| Revival or Withdrawal of Abandonment, Restarting Time Periods |
Referenced Items (262, 263, 264, 265, 266, 267) |
(266) Withdrawing the Holding of Abandonment
When Office Actions Are Not Received
The purpose of this notice is to announce a practice that will minimize
costs and burdens to the practitioner and the Office when an
application has become abandoned due to a failure to receive an Office
action.
A petition to withdraw the holding of abandonment in accordance with
Delgar Inc. v. Schuyler, 172 USPQ 513 (D.D.C. 1971) is burdensome to the
practitioner since the practitioner must overcome a strong presumption
that an Office action duly addressed and indicated as mailed was timely
delivered to the addressee. To overcome this presumption, a practitioner
is currently required to submit a persuasive showing that would permit
the Office to conclude that the Office action was not received.
Accordingly, evidence which is typically required includes: copies of
records which would disclose the receipt of other correspondence mailed
from the Patent and Trademark Office on or about the mail date of the
non-received Office action, but fail to disclose receipt of the Office
action mailed that date; copies of records on which the Office action
would have been entered had it been received (e.g., a copy of the
outside of the file jacket maintained by the practitioner); and verified
statements from persons who would have handled the Office action (e.g.,
mail clerks, docket clerks, secretary, etc.).
In order to minimize costs and burdens to the practitioner and the
Office when an application has become abandoned due to a failure to
receive an Office action, the Office is modifying the showing required
to make a petition to withdraw the holding of abandonment grantable. The
showing required to establish the failure to receive an Office actio
must consist of a statement from the practitioner stating that the
Office action was not received by the practitioner and attesting to the
fact that a search of the file jacket and docket records indicates that
the Office action was not received. A copy of the docket record where
the non-received Office action would have been entered had it been
received and docketed must be attached to and referenced in
practitioner's statement.
The showing outlined above may not be sufficient if there are
circumstances that point to a conclusion that the Office action may have
been lost after receipt rather than a conclusion that the Office action
was lost in the mail, e.g., if the practitioner has a history of not
receiving Office actions. Two additional procedures are available for
reviving an application that has become abandoned due a failure to
respond to an Office Action: (1) a petition based on unintentional
abandonment or delay; and (2) a petition based on unavoidable delay. See
Manual of Patent Examining Procedure 711.03(c).
Oct. 25, 1993 CHARLES E. VAN HORN
Patent Policy and Projects Administrator
Office of the Assistant Commissioner
for Patents
[1156 OG 53]
Top of Notices (266) December 25, 2018