Patently Strategic - Patent Strategy for Startups
Patently Strategic - Patent Strategy for Startups
Patent Abandonment and Revival
Patent abandonment is the premature relinquishment of patent rights for an invention. Abandonment can happen voluntarily for various strategic and cost reasons, but can also happen silently and unintentionally. It can happen before the right is even granted in the case of public disclosure. But it can also happen after the patent has been granted at many key points in its otherwise useful life and window of exclusivity. Like with other property rights, securing your patent isn’t the end of the line in maintaining that property right. Like property taxes for land and annual registration for automobiles, patents have deadlines and fees that, if not properly managed, can lead to loss of that right. And in all cases – whether abandoned intentionally or by accident - the invention becomes part of the public domain, and the rights holder's exclusivity window to prevent others from using, making, and selling the invention is terminated short of the otherwise expected 20–year term.
** Episode Overview **
Fortunately, with careful management, the problem can be avoided entirely. And for many unintentional cases, if caught quickly enough, there are remedies for reviving your rights. To help unpack all of this and conquer your fears of abandonment, Albert Du, Patent Strategist and Chief Mindfulness Counselor at Aurora, leads today's discussion with our all-star patent panel, delving deeply into all things patent abandonment and revival. Along the way, Al and the panel:
⦿ Provide a general overview of the utility patent lifecycle to help better frame key points at which abandonment can occur
⦿ Discuss the types of abandonment and the statutes governing each
⦿ Break down when and how to revive an abandoned patent
⦿ And as always, offer countless practical pointers to keep in mind before, during, and after patent prosecution to help avoid what can at best be a costly legal process – and at worst, a complete loss of patent rights.
** Related Past Episodes **
⦿ Public disclosure and the on-sale bar
⦿ International patents
⦿ Software patents
⦿ Patent Prosecution Highway
⦿ Continuation practice
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Josh: [00:00:00] Good day and welcome to the Patently Strategic Podcast where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion among experts in the field of patenting. It is for inventors, founders, and IP professionals alike. Established or aspiring. And in this kickoff to our sixth season, we're dealing with abandonment issues.
Perhaps not the kind that might first come to mind, but I can assure you that tuning in will save future self a fortune in therapy bills patent abandonment is the premature relinquishment of patent rights for an invention. Abandonment can happen voluntarily for various strategic and cost reasons. Can also happen silently and unintentionally.
It can happen before the right is even granted. In the case of public disclosure, and we've covered this a lot, but it can also happen after the patent has been granted at many key points in its otherwise useful life and window of exclusivity, like with other property rights, securing your patent isn't the end of the line in maintaining that property, right?
Like property taxes for [00:01:00] land and annual registration for automobiles, patents have deadlines and fees that, if not properly managed, can lead to loss of that, right? In all cases, whether abandoned intentionally or by accident, the invention becomes part of the public domain in the rights holder's exclusivity window to prevent others from using, making and selling.
The invention is terminated short of the otherwise expected 20 year term. Fortunately, with careful management, the problem can be avoided entirely and for many unintentional cases if caught quickly enough, there are remedies for reviving your rights to help unpack all of this and conquer your fears of abandonment.
Albert Dew, patent strategist and Chief Mindfulness counselor at Aurora leads today's discussion with our all-star patent panel, delving deeply into all things patent abandonment and revival. Along the way, Al and the panel provide a general overview of the utility patent lifecycle to help better frame key points at which abandonment can occur.
Discuss the types of abandonment in the statutes governing each break down when and how to [00:02:00] revive an abandoned patent. And as always. Offer countless practical pointers to keep in mind before, during, and after patent prosecution to help avoid what can at best be a costly legal process. And at worst, a complete loss of patent rights.
Al is joined today by our always exceptional group of IP experts, including Dr. Ashley Sloat, president and Director of Patent Strategy at Aurora. Dr. David Jackal, president of Jackal Consulting. Kristin Hansen, patent strategy specialist at Aurora. Dr. Tiffany Miller, patent strategist at Aurora and Marie Smith, patent agent at Break Hughes Beman, LLP.
I mentioned at the top that this is the start of our sixth season, and over the course of the preceding five, we've covered a ton of ground. If at any point during the conversation the panel uses a term you're less familiar with or just want to know way more about, I highly recommend you check out our past episodes.
In particular, our coverage of public disclosure in the on sale bar, international filing software, patents. The Patent Prosecution Highway and our [00:03:00] excellent series on continuation practice. I'll be sure to link to all of these in the show notes. And now without further ado, take it away Al.
Al: today we'll be discussing one of the most critical and often one of the items of the US patent process that scares us as patent practitioners the most because of the high stakes and loss of rights to a client and or adding a big expense to the patenting process.
Abandonment, of course. Um, and of course, in the unfortunate event that it's needed, revival. We'll go over how and why applications become abandoned, the available remedies for restoring rights and practical strategies for staying compliant and avoiding costly mistakes. Generally, this is a fairly statutorily and pro procedurally heavy area, and more details will be in the slides, but I'm gonna try to keep this more conversational.
So please feel free to chime in with your own stories and anecdotes, obviously. Um, [00:04:00] I'll note that we typically encounter three forms of abandonment, statutory caused by failure to respond or act within time limits express when the applicant deliberately withdraws an application under one point, uh, 1.138, and, uh, procedural such as missed fees or national stage entry.
Um. The rules to abandonment, ensure fairness and efficiency in pro prosecution while preventing applications from indefinitely delaying examination through extended filings. As you'll see, abandonment can occur throughout the patent process.
