The United States Patent and Trademark Office (USPTO) allows for the revival of abandoned applications, acceptance of delayed maintenance fee payments, and acceptance of delayed priority or benefit claims by the filing of a petition.[1] Abandoned applications can be revived only if the abandonment was “unintentional.”[2] Delayed maintenance fee payments and priority or benefit claims are accepted only if the delay was “unintentional.”[3] For unintentional delays, “[t]he Director may require additional information where there is question whether the delay is unintentional.”[4]

Because of an applicant’s duty of candor and good faith and obligation to inquire about underlying facts, the USPTO had thus far not required any additional information[5] – an assertion on the petition stating that the delay was unintentional was sufficient. On March 2, the USPTO issued a Federal Register Notice clarifying that additional information is required when the delay has been for more than two years:

“[T]he USPTO will require additional information in these cases, first, when a petition to revive an abandoned application is filed more than two years after the date the application became abandoned; second, when a petition to accept a delayed maintenance fee payment is filed more than two years after the date the patent expired for nonpayment; and third, when a petition to accept a delayed priority or benefit claim is filed more than two years after the date the priority or benefit claim was due.”[6]

For any such petitions filed outside the two-year window, the USPTO requires “an additional explanation of the circumstances surrounding the delay establishing that the entire delay was unintentional.”[7] The new standard is applicable to any petition decided after March 2.[8]

The USPTO asserts that two or more years of delay raises a question of whether the delay was unintentional and “there is a greater likelihood that the entire delay may not be ‘unintentional.’”[9] The USPTO also believes that such delays “create uncertainty and unpredictability.”[10] “Furthermore, providing an appropriate statement that the delay was ‘unintentional’ may have an adverse effect when attempting to enforce the patent.”[11] The USPTO may “revisit the two-year” window and “[n]othing in this notice should be taken as an indication that the USPTO will only require information” when the delay was two or more years.[12]

In view of this notice, applicants or patentees filing such petitions should document the circumstances giving rise to the delay in case the USPTO requires such information. For pending petitions with delays outside the two-year window, applicants or patentees should be ready to provide information regarding the delay, as it is likely the USPTO will request that information.

[1] 37 C.F.R. §§ 1.55, 1.78, 1.137, and 1.378.
[2] 37 C.F.R. § 1.137.
[3] 37 C.F.R. §§ 1.55, 1.78, and 1.378.
[4] 37 C.F.R. §§ 1.55(e)(4), 1.78(c)(3) and (e)(3), 1.137(b)(4), and 1.378(b)(3).
[5] Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 Fed. Reg. 12222 at 12223 (Mar. 2, 2020).
[6] Id. at 12223.
[7] Id.
[8] Id. at 12222.
[9] Id. at 12223.
[10] Id.
[11] Id.
[12] Id.