Instructions for Responding to a Notice of Abandonment

Respond to the Notice of Abandonment by filing one of the following petitions :

1. Petition To Withdraw Holding of Abandonment (See Manual of Patent Examining Procedure 711.03(c) I ) and 37 CFR § 1.181). No fee required.

Where an applicant contends that the application is not in fact abandoned (e.g., there is disagreement as to the sufficiency of the reply, or as to controlling dates), a petition under 37 CFR § 1.181(a) requesting withdrawal of the holding of abandonment is the appropriate course of action. Any petition under 37 CFR § 1.181, to withdraw the holding of abandonment not filed within 2 months of the mail date of a Notice of Abandonment may be dismissed as untimely under 37 CFR § 1.181(f).

For a petition to be granted, the evidence must be sufficient according to one of the following standards:

• 37 CFR § 1.8(b) Certificate of Mailing
• 37 CFR § 1.10 "Priority Mail Express®" mailing
• MPEP 503 Postcard Receipt as Prima Facie Evidence

Petition To Withdraw Holding Of Abandonment should be addressed as follows:

2. Petition To Withdraw Holding Of Abandonment Based On Failure To Receive Office Action (See Manual of Patent Examining Procedure 711.03(c) II ). No fee required.

Where an applicant contends that the original Notice of Allowance and Issue Fee Due was never received. If adequately supported, the Office may grant the petition and re-mail the Office action. The showing required establishing non-receipt of an Office communication must include a statement from the practitioner stating that the Office communication was not received and attesting to the fact that a search of the file jacket and docket records indicates that the Office communication was not received. A copy of the docket record where the non-received Office would have been entered had it been received and docketed must be attached to and referenced in practitioner's statement.

Petition should be addressed to the area handling the application as follows:

3. Petition To Revive An Abandoned Application (See Manual of Patent Examining Procedure, 711.03(c) III ).

Where there is no dispute as to whether an application is abandoned (e.g. the applicant's contentions merely involve the cause of abandonment) a petition under 37 CFR § 1.137 (a) - Revival on the basis of unintentional delay (accompanied by the appropriate outstanding reply, the petition fee, any necessary terminal disclaimer and a statement that the entire delay was unintentional) is necessary to revive the abandoned application.

The text of the rules is available at: http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf [PDF] .

Petitions under 37 CFR § 1.137 should be addressed as follows:

4. Petition For Revival Of An Application For Patent Abandoned Unintentionally Under 37 CFR 1.137(b) [PDF] , PTO/SB/64, forms are available at USPTO web site:
http://www.uspto.gov/patents/apply/forms

Note: Abandonment takes place by operation of law for failure to reply to an Office action or to timely pay the issue fee, not by operation of the mailing of a Notice of Abandonment.

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