We'll begin with a quick overview of the utility patent lifecycle. Generally, we have no public disclosure. Uh, we want no public disclosure to occur before we, uh, we get to the filing. But it does happen and we got, we still have a one year grace period that applies before filing. The, the application.
It could be a provisional, it could be [00:05:00] a non-provisional, it could be ju just jumping straight to PCT or provision non-provisional, but the provisional then is filed. And adds another year of time before PCT or non-provisional filing. And eventually under PCT, um, national Stage filing, uh, is gonna occur 30 months after the, the priority application, which is in this case would be a provisional application.
Uh, once this occurs, formal prosecution by the U-S-P-T-O com commences, and then there's a back and forth between the applicant and the office to hopefully result in issuance of a patent once issued maintenance fees, and start to begin at, at intervals of three and a half, seven and a half, and 11 and a half years.
So, and then if, actually one quick,
David: uh, quick comment on that, not to side side the line the discussion too much. Sure. But, um, you know, the US has, is very nice and [00:06:00] lenient with this one year grace period. Yeah. After public disclosure, but most other countries around the world are not. So, I, you know, if you.
Really you, if you wanna be, able to file your invention in patents around the world, you have to fi, you have to file that provisional before any public disclosure, which includes the, uh, uh, on sale bar, offers for sale are included in that. So it's, uh, yeah, something to keep in mind, I guess.
Yeah, exactly. And, and
Al: I'll get into that even further later. No, um, yeah, no worries. Uh,
Ashley: yeah, it's probably worth noting that this is, this is probably a more US-centric, um, presentation. You know, a lot of the statutes and stuff that Al goes through are more US-centric. But today's point, a lot of, like the overarching idea of this kind of applies to lots of different countries, right?
I mean, other countries have different maintenance fee schedules, but if you fail to pay those in those countries, that can still be a problem. You know, if you fail to reply to things in other countries, it [00:07:00] can still be a problem. So like the overarching themes are applicable to really any country, but this is, you know, more centric on US statutes and, and things of that nature.
Al: Exactly. So at each step of the process, pre-filing and post filing, um, prosecution, we'll apply a legal overview of abandonment in the US Penn practice and review common causes and statutory tri triggers and discuss revival mechanisms. As always, we'll finish with the practical takeaways that, that are based on what all these statutes mean to us as practitioners.
so basically abandonment arises primarily during the patenting process under 35 USC 1 33. But can also occur before we've even filed anything under 1 0 2 and, uh, 3 3 71. The procedural rules are found in 37 CFR 1, 1 34, and uh, 1 1 38. And the US [00:08:00] guidance is in MPEP, uh, seven 11 through 7 11 0 3.
Uh, although a lot of these sections often cross cross reference to one another.
So what happens during pre-filing abandonment? Um, what we consider that is basically applicants may publicly disclose or sell, um, or like, uh. Their, their products. But then this disclosure may put the pre-filing idea on a deadline in the US we happen to have that one year grace period as we were talking about that, uh, the disclosure starts the clock on.
In other countries, uh, they don't have the grace period like David was talking about. And, uh, some have even shorter, have even shorter grace periods of six months. Um, the problem is that once these quote unquote abandonments occur, there's no way of putting that the cat back in the bag. And that disclosure is now fair game as priority against anything else the applicant wants to [00:09:00] file in the, in relation to the disclosed invention the other.
Big pre-filing issues in the US involved, uh, missing national stage entries, uh, that 30 month deadline under 3 71. And, uh, even, but at least in that case, we, if it's unintentional, a petition can be filed to recapture this claim of priority.
Uh, and we kind of go over that, um,
throughout. So the, the, the main things obviously are to look out for these brace period issues, uh, like printed publication, whether it's in public use and or on sale or otherwise available to the public. And then the, the keeping track of that 30 month deadline for the
PCT applications.
Post provisional filing. If no
conversion to PCT or non-provisional application occurs within 12 months, the the rights to the priority date are lost. However, provisionals are not published by the U-S-P-T-O unless there's at [00:10:00] least not a worry, public disclosure from the PTO. Um, even if the provisional filing deadlines passed similar to the PCT filing, if it's unintentional, a petition may be made to claim that benefit back.
Although there's no guarantee the PTO will grant that petition. Difficulty comes when, when for provisionals specifically, when, uh, say like a pro se or, um, inventor is trying to, um, actually provide that or file the application themselves. A lot, not a lot of information is published, so there's. Getting access to information related to that provisional may be difficult.
And it's not always in on the website without having access to patent center. And if that's, if there's any sort of issues or any sort of rejection that occurs, then those inventors might be, might have a hard time finding that information and, and keeping track of [00:11:00] it in general. And so, um, in some ways we try to try to recommend them to use patent practitioners just because of that.
Right.
Ashley: Yeah. And I can give, I can elaborate on that. We had a client where they had, um, and this isn't, I can't remember if this is the first time we've had this or not, but I mean, we've had, uh, clients who've filed things themselves, um, not be able to access and not have, you know, documentation and things like that, which makes it difficult.
But we had one particular one where. We went to file their PCTA couple weeks out and they had filed a provisional themselves, had asserted micro entity status, never provided the paperwork for micro entity status, arguably were not micro entity, uh, based on household income. And, um, ends up getting an abandonment notice for the provisional that they didn't receive, weren't aware of 'cause they didn't have a customer number and didn't have access to it in patent center.
