Patent Revival

An abandoned patent application can be revived by petition under 37 C.F.R. § 1.137, provided the abandonment was unintentional. The petition must be filed within 3 years of the date of abandonment (for unintentional abandonment petitions). Requirements: (1) A statement that the entire delay in filing the required reply from the due date to the filing of the petition was UNINTENTIONAL — the USPTO does not require detailed facts unless the delay was over 2 years, at which point additional explanation of the cause of abandonment may be required; (2) The required reply — whatever action the application needed that was not timely filed (e.g., a response to an office action, a missing application fee); (3) The petition fee (currently $2,100 large entity, $840 small entity, $420 micro entity for unintentional abandonment). Upon revival, the application is restored to its pre-abandonment status for prosecution purposes.

There were historically two standards for reviving an abandoned patent application: UNINTENTIONAL (§ 1.137(a)): The abandonment was not intended. The applicant or attorney did not deliberately choose to abandon the application. This is a lower standard — most abandonment petitions use this basis. Available for up to 3 years after the date of abandonment. UNAVOIDABLE (§ 1.137(b)): The abandonment resulted from circumstances beyond the applicant's control — the applicant could not have prevented the abandonment by exercising reasonable care. This is a higher, more demanding standard requiring detailed explanation and often evidence. Available for abandoned applications and for maintenance fee lapses. As of current USPTO practice, 'unintentional' abandonment is the standard used in the vast majority of revival petitions for applications. 'Unavoidable' is largely limited to maintenance fee-related situations and is rarely granted.

A patent that has lapsed due to failure to pay a maintenance fee can be revived within 24 months after the grace period expires (i.e., within 24 months after the 6-month grace period that follows the 3.5, 7.5, or 11.5 year maintenance fee due dates). Under 37 C.F.R. § 1.378: (1) Petition for revival must be filed within 24 months after the expiration of the 6-month grace period (i.e., within 30 months after the maintenance fee due date); (2) The maintenance fee AND the surcharge AND the revival petition fee must all be paid; (3) The petition must state that the delay in payment was unintentional (or unavoidable, with higher proof). After the 24-month revival window closes, the patent cannot be revived and the lapse is permanent — the invention enters the public domain.

When a patent is revived after a maintenance fee lapse (the patent was briefly in the public domain), INTERVENING RIGHTS protect third parties who began practicing the invention during the lapse period. Under 35 U.S.C. § 41(c)(2): ABSOLUTE INTERVENING RIGHTS — a person who made, purchased, offered to sell, used, or imported the patented invention during the period between the lapse and revival has an absolute right to use the specific items they already made or ordered. They cannot be liable for infringement of those specific items. EQUITABLE INTERVENING RIGHTS — courts may also grant broader equitable intervening rights to allow a party to continue business activities, even beyond the specific items, to the extent justice requires, taking into account investment in the business that relying on the lapse. Note: intervening rights apply to MAINTENANCE FEE lapses, not to unintentional abandonment of applications (because abandoned applications are not patents and there is no lapse into public domain in the same sense).

If a revival petition is denied by the USPTO, the patent application remains abandoned or the patent remains lapsed. Options after denial: (1) PETITION FOR RECONSIDERATION — within 2 months of the denial, the applicant can petition the USPTO Director for reconsideration, providing additional explanation or evidence; (2) SUPERVISORY PETITION — if the petition was decided by a petitions examiner, request a supervisory review by a senior petitions examiner; (3) FEDERAL COURT CHALLENGE — an applicant can file a civil action in the U.S. District Court for the Eastern District of Virginia challenging the USPTO's denial under 35 U.S.C. § 145 (for applications) or seek review in federal district court (for patents); (4) REFILING — in some cases, filing a new application with the same specification may be possible, though this creates a new filing date and the applicant may face prior art created during the gap. If the abandonment resulted in any period where the application was publicly accessible as an abandoned application, that may create prior art issues for the newly filed application.