(266) Diligence in Filing Petitions to Revive
and Petitions to Withdraw
the Holding of Abandonment
Once an application becomes inadvertently abandoned, it is incumbent
on applicant to act with diligence in providing the response
necessary to continue prosecution. Petitions to revive or to withdraw the
holding of abandonment must be filed promptly after applicant is
notified or otherwise becomes aware of the abandonment. Unless and
until the Commissioner accepts applicant's response as sufficient and
complete to revive the application or to withdraw the holding of
abandonment, the application remains abandoned and the burden continues
to rest with applicant to exercise diligence.
Some practitioners have demonstrated a lack of diligence in filing or
renewing a petition to revive or a petition to withdraw the holding of
abandonment. This appears to have been a conscious decision on the
practitioners' part based on the belief that any delay in filing or
renewing a petition could be cured by filing a terminal disclaimer
equivalent to the period of delay in prosecuting the application. While
the Office does have a policy of requiring a terminal disclaimer in
those situations where there has been a delay of more than six months in
filing a grantable petition to revive an application that has become
abandoned [37 CFR 1.137(c), 1.316(d) and 1.317(c)], the terminal
disclaimer has never been authorized or set forth in the rules as a
substitute for diligence. Indeed, such an interpretation would be
contrary to the traditional concept of reasonable diligence and is
contrary to the explicit requirement of 37 CFR 1.137(a), 1.155(b),
1.181(f), 1.316(b) and 1.137(b) that a petition to revive be filed
promptly. See In re Application of Takao, 17 USPQ2d 1155 (Comm'r. 1990).
JAMES E. DENNY
Assistant Commissioner for
Patents-designate
[1124 OG 23]
Top of Notices (266) December 27, 2011