So we had to claim priority to an abandoned provisional in the [00:12:00] PCT at the same time as trying to revive it. And, you know, and it all worked out just fine. The priority date was recognized and it was revived. We paid an expedited fee to make sure the provision was, you know, revived more quickly. But it was, um, definitely a less ideal situation.
So even if you kind of draft your own thing, working with somebody for that to be under their customer number is, is a
nice to have.
Al: Let's see, moving on. Post filing. Other common causes of abandonment include failure to pay the issue fee, failure to pay maintenance fees, or simply failure to respond to an office action. And, uh, 35 USC 1 33 really sets this out as a six month requirement to respond with a few exceptions. And these post filing abandonments are generally classified as intentional or unintentional.
Abandonments. Um, intentional abandonments occur when the applicant affirmatively decides not to continue prosecution. Usually by filing a express abandonment, [00:13:00] such as for a strategic or financial reason. Other, uh, often the decision to cease action on an application may also be considered abandonment, even though this is not expressly done.
So a lot of times, we'll, we'll just not do anything or not act, um, based on the client's, uh, uh, decision or, or based on their in instructions. Right. And, and. That at least gives us some time if, if they ever want to change their mind, right?
Kristen: I'm gonna just insert a practice tip there.
So what I typically do when it's not an express abandonment, but I know the client doesn't wanna move forward, is I will call an examiner and tell them, listen, it looks like the client will not be moving forward with this. It is likely going to abandon. Um, so they can plan it. And then I also say something like, you know, it's not set in stone, but I like to give you the thought, the most UpToDate thoughts of what the client is [00:14:00] thinking.
Um, so that way they know, hey, we might pull it back, we might actually respond, but they can kind of plan because they get paid for an abandonment. They can plan it in their bi weeks, they can plan it in their timing. Um, it just keeps you on good ground with an examiner. Should you run into that examiner again or have other cases with that examiner?
Al: And we often do. And so it, I I've actually never thought to necessarily call them about it. I don't think they get mad all the time, but I, I can see they, they do call us about it sometimes. Sure. So that we, they,
Kristen: which we appreciate when
Al: they're getting close. Yeah, exactly right.
Kristen: Like, reminder, this is gonna go abandoned.
Al: So for unintentional a abandonment. On the other hand, uh, these occur when the applicant wanted to continue with the prosecution but missed a deadline due to oversight or a mistake.
And a lot of these, a lot of times, these qualify for revival under 37 [00:15:00] CFR 1 1 3 7. Uh, the key in these cases lies in the applicant's intent at the time of the missed action.
The US PT O will often accept a good, good faith statement that the delay was unintentional, but if evidence, if anything, suggests otherwise, the petition could be denied. Right.
David: I actually won't get into the details of the case, but spoke with someone at the petition office just a couple of weeks ago, um, about this, uh, about a a a a, uh, a petition to revive an application that was unintentionally abandoned. And they said that it was almost rubber stamped. It was, if, if you can check all the boxes that it was be, it's less than two years and it, the, all, the entire delay was unintentional.
Especially if it's like a very short delay between whatever. Yeah. Time, you know, with the abandonment and when you're fixing it. They said it's pretty much rubber stamped and actually the paralegals [00:16:00] at the pa at the petition office handle those and they pretty much just get turned around. Yeah.
Kristen: Yeah. But gimme the money.
Gimme the money.
Ashley: I would, yeah, exactly. I would. I would say if your client did, um, at some point say in the email like, oh, we can't do this, we don't have the money, and you file something, it may get rubber stamped, but in litigation it may come up and they were, you know, that you weren't. Right. So that's, that's the line is yeah, it's probably rubber stamped, but as practitioners, you know, we always keep copies of when clients make abandonment instructions and so that it's kind of living somewhere.
Right. And, and so if they try to be like, well, actually, it's
David: like, well, yes, no doubt. The key is that it really was unintentional, I think. Right?
Ashley: Yeah. Yeah. Yep.
Al: And, and I think the, there's some interesting reasons to expressly abandon as well, where the statutes themselves mentioned a couple, uh, [00:17:00] avoiding publication, receiving a refund for your search under excess claim fees.
Um, and other abandonments in favor of continuation. Um. The difficult thing, I think is, I, I'm not quite sure where, when that abandonment in favor of the continuation would be, would be valuable to you. I, I think having an allowance might be more, uh, more worth it for your patent portfolio, but if anyone's got any anecdotes for that, that'd be great.
Marie: Yeah, I can answer that question. Cool. I had a client who, um, many years ago did, uh, a track one, got an allowance and then realized they did not want the case to publish. They had done a non pub, oh. They didn't want it to publish. So we, we didn't expressly abandoned, but we abandoned the case by not paying the issue fee and filed a con with the [00:18:00] exact same claim set as a, as a delay time delay, and, hmm.
That was one. And then we got another allowance and they still didn't want it to issue. So we filed, we abandoned that, filed another con, didn't pay the fees. 'cause that gives you a little bit of time when you get the notice. Didn't take extensions on the notice. Did it again. Got another allowance. Still didn't want it to publish.
Al: Oh my gosh. So
Marie: we filed another con and what I did is I added one single independent claim that was so ridiculously broad. You knew you'd get a first office action.
Mixed: Gotcha. That's funny. And
Marie: then all you had then, then the examiner allowed it minus that one claim. You responded to the action by canceling that one claim.
