Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 12222-12224 [2020-03715]

Download as PDF 12222 Federal Register / Vol. 85, No. 41 / Monday, March 2, 2020 / Rules and Regulations only when notice and comment are required by the APA or other law, are not applicable. These amendments do not contain any collection of information requirements as defined by the Paperwork Reduction Act of 1995. See 5 CFR 1320.3. Further, because the amendments impose no new burdens on private parties, the Commission does not believe that the amendments will have any impact on competition for purposes of Section 23(a)(2) of the Securities Exchange Act of 1934. 15 U.S.C. 78w(a)(2). III. Statutory Authority This rule is adopted pursuant to statutory authority granted to the Commission, including Section 19 of the Securities Act of 1933, 15 U.S.C. 77s; Sections 4A, 4B, and 23 of the Exchange Act, 15 U.S.C. 78d–1, 78d–2, and 78w; Section 38 of the Investment Company Act of 1940, 15 U.S.C. 80a–37; Section 211 of the Investment Advisers Act of 1940, 15 U.S.C. 80b–11; and Section 3 of the Sarbanes-Oxley Act of 2002, 15 U.S.C. 7202. List of Subjects in 17 CFR Part 200 Administrative practice and procedure, Authority delegations (Government agencies). For the reasons set out in the preamble, the Commission is amending Title 17, Chapter II of the Code of Federal Regulations as follows: Subpart A—Organization and Program Management 1. The general authority citation for part 200, subpart A continues to read in part as follows: ■ Authority: 15 U.S.C. 77c, 77o, 77s, 77z–3, 77sss, 78d, 78d–1, 78d–2, 78o–4, 78w, 78ll(d), 78mm, 80a–37, 80b–11, 7202, and 7211 et seq., unless otherwise noted. * * * * * 2. Amend § 200.30–14 by: a. Redesignating paragraphs (f) through (o) as paragraphs (g) through (p); and ■ b. Adding new paragraph (f). The addition reads as follows. khammond on DSKJM1Z7X2PROD with RULES ■ ■ § 200.30–14 Delegation of authority to the General Counsel. * * * * (f) In bankruptcy cases, to take the following actions with respect to plan or settlement provisions that have the effect of releasing, exculpating, discharging, or permanently enjoining actions against non-debtor third parties VerDate Sep<11>2014 15:57 Feb 28, 2020 Jkt 250001 By the Commission. Dated: February 19, 2020. Vanessa A. Countryman, Secretary. [FR Doc. 2020–03705 Filed 2–28–20; 8:45 am] BILLING CODE 8011–01–P DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Part 1 [Docket No. PTO–P–2019–0035] Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay United States Patent and Trademark Office, Department of Commerce. ACTION: Clarification. AGENCY: The United States Patent and Trademark Office (USPTO) is clarifying its practice as to situations that will require additional information about whether a delay in seeking the revival of an abandoned application, acceptance of a delayed maintenance fee payment, or acceptance of a delayed priority or benefit claim was unintentional. SUMMARY: PART 200—ORGANIZATION; CONDUCT AND ETHICS; AND INFORMATION AND REQUESTS * in contravention of Section 524(e) of the Bankruptcy Code or applicable law: (1) Object to approval of disclosure statements, including on the basis that the disclosure statement lacks adequate information under Section 1125(b) to support such release provisions; (2) Object to confirmation of bankruptcy plans; or (3) Object to approval of settlements. * * * * * The clarification of practice set forth is applicable to any petition decided on or after March 2, 2020. FOR FURTHER INFORMATION CONTACT: Christina Tartera Donnell, Attorney Advisor, Office of Petitions, by telephone at 571–272–3211; or Douglas I. Wood, Attorney Advisor, Office of Petitions, by telephone at 571–272– 3231; or by mail addressed to: Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450. SUPPLEMENTARY INFORMATION: Title II of the PLTIA amended the provisions of title 35, United States Code (U.S.C.), to implement the Patent Law Treaty (PLT). See Public Law 112–211, § 201–203, 126 Stat. 1527, 1533–37 (2012). Section 201(b) of the PLTIA added a new 35 DATES: PO 00000 Frm 00016 Fmt 4700 Sfmt 4700 U.S.C. 27, which expressly provides that the director of the USPTO may establish procedures to revive an unintentionally abandoned application for patent or accept an unintentionally delayed issue