Clarification of Application Revival Procedures
(37 CFR 1.137)
The Patent and Trademark Office (PTO) revised the regulations
concerning the revival of abandoned applications (37 CFR 1.137) in
December of 1997. See Changes to Patent Practice and Procedure, Final
Rule Notice, 62 Fed. Reg. 53131, 53157-63, 53194-95 (October 10, 1997),
1203 Off. Gaz. Pat. Office 63, 85-90, 119-20 (October 21, 1997).
The provisions concerning the revival of an abandoned application on the
basis of unintentional delay (without a showing that the delay was
unavoidable) were revised to eliminate the one-year filing period
requirement. The revised rule requires 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(b)] was
unintentional." See 37 CFR 1.137(b)(3)(1998). The PTO receives numerous
petitions under 37 CFR 1.137(b) containing an "unintentional" statement
that varies from the language required by 37 CFR 1.137(b)(3): e.g., "the
abandonment was unintentional," "the delay was unintentional," "the
delay caused by the abandonment was unintentional." Some petitions do
not include 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(b) was unintentional."1
To expedite the treatment of such petitions, the PTO conditionally
grants petitions containing a statement that does not comply with 37 CFR
1.137(b)(3). The decision granting such a petition includes a paragraph
stating that: (1) the statement in the petition does not comply with 37
CFR 1.37(b)(3); (2) the statement in the petition is being construed as
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(b) was unintentional;" and (3) petitioner must notify
the PTO if such an interpretation of the statement in the petition was
not correct.
Applicants filing a petition under 37 CFR 1.137(b) to revive an
abandoned application should either use the forms provided by the PTO
(PTO/SB/64 or PTO/SB/64PCT) or ensure that the statement "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(b) was
unintentional" is included in such petition. These forms (and other
forms provided by the PTO) may be downloaded from the PTO's Web site at
http://www.uspto.gov. Even if an applicant considers it necessary or
desirable to include a statement of the facts concerning the delay, such
statement should include (e.g., begin or end with) the 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(b) was unintentional."
The PTO anticipated that the December 1997 revision to 37 CFR 1.137
would reduce the number of petitions under 37 CFR 1.137(a) (on the basis
of "unavoidable delay"). This is because petitions under 37 CFR 1.137(b)
require less effort (statement(s) rather than a showing accompanied by
documentary evidence) and are evaluated under the less stringent
"unintentional delay" standard. Nevertheless, the filing of petitions
under 37 CFR 1.137(a) has not decreased.
This appears to be because the PTO's published discussion of the
revision to 37 CFR 1.137(b), supra (indicating that the PTO may require
further information if the period between the date of abandonment or
mail date of a notice of abandonment and the filing of a petition to
revive exceeds certain benchmarks), has lead applicants to the
conclusion that petitions under 37 CFR 1.137(b) are no less burdensome
than petitions under 57 CFR 1.137(a). Applicants determining whether to
file a petition to revive an application under 37 CFR 1.137(b) or
1.137(a) should take the following into account:
First: The PTO relies upon the applicant's duty of candor and good faith
and usually accepts the 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(b) was unintentional"
without requiring further information in the vast majority of petitions
under 37 CFR 1.137(b). This is because the party presenting a paper is
obligated under 37 CFR 10.18 to inquire into the underlying facts and
circumstances when the party provides this statement to the PTO. See
Changes to Patent Practice and Procedure, 62 Fed. Reg. at 53160 and
53178, 1203 Off. Gaz. Pat. Office at 88 and 103 (responses to comments
64 and 109).2 In addition, providing an inappropriate statement in a
petition under 37 CFR 1.137(b) to revive an abandoned application may
have an adverse effect when attempting to enforce any patent resulting
from the application. Patents have been held unenforceable due to a
finding of inequitable conduct in submitting an inappropriate statement
that the abandonment was unintentional.
Second: Even if the PTO requires further information in a petition under
37 CFR 1.137(b), the petition under 37 CFR 1.137(b) is significantly
less burdensome to prepare and prosecute than a petition under 37 CFR
1.137(a). The PTO is almost always satisfied that "the entire delay . .
. was unintentional" on the basis of statement(s) by the applicant or
representative explaining the cause of the delay (accompanied at most by
copies of correspondence relevant to the period of delay). A showing of
unavoidable delay will (in addition to the above) require: (1) evidence
concerning the procedures in place that should have avoided the error
resulting in the delay; (2) evidence concerning the training and
experience of the persons responsible for the error; and (3) copies of
any applicable docketing records to show that the error was in fact the
cause of the delay. See MPEP 711.03(c)(III)(C)(2). In addition, a
petition under 37 CFR 1.137(a) must establish that the delay was
unavoidable, and not just that it was unintentional. Thus, many
petitions originally filed under 37 CFR 1.137(a) end up being granted
under 37 CFR 1.137(b) when the applicant realizes that sufficient
evidence concerning the delay is too difficult to obtain or the cause of
delay simply does not amount to "unavoidable delay" within the meaning
of 37 CFR 1.137(a) and resubmits the petition under 37 CFR 1.137(b).
Third: Since the "showing" requirement and "unavoidable delay" standard
of 37 CFR 1.137(a) are more exacting than the corresponding requirements
of 37 CFR 1.137(b), a petition under 37 CFR 1.137(a) is less likely to
be grantable as filed than is a petition under 37 CFR 1.137(b). The PTO
typically renders a number of interlocutory decisions dismissing a
petition under 37 CFR 1.137(a) and requesting additional evidence until
either the applicant provides a satisfactory showing of unavoidable
delay or the PTO concludes that the applicant cannot provide a
satisfactory showing of unavoidable delay. Thus, the period between when
an applicant first files a petition to revive and the PTO renders a
decision granting or denying that petition is, more often than not, much
longer if the petition is under 37 CFR 1.137(a) than it would be if the
petition were under 37 CFR 1.137(b).
Inquiries regarding this matter should be directed to Senior Legal
Advisor Robert W. Bahr at (703) 305-9285.
August 4, 1999 STEPHEN J. KUNIN
Deputy Assistant Commissioner for
Patent Policy and Projects
1. 37 CFR 1.137(b) as originally adopted in 1983 required the statement
that "the abandonment was unintentional" (see 37 CFR 1.137(b)(1983)),
and was amended in 1993 to require the statement that "the delay was
unintentional" (see 37 CFR 1.137(b)(1994)). Thus, this situation appears
to be due, in part, to the use of outdated forms or petition templates.
2. It is noted that MPEP 711.03(c)(III)(D) states that the PTO "will"
require further information if a petition is filed ouside cetain
benchmarks, where the rule notice states only that the PTO "may" require
information in those situations. See Changes to Patent Practice and
Procedure, 62 Fed. Reg. at 53159, 1203 Off. Gaz. Pat. Office at 86-87.
Since the PTO relies upon the applicant's duty of candor and good faith
without requiring further information in the vast majority of petitions
under 37 CFR 1.137(b), the MPEP will be revised to state only that the
PTO "may" require further information and to eliminate the language
which encourages applicant to provide such information in an initial
petition under 37 CFR 1.137(b).