And I swear it was probably two years [00:19:00] later, we finally let it go through. Be allowed and published. So where the, where there's a will and money. That's how I put that one, because think of what all this costs. Yeah. Money is key. Money's
Al: the key. Yeah.
Marie: They never, they never sort of express abandon. So they didn't really get any, any refunds back, but they kept filing cons and they kept, you know, not paying issue fees, I guess.
But still You kept filing applications, filing application.
Mixed: Yeah.
Marie: Yeah, yeah. Filing fees. And then, you know, I think that w we played a little bit with taking an extension or two here and there to buy more time. And remember it was an interesting exercise that we should accomplished
Kristen: and, and now those of us on here do a lot of small entity and micro, remember she's probably talking about a large entity client.
Yeah. Yes.
Marie: Huge, huge entity client if that could be a classification. So they had the money to do this because when you think, when I thought about this first they paid for the track one, then they said, oh, we [00:20:00] don't want it to publish. And then it was probably the world came to the world's most expensive patent that was valuable.
Ashley: The only other, um, example I can think of that we've used a couple of times, and this is actually I think one of the better use cases for express abandonment is we've had clients where it comes to a conversion and they're just not ready to fully convert. And in the, you know, and if their US is their primary market or most interesting market, they're less worried about foreign filing rights.
We've done. A conversion, but then you maybe didn't pay fees on the that conversion and then file a CIP 'cause you know, they'll get data within a few months or something. Then do a CIP and expressly abandon the con, um, to kind of create that bridge of priority dates. So it's again, a little bit more expensive 'cause you, you do have to pay the con fee because you, it has to be co pending.
So you do have to pay that con fee and then you gotta pay the CIP fee. [00:21:00] But then a part of the express abandonment petition is you can ask for search and examination fees back and I think you do have to have a deposit account, but I think it puts them back on there. Um, and you know, if you do it timely enough, you can get some of the fees back.
Um, and it creates that bridge for them to have a little bit more time to get data and things like that. So that's where we've used it probably a handful of times to help clients kind of create that bridge to getting data or, you know, if they just. Don't respond to us for weeks and weeks and weeks on end for a conversion, and all of a sudden it's like, oh crap.
You know? So, um, yeah,
Al: you could probably take the, the first two extensions of time, which are a little cheaper than the, the next two more.
Yeah, for sure.
Or three.
Once an application becomes abandoned on accident, the key revival path under is under 37 CFR 1, 1 34, 1 37, um, under subsection A related to [00:22:00] unintentional delay. And applicant simply provides a statement that the delay was unintentional, files the required missed reply and pays the required fee. Uh, unintentional delay includes events such as mis docketing, missed responses due to email filtering changes of address, resulting in missed reminders or during transitions between firms.
Um, there's. Probably a million other anecdotes for that. Uh, any, uh, anyone have super interesting ones on that one or just generally missed deadlines anyway,
Kristen: I don't have like a, a story, but I just, what's not coming through in these slides that I think the audience that won't appreciate yet. These fees are exorbitant.
These are not like mini 203, $400 fees. These are, these are thousands of dollars thousands.
Al: That, that's exactly what I was gonna get to.
Kristen: Okay. I'll let you go. That's
Al: okay. Um, so the thousands, where am I, the
Ashley: Marie, did you have an
Marie: [00:23:00] anecdote
Ashley: before we, or do you wanna go through the fees?
Marie: If there's a, if there's a case with an issue, they usually show up on my desk, but just an um.
Kinda word of caution. FYII had an allowance where an examiner checked the wrong box on the, um, issue notification and checked a box that the figures had not been accepted. But in previous prosecution in the case, the examiner had accepted the figures. So when I called the examiner and the examiner said, oh, I checked the wrong box.
What I needed to do was make the examiner issue a supplemental notice of allowance. But that box unchecked, the examiner never did. So I paid the issue fee and I didn't supply any new figures because the figures had not been accepted. According to him, though, they had been during prosecution. Um, so the case went abandoned and I fought that with tech [00:24:00] center quality people and, and.
Supervisors and 'cause I, I was so angry. Mm-hmm. Um, but basically it came down to, you know, the PTO kind of hires, I think they still do outside contractors to just do these checklists when your case is allowed. And it didn't check the box. The examiner said I needed figures, I didn't file figures, case went abandoned.
So, you know, after he had paid all the money and almost a year later the case did issue. But it was a hard learned lesson. You know, it, the examiner was really not very good. Um, and it was on him to issue that supplemental notice. But bottom line is now, anytime before I pay an issue fee, I just double check all of that.
And if there's, all I had to do was file the same exact figures and say they were replacing figures and everybody would've been happy. So, and it would've saved the client a [00:25:00] lot of money in about a year. Anyway, just, it's all the procedural stuff that can really be daunting at points.
Al: And, and was was that like, uh, you're, you're just petitioning the director in that case?
'cause it's like a holding abandonment,
Marie: you know, to revive it, I went through the same process uhhuh that you, you would do if you maybe, I don't know, didn't pay the issue fee. It really was nothing special. Okay. The thing that I think bothered me is when I made some phone calls to the, uh, to the office because, and pointed out the errors, um, I had to call the examiner's supervisor to get him to at least put on the record that he had had a telephone conversation with me where he said he had made an error.
Mm-hmm. The record showed there was a discrepancy and then someone in, like the technology center office had said to me. [00:26:00] Had actually said to me, don't worry about, it was right about on the holidays. Once the holidays are over, I'll pick it up and we'll get this issued. Then she calls me back in January and says, well, I can't do it because procedurally it doesn't check all the boxes.
