711.04   Public Access to Abandoned Applications [R-2]

Access will be provided to the application file itself for any non-Image File Wrapper (IFW) abandoned published application. When access to the IFW system is available in the File Information Unit (FIU) and/or Internet access to abandoned published IFW applications, such files will be provided to the public via the FIU and/or Internet. Since there is no paper file wrapper for IFW applications, if electronic access is not available to the public, then access to IFW files is only available by ordering a copy of the application-as-filed, the file contents of the published application or a specific document in the file of the published application from the Office of Public Records and payment of the appropriate fee set forth in 37 CFR 1.19 (b). See 37 CFR 1.14 (a)(1)(ii).

Access to an abandoned unpublished application may be provided to any person if a written request for access is submitted, and the abandoned application is identified or relied upon:

    • (A) in a U.S. patent application publication or patent;
    • (B) in statutory invention registration; or
    • (C) in an international application that is published in accordance with PCT Article 21(2).

An application is considered identified in a document such as a patent when the application number or serial number and filing date, first named inventor, title and filing date or other application specific information are provided in the text of the patent, but not when the identification is made in a paper in the file contents of the patent and is not included in the printed patent. See 37 CFR 1.14 (a)(1)(iv). A copy of the application-as-filed, the file contents of the abandoned application, or a specific document in the file of the abandoned application may also be provided to any person upon written request, and payment of the fee set forth in 37 CFR 1.19 (b). See 37 CFR 1.14 (a)(1)(iv). See also MPEP § 103. Form PTO/SB/68 may be used to request access of an abandoned application under 37 CFR 1.14(a)(1)(iv).

711.04(a)   Pulling and Forwarding Abandoned Applications [R-1]

The files of abandoned applications are pulled and forwarded to the Files Repository on a biweekly basis 1 month after the full 6-month statutory period has expired. However, the date of abandonment is after midnight of the date on which the set shortened statutory period, including any extensions under 37 CFR 1.136, expired.

The applications should be carefully scrutinized by the appropriate examiner to verify that they are actually abandoned. A check should be made of files containing a decision of the Board of Patent Appeals and Interferences for the presence of allowed claims to avoid their being erroneously sent to the Files Repository.

Although the abandoned files are not pulled until the maximum permissible period for which an extension of time under 37 CFR 1.136(a)  plus 1 month has expired, the date of the abandonment is after midnight of the date the period for reply actually expired. This is normally the end of the 3-month shortened statutory period.

711.04(b)   Ordering of Patented and Abandoned Files [R-5]

In examination of an application it is sometimes necessary to inspect the application papers of a previously patented or abandoned application. It is always necessary to do so in the examination of a reissue application.

Recently patented and abandoned paper files are stored at the Files Repository. Older files are housed in warehouses located off site. Image File Wrapper (IFW) applications are stored electronically and do not have a paper file wrapper to be stored. The electronic file is the official record of the application. See the IFW Manual section 3.7.

Patented and abandoned files are ordered by means of a PALM video display transaction. To place such an order, the examiner is required to input his/her PALM location code, employee number, and patent number(s) and/or application number(s) of the file(s) that are needed. After transmission of the request transaction by the examiner, a "response" screen appears on the video display terminal which informs him/her of the status of the request for each file. The examiner is informed that the request is:

    • (A) accepted;
    • (B) accepted, but for which the file is stored at a warehouse off site (in which case delivery time is increased);
    • (C) not accepted since the file is not located at the repository or warehouse;
    • (D) not accepted since a previous request for the file has not yet been filled; or
    • (E) not accepted since the patent or application number inputted is not valid.

Periodically each day, personnel at the Files Repository perform a PALM print transaction which produces a list of all accepted requests in patent number order and, for requests for abandoned files, in application number order. The printed record of each request is detached from the list when its associated file is found. It is then stapled to it. Throughout the day, periodic deliveries of files are made directly to the offices of their requestors by Files Repository personnel. Upon delivery of files at the various locations, files that are ready to be returned to the repository are picked up. For applications stored in IFW, this process is no longer necessary.

With the exception of certain older files, the drawings of patented and abandoned files, if any, are now stored within their respective application file wrappers. Since it is desired not to separate one from the other, both the file and its drawings are delivered when a file is ordered. For applications stored in IFW, it is no longer necessary to order or deliver the files.

711.04(c)   Notifying Applicants of Abandonment

The Patent Examining Corps currently mails to the correspondence address of record, a Notice of Abandonment form PTOL-1432 in all applications which become abandoned in the Corps for failure to prosecute. However, in no case will mere failure to receive a notice of abandonment affect the status of an abandoned application.

This procedure should enable applicants to take appropriate and diligent action to reinstate an application inadvertently abandoned for failure to timely reply to an official communication. In most cases, a petition to revive under 37 CFR 1.137  will be the appropriate remedy. It may be that a reply to the Office action was mailed to the Office with a certificate of mailing declaration as a part thereof (MPEP § 512) but was not received in the Office. In this instance, adequate relief may be available by means of a petition to withdraw the holding of abandonment.

In any instance, if action is not taken promptly after receiving the notice of abandonment, appropriate relief may not be granted. If a lack of diligent action is predicated on the contention that neither the Office action nor the notice of abandonment was received, one may presume that there is a problem with the correspondence address of record. Accordingly, attention is directed to MPEP § 402 and § 601.03 dealing with changes of address. In essence, it is imperative that a paper notifying the Office of a change of address be filed promptly in each application in which the correspondence address is to be changed (except as provided for under Customer Number practice — see MPEP § 403).