters the public domain permanently. When a patent is abandoned by failure to pay a maintenance fee, the patent term ends, and patented invention enters the public domain.
The invention is then available for others to use. Abandonment undermines any competitive advantage once conferred to the patent holder and any licensees.
III. How Can Abandonment Be Overcome or Reversed?
Can abandonment cause business damage and loss of rights? Sure. Can the damage be mitigated, and the abandonment reversed? Yes, if the patent owner acts quickly, takes the rights steps, and avoids creating a record that could be interpreted as including unhelpful admissions, the abandoned patent or patent application can be "revived."
The USPTO provides mechanisms for reviving abandoned patent applications or patents under certain circumstances. The process for revival varies depending on 1) the reason for abandonment and 2) when in the patent lifecycle the abandonment occurred.
The public has an interest in avoiding patent infringement entrapment by so-called submarine patents that are abandoned according to public records, but suddenly spring to life. Accordingly, the ability to seek revival is time limited. After a certain time period, the USPTO may require supporting evidence for a petition to revive a patent or patent application. Currently, this time period is two years. After a longer time period on the order of several years or more, the USPTO may deny a petition to revive altogether.
One cannot decide to abandon a patent or patent application and later reverse the decision and attempt to revive the patent or patent application. One cannot, for example, decide that the IP budget does not support paying maintenance fees this year, and then decide to revive the patent at a later date (usually when a license interest arises....). Patents or patent applications can only be revived for unintentional or unavoidable abandonment, or by the withdrawal of the holding of abandonment.
IV. How to Revive a Patent Application Abandoned Unintentionally
If a patent application is abandoned unintentionally, the applicant may petition the USPTO to revive the application for unintentional abandonment. The petition to revive abandoned patent application for unintentional abandonment must be filed without delay and with a government fee. The petition should be prepared after a thorough investigation of facts and collection of evidence.
The petition must be accompanied by the missing reply or fee that led to the abandonment. The petition must also include a statement that the petition was filed without any delay during the entire period from the abandonment to the petition filing date. A design patent related petition will require a terminal disclaimer and associated government fee.
If the abandonment occurred recent enough in time to the petition filing, the petition may be filed electronically, and the application or patent revived immediately. In this case, the USPTO typically relies on the candor and good faith of the petitioner in accepting the statement of no delay between the abandonment and petition filing dates. If a substantial amount of time on the order of years (currently two years) spans between the abandonment and the petition filing dates, then the USPTO may require the petition to be considered manually by the USPTO Petitions Branch and may require a statement explaining reasons for the delay along with supporting evidence.
V. How to Revive a Patent Abandoned Unintentionally
Similarly, a granted patent that has lapsed due to the non-payment of maintenance fees may be revived by petitioning the USPTO and paying the required fees within a specified timeframe. The petition must include a statement of unintentional delay and the necessary maintenance fees.
VI. How to Reverse an Abandonment for USPTO Error
Abandonment is a legal term of art denoting a legal status of a patent or patent application. Where a patent owner fails to respond to a Patent Office communication or fails to timely pay a required government fee, the USPTO may determine that the patent application or patent is abandoned and issue a holding of abandonment. The holding of abandonment forms the basis of a Notice of Abandonment.
In some cases, however, the Notice of Abandonment is issued in error, or the holding of abandonment is improperly determined. The patent application or patent owner can petition the USPTO to withdraw the holding of abandonment for Patent Office error. The petition does not require a government fee, only reasons and any evidence in support of the petition showing Patent Office error.
VII. Best Practices for Avoiding Abandonment
To minimize the risk of patent abandonment, applicants and patent holders should adopt proactive strategies and practices, including:
1. Maintaining reliable docketing systems and meticulous records of deadlines and correspondence with the USPTO.
2. Promptly responding to office actions and fulfilling formalities during the application process.
3. Maintaining reliable docketing systems and processes for monitoring and managing maintenance fee payments for granted patents.
4. Seeking professional guidance from patent attorneys to navigate the complexities of patent prosecution and maintenance.
Navigating USPTO patent abandonment and revival requires prompt action and knowledge of the rules and available options for recovering from an abandonment. Preventative care can be taken by careful attention to deadlines, compliance with formalities, and proactive management of patent portfolios. Mistakes happen, however, and while abandonment can present challenges and potential setbacks, understanding the revival procedures and adopting best practices for patent maintenance can help safeguard valuable intellectual property assets and avoid loss of rights.
Contact us with any questions about patent or patent application abandonment and options for reviving a patent, petitioning the USPTO to accept a late maintenance fee, or reversing a holding of abandonment for USPTO error.