So that just got me even madder. So, you know, 'cause I kind of said, okay, yeah, you know, I made my point and whatever. Um, uh, but yeah, so again, I feel like if you say you're sorry and give the office a couple of thousand dollars, they'll give you whatever you want.
Al: Yeah.
And, and, uh, on that note, the, the fee structure right now for that petition, these petitions is 2100 for the large entities and 10 50 for small.
So it's expensive. Uh. An interesting thing is that in the past, 1, 1, 3 7 was separated into unavoidable and unintentional. Uh, so, uh, but the unavoidable [00:27:00] portion was removed in 2013 under the Patent Law Treaties Implementation Act of 2012. And so now delays of greater than two years are still petition during, uh, during the patent term.
Um, but, uh, the, those unavoidable events were more like related to like force majeure events like hurricanes, fire, and, um, death and sickness of practitioners and stuff like that. And obviously because everything's coming through email now, it's a lot, you can't just say the, the, that the, uh,
the post office didn't send it to you.
Right.
I
Tiffany: do wanna make a quick comment on the, um, with the hurricanes, uh, when we had that, the, uh, I think Hurricane Irma, hurricane Milton going on and there was actually flooding in like eight feet of flooding in the communities. And some of the inventors, that I've [00:28:00] heard about weren't able to make deadlines and, um, the patent office was not responsive to, um, they were not responsive to that, the hurricane floods and the devastation at all.
Um, and then they said, look, if you're missing a deadline, we're not going to waive anything. So I think certain natural disasters are more responsive to than others. Interesting. But I thought it was, yeah, I thought it was kind of crazy that they wouldn't, you know, give any extensions or anything. Um, because from some of the hurricanes,
Ashley: that's 'cause they wanna make money, Tiffany.
Tiffany: Absolutely.
Ashley: I agree. That's interesting. I feel like there should be like a, a like grace button. I mean, the, the burden of proof should be high on it. You know, where you're like, okay, the six month statutory. [00:29:00] Whatever is gone, but I'm gonna get an extra two months grace, um, you know, with a fee or like a smolder fee than a, than revival.
But you know, like you gotta prove that your address was in an affected area and that affected area shows up on whatever national database for whatever, you know what I mean? There should be some way that they could cross validate that, because that is kind of crappy.
Al: Yeah. Yeah.
Let's see. So moving
on. Um,
the next slides are really related to the statutes that set out this six month time period for action and the results. If they're missed, um, we can generally assume a six month deadline at the latest, assuming, obviously taking account for additional costs for extensions of time.
But you should basically review all the notices and actions for changes to those deadlines. Um.
Ashley: Well, and I think actually real quick, I think you had on the previous slide too, I think something that trips up pro se um, inventors to those that represent themselves in [00:30:00] particular is that they give incomplete replies.
Right. That's where I've seen it the most is that they try to reply to something but it's incomplete. Like they don't respond to every single, um, thing in the office action or the missing parts, whatever it is. And then they, you know, and then they all realize that even though they replied in the right timeframe with an incomplete reply, then they, when they reply again, they gotta pay the extension of time 'cause it wasn't incomplete reply.
And they get this like rabbit hole of, um, wasted time and effort had they just worked with somebody, you know, could have gotten it done without extensions of time and things like that.
Mixed: Yeah.
Kristen: And some of that isn't even well known. I mean, I worked with a very prominent litigator who looked at a, a response of mine one time and said, but you didn't respond to all of the rejections.
And I said, well, yes I did. If you see this boilerplate paragraph here, I responded, I noted all of the rejections, then I responded to the ones I found important. Then I gave a boilerplate, you know, [00:31:00] paragraph that said, Hey, without blah, blah, blah. Uh, and you know, it was. Unintentional if this was missed. But I believe I've responded to everything.
Um, and she just hadn't ever worked in prosecution in that manner. And so in her head, I should have went through every single claim, every dependent, everything, and responded explicitly. And I'm like, no, you don't want me to do that. You do not want me to put that on record. Um, coming into
Ashley: the litigator too, because it's like they're the ones who are like, you know, don't put all that crap on the record.
Kristen: Well, and she was looking at it in terms of somebody else's litigation team was going to look at this and question whether it was legit. Okay. So it was, she was coming from a little different angle than her, uh, practice where she would be upholding it and looking for errors. But it, it was interesting. Um, so she learned something that day, but I did too.
'cause I thought, oh, I thought this was really a common, common knowledge thing. But [00:32:00] most inventors maybe wouldn't know that either if they were
pro se. Yeah.
Al: Moving on. I guess the,
um, I wanted to go over, uh, so seven 11 and 7 0 1 and oh two, uh, particularly note a few special situations where abandonment can occur. Um, we just wanna basically with, with regard to these ones, we wanna take note of them and keep them in the back of your head to help prevent them from happening.
Um, but I mean, beyond that, they're, they're kind of particular situations anyway. Um.
And now we'll move on to how to revive or remedy these issues. If they arise in practice of revival requires, uh, filing a petition to revive, including the missing response or fee that caused abandonment, and then submitting a statement that the delay was unintentional, as well as paying the petition fee for that, uh, for that petition.
This filing will result in a decision from the patent [00:33:00] office. Uh, and, uh, key practice tip includes, uh, filing as soon as you discover the abandonment. 'cause, uh, prompt action really helps strengthen your credibility and minimizes questions about the intent. Right? Um, if you. If you start doing this a little too slowly, then they start thinking, oh, it could be you're, you're delaying for some time and, and, you know, taking advantage of the system a little bit, although hitting the deadline's important.