fee payment, upon petition by the applicant for patent or patent owner. See Public Law 112–211, 201(b)(1), 126 Stat. at 1534. Section 202(b)(1)(B) of the PLTIA amended 35 U.S.C. 41(c)(1) to provide that the director may accept the payment of any maintenance fee required by 35 U.S.C. 41(b) after the sixmonth grace period if the delay is shown to the satisfaction of the director to have been unintentional. See Sec. 202(b)(1)(B), Public Law 112–211, 126 Stat. at 1535–36. The 18-month publication provisions of the American Inventors Protection Act of 1999 (AIPA) amended 35 U.S.C. 119 and 120 to provide that a priority claim for a foreign or international application and a benefit claim to an earlier domestic provisional or nonprovisional application must be filed within the period required by the USPTO, but that the USPTO may establish procedures to accept an unintentionally delayed priority or benefit claim. See Public Law 106–113, 113 Stat. 1501, 1501A–563 through 1501A–564 (1999). The USPTO revised the rules of practice to implement the 18-month publication provisions of section 4503 of the AIPA in September 2000. This included revising the rules of practice pertaining to foreign priority and domestic benefit claims (37 CFR 1.55 and 1.78) to set a time period within which such priority and benefit claims must be filed, and to provide for the acceptance of unintentionally delayed priority or benefit claims. See Changes to Implement Eighteen-Month Publication of Patent Applications, 65 FR 57023, 57024–25, 57030–31, 57053– 55 (September 20, 2000). The USPTO revised the rules of practice for consistency with the PLT and title II of the PLTIA in October 2013. This included revising the rules of practice pertaining to the revival of abandoned applications (37 CFR 1.137) and acceptance of delayed maintenance fee payments (37 CFR 1.378) to provide for the revival of abandoned applications and acceptance of delayed maintenance fee payments solely on the basis of ‘‘unintentional’’ delay, as well as revisions to the rules of practice pertaining to foreign priority and domestic benefit claims (37 CFR 1.55 and 1.78). See Changes to Implement the Patent Law Treaty, 78 FR 62368, 62377–78, 62380–83, 62399–400, 62402–07 (October 21, 2013). The provisions for the revival of an abandoned application (37 CFR 1.137) E:\FR\FM\02MRR1.SGM 02MRR1 khammond on DSKJM1Z7X2PROD with RULES Federal Register / Vol. 85, No. 41 / Monday, March 2, 2020 / Rules and Regulations require a petition including, inter alia, a statement that the entire delay in filing the required reply, from the due date of the reply until the filing of a grantable petition, was unintentional, but also provide that ‘‘[t]he Director may require additional information where there is a question whether the delay was unintentional’’ (37 CFR 1.137(b)(4)). The provisions for the acceptance of a delayed maintenance fee payment (37 CFR 1.378) similarly require a petition including, inter alia, a statement that the delay in payment of the maintenance fee was unintentional, but also provide that ‘‘[t]he Director may require additional information where there is a question whether the delay was unintentional’’ (37 CFR 1.378(b)(3)). The provisions for the acceptance of a delayed priority or benefit claim (37 CFR 1.55 and 1.78) likewise require a statement that the delay between the date the claim was due and the date the claim was filed was unintentional, but also provide that ‘‘[t]he Director may require additional information where there is a question whether the delay was unintentional’’ (37 CFR 1.55(e)(4), 1.78(c)(3) and (e)(3)). The USPTO is clarifying its practice as to situations that will require additional information about whether a delay in seeking the revival of an abandoned application, acceptance of a delayed maintenance fee payment, or acceptance of a delayed priority or benefit claim was unintentional. Specifically, the 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. See, e.g., Changes to Patent Practice and Procedure, 62 FR 53131, 53158–59, 53161 (October 10, 1997) (the length of the delay in filing a petition to revive may itself raise a question as to whether the delay was unintentional, and thus the USPTO may require additional information as to the cause of the delay when a petition to revive is not filed promptly). The reason for requiring additional information in cases where there has been an extended delay—a delay of more than two years from the date the application became abandoned, the patent expired, or a priority or benefit claim was due—until the filing of a petition, is to ensure that, in VerDate Sep<11>2014 15:57 Feb 28, 2020 Jkt 250001 situations where there has been such an extended delay in filing the petition, the USPTO is provided with sufficient information of the facts and circumstances surrounding the entire delay to support a conclusion that the entire delay was ‘‘unintentional.’’ Section 711.03(c) of the Manual of Patent Examining Procedure (MPEP) discusses the ‘‘unintentional’’ delay standard with respect to petitions to revive an abandoned application, but its discussion of the ‘‘unintentional’’ delay is generally applicable to any petition under the ‘‘unintentional’’ delay standard. The USPTO usually relies upon the applicant’s duty of candor and good faith and accepts the statement that the entire delay was unintentional without requiring further information because the applicant or patentee is obligated under 37 CFR 11.18 to inquire into the underlying facts and circumstances when providing this statement to the USPTO. See MPEP § 711.03(c), subsection II.C. An extended period of delay (i.e., more than two years from the date the application became abandoned, the patent expired, or a priority or benefit claim was due) in filing a petition to revive an application, accept a delayed maintenance fee payment, or accept a delayed priority or benefit claim, however, raises a question as to whether the entire delay was unintentional. This may create uncertainty and unpredictability relating to patent rights in that there is a greater likelihood that the entire delay may not be ‘‘unintentional’’ within the meaning of 37 CFR 1.55, 1.78, 1.137, and 1.378, as compared to a petition that was filed within a shorter time period after the abandonment of the application, expiration of the patent, or due date for a priority or benefit claim. An applicant or patentee cannot meet the ‘‘unintentional delay’’ standard in 37 CFR 1.55(e), 1.78(c) and (e), 1.137(a), or 1.378(b) if the entire delay is not unintentional. See MPEP 711.03(c), subsections II.C. through F. Furthermore, providing an inappropriate statement that the delay was ‘‘unintentional’’ may have an adverse effect when attempting to enforce the patent. See In re Rembrandt Technologies LP Patent Litigation, 899 F.3d 1254, 1272–73 (Fed. Cir. 2018) (patents held unenforceable due to a finding of inequitable conduct in submitting an inappropriate statement that the delay was unintentional). Revival of an application, reinstatement of a patent, or acceptance of a priority or benefit claim after an extended delay (i.e., more than two years since the date of abandonment, expiration of the PO 00000 Frm 00017 Fmt 4700 Sfmt 4700 12223 patent, or due date of the priority claim) can also create uncertainty and unpredictability relating to patent rights because the abandoned status of an application, or the expired status of a patent, or an absence of the priority or benefit claim, may be relied upon by other parties. Requiring additional information in these situations will improve the reliability and predictability of patent rights by ensuring that only applications and patents in which the entire delay was unintentional are revived or reinstated, and only priority or benefit claims for which the entire delay was unintentional are accepted. Accordingly, any applicant filing a petition to revive an abandoned application under 37 CFR 1.137 more than two years after the date of abandonment, any patentee filing a petition to accept a delayed maintenance fee under 37 CFR 1.378 more than two years after the date of expiration for nonpayment of a maintenance fee, and any applicant or patent owner filing a petition to accept a delayed priority or benefit claim under 37 CFR 1.55(e) or 1.78(c) and (e) more than two years after the due date of the priority or benefit claim should expect to be required to provide an additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. This requirement is in addition to the requirement to provide a statement that the entire delay was unintentional in 37 CFR 