711.02    Failure To Take Required Action During Statutory Period [R-07.2015]

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) ).

When an amendment is filed after the expiration of the statutory period, the application is abandoned and the remedy is to petition to revive it. The examiner should notify the applicant or attorney at once 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).

To pass on questions of abandonment, 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 reach the Office within the set shortened statutory period for reply dating from the date stamped or printed on the Office letter or within the extended time period obtained under 37 CFR 1.136. (See MPEP § 710 to § 710.06.)

For a petition to withdraw a holding of abandonment based upon failure to receive an Office action, see MPEP § 711.03(c).

711.02(a)    Insufficiency of Reply [R-08.2012]

Abandonment may result from a situation where applicant’s reply is within the period for reply but is not fully responsive to the Office action. But see MPEP § 710.02(c). See also MPEP § 714.02 to § 714.04.

¶ 7.91    Reply Is Not Fully Responsive, Extension of Time Suggested

The reply filed on [1] is not fully responsive to the prior Office action because: [2]. Since the period for reply set forth in the prior Office action has expired, this application will become abandoned unless applicant corrects the deficiency and obtains an extension of time under 37 CFR 1.136(a).

The date on which the petition under 37 CFR 1.136(a)  and the appropriate extension fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. In no case may an applicant reply outside the SIX (6) MONTH statutory period or obtain an extension for more than FIVE (5) MONTHS beyond the date for reply set forth in an Office action. A fully responsive reply must be timely filed to avoid abandonment of this application.

Examiner Note:

1. In bracket 2, set forth why the examiner considers there to be a failure to take "complete and proper action" within the statutory period.

2. If the reply appears to be a bona fide attempt to respond with an inadvertent omission, do not use this form paragraph; instead use form paragraph 7.95.

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

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.

711.02(c)    Termination of Proceedings [R-11.2013]

"Termination of proceedings" is an expression found in 35 U.S.C. 120. As there stated, a second application is considered to be copending with an earlier application if it is filed before

  • (A) the patenting,
  • (B) the abandonment of, or
  • (C) termination of proceedings on the earlier application.

"Before" has consistently been interpreted, in this context, to mean "not later than."

In each of the following situations, proceedings are terminated:

  • (A) When the issue fee is not paid and the application is abandoned for failure to pay the issue fee, proceedings are terminated as of the date the issue fee was due and the application is the same as if it were abandoned after midnight on that date (but if the issue fee is later accepted, on petition, the application is revived). See MPEP § 711.03(c).
  • (B) If an application is in interference wherein all the claims present in the application correspond to the counts and the application loses the interference as to all the claims, then proceedings on that application are terminated as of the date appeal or review by civil action was due if no appeal or civil action was filed.
  • (C) Proceedings are terminated in an application after decision by the Patent Trial and Appeal Board as explained in MPEP § 1214.06.
  • (D) Proceedings are terminated after a decision by the court as explained in MPEP § 1216.01.