Another aspect to this is considering what may constitute a correct reply by the PTO to different actions. If this application goes abandoned unintentionally, a reply may not have met all the requirements as we were just talking about. And understanding the re reply requirements of these statutes are, is necessary to fix this.
So, and these reply requirements are really tied in, um, or really described explicitly furtherance, uh,
NPP 7 11 0 3.
Ashley: And [00:34:00] to Kristen's earlier point, I think Al showed on the screen that the petition is $2,100 US dollars for And is that a large entity? Was that the large entity? Large
Al: entity, yeah. Large entity. The smallest 10 50. So half that. And then, yeah.
Ashley: And then, but that, like you said, Al, that's still like extensions of time because if it were six month reply window, you paid three months of extension of time plus the petition fee.
Mixed: Yeah.
Ashley: Plus, you know, I mean, it can, it can easily be a two grand with all the fees, um, plus the actual response.
Al: And if it's for like, uh, missing parts or restriction requirements, we, we, we have like five months instead of just time of time. Extens of time.
Mixed: Yeah.
Al: Those are, those are the strange ones where like they're not just the six months, uh, but they're not, I don't think they're like fully considered an action by the patent office in a way
Kristen: they're not.
But like for an appeal, you have five months extension time, so you have total of seven. I can't think of [00:35:00] what else though. That missing part. That's the missing
Al: parts and the restriction requirements.
Kristen: Yeah. Or restriction. Oh yeah. That could be, I haven't looked that one up in a while.
Al: Yeah. If the PTO made a mistake holding the application is abandoned, kind of, uh, similar to the situation where Marie was talking about, um, then a petition to the director may be made without, without a reply.
So in that case, you don't actually have to file the missing reply or response that was, uh, missing, but then you, you still have to pay the fees. You have to, um, petition the director and, and, uh, provide that information
to them. in, in this case,
instead, we're arguing that the PT made a mistake. So we, you calling the application abandoned.
So we're petitioning the director to have them fix what that mistake, right?
So for priority claims petition for unintentional delay or priority claims is under 37 CFR 1 [00:36:00] 78 instead, and maybe utilized to fix those abandoned claims to priority rights. So in, in the case of a provisional, you reference the provisional petition, provide them with a petition fee and a statement that the delay for claiming that benefit
was unintentional.
So just making sure you keep track of that 12
month deadline, um, can really prevent having to pay that petition fee.
So finally, let's turn to some practical ways to avoid abandonment. First. Obviously, keeping a good, robust docketing system with, uh, some sort of redundancy is super important. Um, confirming client instructions in writing, especially with regard to abandonment, uh, uh, verifying fee payments and U-S-P-T-O confirmations and then monitor.
Just monitoring patent center regularly is, is important. If you discover abandonment, act immediately, verify the reason, [00:37:00] prepare the petition, and file a proper response promptly, and then waiting too long can really weaken your argument that the delay was unintentional. So basically to wrap up, know the statutory deadlines, use your extensions wisely.
Uh, file revival petitions as soon as they're discovered. Um, maintain written evidence supporting the unintentional day delay and, uh, periodic audit might be useful. And I think abandonment can really happen to anyone, but with good systems and prompt action rights can often be restored. Remember to utilize your resources, uh, such as practitioner that might be able to help keep you up to date with all these items and, and keep track of everything.
Any questions and comments.
David: Know. Yeah. Thanks Al. First I'll say thanks. It's a great, uh, overview of all of this. And you're right, it can happen to anyone. It's like these things are complex, a lot of stuff going on. [00:38:00] Um, so for instance, a kind of similar to Marie's story, but something we're always watching out for is after final, after final office action.
So let's say you get a final office action, but some claims are allowable. So now you can file an after final response just taking the allowable content, and it should be no problem. But if the examiner doesn't send that notice of allowance within the six months of the final office action, you have to file an RCE.
Mm-hmm. That is on the, that's on the, that's on us, that's not on the patent office to hit that deadline. So we, like you said, try to file those early as quickly as possible, and then we usually also call the examiner to let them know that that's there so that they don't, um, miss it. But yeah, it's really so many places where this can, this stuff can come up.
You really have to be vi vigilant.
Ashley: Yeah. I think we had a situation with another practitioner where he had submitted, um, to your point, David, after [00:39:00] final, but it wasn't, I don't think it was taking a level of subject matter. It might have been like a. I can't remember what it was, but the examiner just took forever to pick it up and um, you ended up kind of running up against that six month deadline when they should have picked it up and should have issued some notice of appeal or, I can't remember what it was, but it was a little bit different track.
It wasn't allowable subject matter, but yes, you really gotta, that's where I think a lot of docking systems, you know, now maintain that six month Yeah. You know, number that date so that even if you, you know, close out other things 'cause you replied to 'em, it still has that and actually keep that six month date increase.
You don't get back the reply that you're thinking that you're gonna get. Um, yeah. 'cause it's tricky. Your big
Kristen: rule of thumb on on office, final office action responses. Now, if you can get that in by the two month date, two months after you receive the office action, the examiner must reply by the three month date.[00:40:00]
So then you would at least know if it's going to move to allowance, you would know that you don't have to pay the RCE. Um, and then the other piece that I do, if I'm in a situation where I have allowable subject matter and we figured something out in our examination or in our, um, examiner interview, so we have allowable subject matter and I can turn that around and get that in allowable form, but I didn't quite get it right.