1.137(b)(4) and 1.378(b)(3), or 1.55(e)(4), or 1.78(c)(3) and (e)(3). The USPTO may revisit the two-year time period established in this notice for requiring an additional explanation as to whether a delay is unintentional at a future point and may adjust the time period based on an evaluation of whether a two-year time period is appropriate for requesting additional information when determining whether a period of delay is unintentional. Nothing in this notice should be taken as an indication that the USPTO will only require additional information in consideration of a petition to revive an abandoned application under 37 CFR 1.137 filed more than two years after the date the application became abandoned, a petition to accept a delayed maintenance fee payment in an expired patent under 37 CFR 1.378 filed more than two years after the date the patent expired, or a petition under 37 CFR 1.55(e) or 1.78(c) or (e) to accept a delayed priority or benefit claim filed more than two years after the due date of the priority or benefit claim. The USPTO may require additional information whenever there is a E:\FR\FM\02MRR1.SGM 02MRR1 12224 Federal Register / Vol. 85, No. 41 / Monday, March 2, 2020 / Rules and Regulations question as to whether the delay was unintentional. Dated: February 18, 2020. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2020–03715 Filed 2–28–20; 8:45 am] BILLING CODE 3510–16–P ENVIRONMENTAL PROTECTION AGENCY I. General Information 40 CFR Part 31 A. Does this action apply to me? [FRL–10005–45–OECA] This rule applies to all federally credentialed EPA civil inspectors, federally credentialed contractors and Senior Environmental Employment (SEE) employees conducting inspections on behalf of EPA. As an internal rule of Agency procedure, the rule does not apply to federally credentialed state and tribal inspectors conducting inspections on EPA’s behalf. This rule describes certain important aspects of the Agency’s process of conducting on-site civil inspections and does not alter the rights or interests of parties or any person or entity outside the EPA. RIN 2020–AA53 On-Site Civil Inspection Procedures Environmental Protection Agency (EPA). ACTION: Final rule. AGENCY: EPA is promulgating this rule of Agency procedure to fulfill the objectives outlined in the October 9, 2019 Executive Order (E.O.) 13892, Promoting the Rule of Law Through Transparency and Fairness in Civil Administrative Enforcement and Adjudication. This rule describes certain Agency procedures for conducting on-site civil inspections, as contemplated by section 7 of E.O. 13892, Ensuring Reasonable Administrative Inspections. This rule applies to on-site civil inspections conducted by federally credentialed EPA civil inspectors, federally credentialed contractors and Senior Environmental Employment (SEE) employees conducting inspections on behalf of EPA. DATES: This rule is effective March 2, 2020. FOR FURTHER INFORMATION CONTACT: Chad Carbone (202–564–2523), Office Enforcement and Compliance Assurance (2221A), U.S. Environmental Protection Agency, Washington, DC 20460; telephone number: (202) 564–2523; fax number: (202) 564–0050; email: carbone.chad@epa.gov. SUPPLEMENTARY INFORMATION: The following outline is provided to assist the reader in locating topics of interest in the rule. SUMMARY: Table of Contents khammond on DSKJM1Z7X2PROD with RULES 1. Timing of Inspections and Facility Notification 2. Inspector Qualifications 3. Obtaining Consent to Enter 4. Opening Conference 5. Physical Inspection 6. Managing Confidential Business Information (CBI) 7. Interview Facility Personnel 8. Records Review 9. Sampling 10. Closing Conference B. Inspection Report III. Statutory and Executive Order Reviews I. General Information A. Does this action apply to me? B. What action is the Agency taking? C. What is the Agency’s authority for taking the action? II. Background A. General Overview of On-Site Civil Inspections VerDate Sep<11>2014 15:57 Feb 28, 2020 Jkt 250001 B. What action is the Agency taking? The purpose of this rulemaking is to provide direction to agency personnel on how to conduct EPA on-site civil administrative inspections, as required by section 7 of E.O. 13892, entitled Ensuring Reasonable Administrative Inspections, and which states: ‘‘Within 120 days of the date of this order, each agency that conducts civil administrative inspections shall publish a rule of agency procedure governing such inspections, if such a rule does not already exist. Once published, an agency must conduct inspections of regulated parties in compliance with the rule.’’ This rulemaking addresses the common elements applicable to on-site civil inspections for compliance with all of the environmental laws that EPA implements. The specific activities that may occur during an inspection may vary depending on the facility and the statutory authority upon which the inspection is based. It is also important to note that EPA inspections are only one type of compliance monitoring activity that EPA conducts in order to help evaluate compliance. The primary focus of inspections is on recording observations and gathering information. As such, compliance determinations are an independent process that rely upon a myriad of information and are reviewed by Agency attorneys and management. PO 00000 Frm 00018 Fmt 4700 Sfmt 4700 C. What is the Agency’s authority for taking the action? EPA’s authority to issue this procedural rule is contained in the: Clean Air Act (CAA): 42 U.S.C. 7414, 7525, 7542, 7603, 7621; Clean Water Act (CWA): 33 U.S.C. 1318, 1321, 1364, 1367; Comprehensive Environmental Response, Compensation, and Liability Act (CERCLA) (Superfund): 42 U.S.C. 9604, 9606, 9622, Executive Order 12580, section 2(j)(2); Federal Insecticide, Fungicide, and Rodenticide Act (FIFRA): 7 U.S.C. 136; Resource Conservation and Recovery Act (RCRA): 42 U.S.C. 6908, 6912, 6927, 6928, 6934, 6971, 6973, 6991, 6992; Safe Drinking Water Act (SDWA): 42 U.S.C. 300; and the Toxic Substances Control Act (TSCA): 15 U.S.C. 2610. EPA is also issuing this rule under its housekeeping authority. Section 301 of Title 5 U.S.C. authorizes an agency head to prescribe regulations governing his or her department and the performance of its business, among other purposes. EPA gained housekeeping authority through the Reorganization Plan No. 3 of 1970, 84 Stat. 2086 (July 9, 1970), as recognized by the U.S. Department of Justice Office of Legal Counsel. See ‘‘Authority of EPA to Hold Employees Liable for Negligent Loss, Damage, or Destruction of Government Personal Property,’’ 32 O.L.C. 79, 2008 WL 4422366 at *4 (May 28, 2008). As a rule of Agency procedure this rule is exempt from the notice and comment requirements set forth in the Administrative Procedure Act. See 5 U.S.C. 553(b)(A). II. Background A. General Overview of On-Site Civil Inspections Below is a general overview of the process for conducting on-site civil inspections. To ensure greater transparency and clearer direction to its inspectors, the Agency is codifying the major elements of inspections it carries out in its civil enforcement of environmental laws. (This rule does not apply to investigations of environmental crimes.) This overview also provides information regarding additional activities that may occur during the civil inspection process. 1. Timing of Inspections and Facility Notification EPA inspectors should generally conduct inspections during the facility’s normal work hours. However, there may be circumstances which require EPA inspectors to access, monitor, or observe specific operations or activities at other times. Where possible, for announced E:\FR\FM\02MRR1.SGM 02MRR1

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[Federal Register Volume 85, Number 41 (Monday, March 2, 2020)]
[Rules and Regulations]
[Pages 12222-12224]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-03715]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2019-0035]


Clarification of the Practice for Requiring Additional 
Information in Petitions Filed in Patent Applications and Patents Based 
on Unintentional Delay

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Clarification.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (USPTO) is 
clarifying its practice as to situations that will require additional 
information about whether a delay in seeking the revival of an 
abandoned application, acceptance of a delayed maintenance fee payment, 
or acceptance of a delayed priority or benefit claim was unintentional.

DATES: The clarification of practice set forth is applicable to any 
petition decided on or after March 2, 2020.