Mm-hmm. I can call the examiner and say, okay, call me if you want me to amend this so you can do an examiner amendment to allow it. Because they're happy to take that if you'll do the work for them, they're happy to take that and move it into a examiner's amendment to allowance. But, you know, if it's gonna be an RCE and they're gonna get credit for that RCE, they're gonna re, they're gonna force it and you're still gonna have to do a supplemental response.
But some are more reasonable
Ashley: than them. Yeah. Yeah. I also wonder if the new view on interview is, um, gonna hamper [00:41:00] that, you know? Mm-hmm. Now they really only have to talk to you one time. And so if you talk to 'em with a non final and they, you know, how willing are they going to be to work with you after final if they don't have to talk to you?
Right. And not that they've had to before, but there's been even more pressure for them to, I think, move more quickly. And so it'd be interesting to see how that all plays out.
Kristen: So I, when I ask for a final office action interview, I always say, I have an amendment. I have an argument and an amendment that I'm gonna present.
Like, I, I give them a heads up that I have some way to move this forward and I wanna talk about it. And it's rare that I've had them turn it down, but we will see with this new, new system,
Al: they, they've been wanting to see my amendments beforehand too, before they even accept mm-hmm. Or schedule anything for after finals.
So it's interesting, um, 'cause I mean, I, I feel like when you come to them with an [00:42:00] amendment, you're kind of hat in hand. You're, you're just, you're saying, I, I, I want to work with you and, and move forward with the case. But, um, no. You know, they don't get credit fully
Kristen: either way. That's true, that's true. But I feel like I could be somebody's worst nightmare if they kept telling me no to an examiner interview in like a one-on-one rejection situation.
I'd be like, seriously? Like, we're just gonna wait forever and not move to. Do you wanna tell 'em about your
Ashley: other story, Kristen, about how you got chewed?
Kristen: Yeah, I sure can. Um, so I submitted a, basically it was an interview agenda. That agenda had a independent claim with amendments and like three or four backup positions that were dependent.
And in that, and then I put a couple of arguments, and in one of the arguments it was like per the recent, uh, memo that went out to examiners, basically go back and look [00:43:00] at, you know, the MPEP, make sure you're assessing whether this really is abstract and don't assume because blah, blah, blah. Right. It was basically, don't call it mental processes when it's clearly not.
And, and I was, I was kind about it. I kind of recited the exact letter, I recited the exact language. I wasn't like, and you screwed up. Well, she got on our interview and the first thing was like two and a half minute rant about how practitioners shouldn't be using that memo to tell examiners what to do.
I, there was no question whether it was abstract or not, I didn't misapply it and she just went on and on and on and on and on and it was. Loud, and it was
Mixed: narly
Kristen: and it was nasty. And she then she kind of calmed down and I said, okay, well, let me explain why I put that on record, right. And why I, I wanted to talk about it.
I said, first of all, anybody getting a one-on one-on-one right now is going to throw anything at the wall to see what sticks. Mm-hmm. Because it is [00:44:00] horrible out here. And second of all, it was only there because this memo came out after the office action was provided and before my response. So I thought it was useful to talk about.
And I said, I did not realize it was that offensive. I did not, it was not telling you that mu made an error at all. It was, let's talk about this and how this could be, you know, looked at a little differently. And I said, but thank you for telling me, you know, I, I will not use this again in the future in this manner.
You, and then I've had other examiners just be like, oh yeah, I saw that memo, you know.
Ashley: Kristen said, she like ripped her a new one for, I'm like, I'm like, good for you for not for that. Well, she was
Kristen: frustrated, right? Yeah. I mean, I'm sure she's getting it from the office and from practitioners that, you know, just, she was just like, what the hell?
Well,
Al: just like, we, we get it from our clients and
Kristen: Yeah. And yep.
Al: Um, so we're, we're answering to just different people [00:45:00] basically.
Kristen: Absolutely. And, and it, it turned out to be a really good interview and it, and she still had, you know, very little thought on, on what I had put in the agenda moving us forward.
She was like, yeah, I don't think so. So I did have to go back to the drawing board, but, you know, it was a good interview after that.
Al: And the hard part is they have to send those amendments to their twas or whatever, to, to double check everything, which is a pain in the butt too.
Kristen: Sure. And, but you know, I feel like if you are going to reject everybody and their brother who puts software on file under 1 0 1, you are going to have to jump through some hoops on your side too.
Like, this is not fair for these inventors. This is not, uh, it's not even clearly applied across the board. Right. This is something that is hitting people really hard and people are losing patents. They're losing the ability to get a patent in some areas because examiners are so harsh on, and, and even some examiners [00:46:00] aren't, but their supervisors are, and they're like, there's no way I can get this through.
I try. Yeah. You know, so it's it's painful out there.
Al: Yeah. And clearly different arguments handle it very differently, which is very strange.
Kristen: It's, it's, so, we'll see. I don't know. Maybe it'll change in the next year, but I have no idea. Pizza is already one before.
Ashley: Oh, go ahead. Mm-hmm.
David: Oh, no. I don't know. It's been before we break because it's like a little bit different, but it's on the abandonment area.
Sure. Go. Because this, I've, I've seen this a couple times with clients is when they have big portfolios that are, have like many, many cons and you're out at that 11 and a half year maintenance fee and they're looking at $8,000 per case. And um, I've had a few clients, mostly, you know, people are, you know, trying to save money for one reason or another and they're looking at do we really need to pay these maintenance fees?
So it's interesting 'cause sometimes we'll do these broadening [00:47:00] cons in a family. So you might have a first case issue with narrower claims and later claims get issued in the same family that are broader. Mm-hmm. And so there's this discussion I've had a few times, do you really wanna keep all of them or do you wanna just keep the broader ones and let the narrower ones go?
And I think it can be okay. It could definitely can save you. You know, the risk there is that will the broader claims hold up in litigation? Yeah. Will they hold up in court? And you have the narrower claims as kind of your fallback just in case. And you can assert five patents against someone instead of just three or whatever.
So there's all these, you know, things to think about, but once you're at that 12 year mark, more than halfway through the term, and it can get very expensive. So it's an interesting conversation that I've had a few times. Only, only rarely do people decide to let anything go. There's this whole, like, we don't, we don't wanna make a bad decision and so you can't undo it so easily except for everything that Albert said earlier.
You [00:48:00] can undo sometimes and then if it's unintentional. Um, but yeah, it's an interesting conversation.
Kristen: So big industry does this all the time and they actually have large groups committed to assessing full patent portfolio.
Mixed: Yeah. Mm-hmm.
Kristen: To say, you know, are we gonna pay the eight maintenance fees at seven?
Are we gonna pay the maintenance fees at 11? Are we gonna let these go? Um, and it's a huge decision. You know, these are very strategic companies who filed everything in anything and they're saying, well, maybe these aren't as worth it. Right? Yeah. And so, um, in the company I worked with particular, they actually would send.
Send requests back to the practitioners and the law firms who prosecuted the cases and they would be like, make a case for why I should keep this alive. Huh. And because these people are the ones who saw the prior art, they probably know why something had to be narrowed and it applied to the product Right.
That they were working on. And if they said, oh, you never [00:49:00] implemented this in the product, boom, that case goes away. You know, get rid of it. Don't pay that maintenance fee because it's not implemented. We don't care. We're not gonna uphold it. So it's interesting.
Ashley: I think the interesting utility of that that I've seen is there's a, uh, one of our clients used to we with Stryker, and part of his role was finding chunks of Stryker's portfolio that they could license out things that Stryker wasn't doing and make partnerships and agreements for these, you know, little chunks of the portfolio, you know, but also in-licensing too.
But, you know, I think he was pretty good at finding. Like, oh, some small technology company, they could really benefit from striker's whatever portfolio on this little niche thing that they're not developing and stuff like that. So I think that is an interesting play if you have the personnel bandwidth, you know, and stuff like that, to, to, to strike those deals.
I mean that's, that's the whole point of the patent system, right? Not for these big companies just to take anything they want. There really was for that [00:50:00] quid pro quo to happen and, um, yeah.
Kristen: That's a difficult job. I know who you're talking about. And like the person that she's talking about is very naturally intelligent in a lot of fields, in a lot of areas, has a lot of technical knowledge, but also is just very business minded.
Mm-hmm. Um, and when he started, I don't think he had the business development network that he does now to do that job. And so he really was starting from scratch and really was having to do the research. And I think that takes a special kind of person too, to learn how to find companies that would do,
you know, partner with you in that way.
Al: And I wonder like how the, uh.
How you, uh, like go at people and, and mention this? Yeah. Cold call because you're, you're basically saying like, I have this, this coverage of the, the rights that you could use, but you're, I mean, or that, that you, uh, could use or, or you're using and, and I [00:51:00] need, I need money from you.
Kristen: Yeah. Tough. I mean, he does that. He does it to this day for his own company and he goes to tons of trade shows, tons of conventions, things I would never do. I'm like, that seems like a colossal waste of my time. He just, just tons of it to network. Right. This
Ashley: is, Hey retirement, Kristen.
Kristen: That's true. And he retired.
You don't
Ashley: have to stop wearing it. It doesn't mean you have to stop working. It means that you can just get to be more selective about what you do. Yeah.
Kristen: Yep. Yep. Very cool. Well,
Ashley: fantastic.
Kristen: Yeah, this is great. Thank you.
Ashley: Thank you for that. And yeah, so I, I don't know when it's gonna go out, but, um, they'll be on the schedule.
So I think actually Will's, Josh is working on Will's for this month now. The European one we did a few, several months ago, so.
Kristen: Oh, fun. That'll be a good one
Ashley: for the
Kristen: holiday. Hopefully there's, he's like, oh, he is like, this
Ashley: European history thing is so interesting.
Kristen: I don't like history and even I thought it was interesting.
[00:52:00] So, but it was 10 minutes of straight, you know, European history. Anywhere time.
Ashley: You can put Napoleon into a sentence. My ears perk up.
David: Well, this one with all the abandonment and the tombstones is perfect for Halloween, but it's not gonna come out for until like January probably. So. Exactly. Yeah,
Ashley: exactly. Oh, that's funny.
Mixed: Thank you. Thanks all. Bye bye. Bye everyone. Bye.
Ashley: Bye-Bye.
Speaker: All right. That's all for today, folks. Thanks for listening, and remember to check us out@aurorapatents.com for more great podcasts, blogs and videos covering all things patents, strategy. And if you're an agent or attorney and would like to be part of the discussion or an inventor with a topic you'd like to hear discussed.
Email us at podcast@aurorapatents.com. Do remember that this podcast does not constitute legal advice, and until next time, keep calm and patent on.