FOR FURTHER INFORMATION CONTACT: Christina Tartera Donnell, Attorney 
Advisor, Office of Petitions, by telephone at 571-272-3211; or Douglas 
I. Wood, Attorney Advisor, Office of Petitions, by telephone at 571-
272-3231; or by mail addressed to: Mail Stop Comments-Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: Title II of the PLTIA amended the provisions 
of title 35, United States Code (U.S.C.), to implement the Patent Law 
Treaty (PLT). See Public Law 112-211, Sec.  201-203, 126 Stat. 1527, 
1533-37 (2012). Section 201(b) of the PLTIA added a new 35 U.S.C. 27, 
which expressly provides that the director of the USPTO may establish 
procedures to revive an unintentionally abandoned application for 
patent or accept an unintentionally delayed issue fee payment, upon 
petition by the applicant for patent or patent owner. See Public Law 
112-211, 201(b)(1), 126 Stat. at 1534. Section 202(b)(1)(B) of the 
PLTIA amended 35 U.S.C. 41(c)(1) to provide that the director may 
accept the payment of any maintenance fee required by 35 U.S.C. 41(b) 
after the six-month grace period if the delay is shown to the 
satisfaction of the director to have been unintentional. See Sec. 
202(b)(1)(B), Public Law 112-211, 126 Stat. at 1535-36. The 18-month 
publication provisions of the American Inventors Protection Act of 1999 
(AIPA) amended 35 U.S.C. 119 and 120 to provide that a priority claim 
for a foreign or international application and a benefit claim to an 
earlier domestic provisional or nonprovisional application must be 
filed within the period required by the USPTO, but that the USPTO may 
establish procedures to accept an unintentionally delayed priority or 
benefit claim. See Public Law 106-113, 113 Stat. 1501, 1501A-563 
through 1501A-564 (1999).
    The USPTO revised the rules of practice to implement the 18-month 
publication provisions of section 4503 of the AIPA in September 2000. 
This included revising the rules of practice pertaining to foreign 
priority and domestic benefit claims (37 CFR 1.55 and 1.78) to set a 
time period within which such priority and benefit claims must be 
filed, and to provide for the acceptance of unintentionally delayed 
priority or benefit claims. See Changes to Implement Eighteen-Month 
Publication of Patent Applications, 65 FR 57023, 57024-25, 57030-31, 
57053-55 (September 20, 2000). The USPTO revised the rules of practice 
for consistency with the PLT and title II of the PLTIA in October 2013. 
This included revising the rules of practice pertaining to the revival 
of abandoned applications (37 CFR 1.137) and acceptance of delayed 
maintenance fee payments (37 CFR 1.378) to provide for the revival of 
abandoned applications and acceptance of delayed maintenance fee 
payments solely on the basis of ``unintentional'' delay, as well as 
revisions to the rules of practice pertaining to foreign priority and 
domestic benefit claims (37 CFR 1.55 and 1.78). See Changes to 
Implement the Patent Law Treaty, 78 FR 62368, 62377-78, 62380-83, 
62399-400, 62402-07 (October 21, 2013).
    The provisions for the revival of an abandoned application (37 CFR 
1.137)

[[Page 12223]]

require a petition including, inter alia, a statement that the entire 
delay in filing the required reply, from the due date of the reply 
until the filing of a grantable petition, was unintentional, but also 
provide that ``[t]he Director may require additional information where 
there is a question whether the delay was unintentional'' (37 CFR 
1.137(b)(4)). The provisions for the acceptance of a delayed 
maintenance fee payment (37 CFR 1.378) similarly require a petition 
including, inter alia, a statement that the delay in payment of the 
maintenance fee was unintentional, but also provide that ``[t]he 
Director may require additional information where there is a question 
whether the delay was unintentional'' (37 CFR 1.378(b)(3)). The 
provisions for the acceptance of a delayed priority or benefit claim 
(37 CFR 1.55 and 1.78) likewise require a statement that the delay 
between the date the claim was due and the date the claim was filed was 
unintentional, but also provide that ``[t]he Director may require 
additional information where there is a question whether the delay was 
unintentional'' (37 CFR 1.55(e)(4), 1.78(c)(3) and (e)(3)).
    The USPTO is clarifying its practice as to situations that will 
require additional information about whether a delay in seeking the 
revival of an abandoned application, acceptance of a delayed 
maintenance fee payment, or acceptance of a delayed priority or benefit 
claim was unintentional. Specifically, the 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. See, e.g., 
Changes to Patent Practice and Procedure, 62 FR 53131, 53158-59, 53161 
(October 10, 1997) (the length of the delay in filing a petition to 
revive may itself raise a question as to whether the delay was 
unintentional, and thus the USPTO may require additional information as 
to the cause of the delay when a petition to revive is not filed 
promptly). The reason for requiring additional information in cases 
where there has been an extended delay--a delay of more than two years 
from the date the application became abandoned, the patent expired, or 
a priority or benefit claim was due--until the filing of a petition, is 
to ensure that, in situations where there has been such an extended 
delay in filing the petition, the USPTO is provided with sufficient 
information of the facts and circumstances surrounding the entire delay 
to support a conclusion that the entire delay was ``unintentional.''
    Section 711.03(c) of the Manual of Patent Examining Procedure 
(MPEP) discusses the ``unintentional'' delay standard with respect to 
petitions to revive an abandoned application, but its discussion of the 
``unintentional'' delay is generally applicable to any petition under 
the ``unintentional'' delay standard. The USPTO usually relies upon the 
applicant's duty of candor and good faith and accepts the statement 
that the entire delay was unintentional without requiring further 
information because the applicant or patentee is obligated under 37 CFR 
11.18 to inquire into the underlying facts and circumstances when 
providing this statement to the USPTO. See MPEP Sec.  711.03(c), 
subsection II.C. An extended period of delay (i.e., more than two years 
from the date the application became abandoned, the patent expired, or 
a priority or benefit claim was due) in filing a petition to revive an 
application, accept a delayed maintenance fee payment, or accept a 
delayed priority or benefit claim, however, raises a question as to 
whether the entire delay was unintentional. This may create uncertainty 
and unpredictability relating to patent rights in that there is a 
greater likelihood that the entire delay may not be ``unintentional'' 
within the meaning of 37 CFR 1.55, 1.78, 1.137, and 1.378, as compared 
to a petition that was filed within a shorter time period after the 
abandonment of the application, expiration of the patent, or due date 
for a priority or benefit claim. An applicant or patentee cannot meet 
the ``unintentional delay'' standard in 37 CFR 1.55(e), 1.78(c) and 
(e), 1.137(a), or 1.378(b) if the entire delay is not unintentional. 
See MPEP 711.03(c), subsections II.C. through F.
    Furthermore, providing an inappropriate statement that the delay 
was ``unintentional'' may have an adverse effect when attempting to 
enforce the patent. See In re Rembrandt Technologies LP Patent 
Litigation, 899 F.3d 1254, 1272-73 (Fed. Cir. 2018) (patents held 
unenforceable due to a finding of inequitable conduct in submitting an 
inappropriate statement that the delay was unintentional). Revival of 
an application, reinstatement of a patent, or acceptance of a priority 
or benefit claim after an extended delay (i.e., more than two years 
since the date of abandonment, expiration of the patent, or due date of 
the priority claim) can also create uncertainty and unpredictability 
relating to patent rights because the abandoned status of an 
application, or the expired status of a patent, or an absence of the 
priority or benefit claim, may be relied upon by other parties. 
Requiring additional information in these situations will improve the 
reliability and predictability of patent rights by ensuring that only 
applications and patents in which the entire delay was unintentional 
are revived or reinstated, and only priority or benefit claims for 
which the entire delay was unintentional are accepted.
    Accordingly, any applicant filing a petition to revive an abandoned 
application under 37 CFR 1.137 more than two years after the date of 
abandonment, any patentee filing a petition to accept a delayed 
maintenance fee under 37 CFR 1.378 more than two years after the date 
of expiration for nonpayment of a maintenance fee, and any applicant or 
patent owner filing a petition to accept a delayed priority or benefit 
claim under 37 CFR 1.55(e) or 1.78(c) and (e) more than two years after 
the due date of the priority or benefit claim should expect to be 
required to provide an additional explanation of the circumstances 
surrounding the delay that establishes that the entire delay was 
unintentional. This requirement is in addition to the requirement to 
provide a statement that the entire delay was unintentional in 37 CFR 
1.137(b)(4) and 1.378(b)(3), or 1.55(e)(4), or 1.78(c)(3) and (e)(3).
    The USPTO may revisit the two-year time period established in this 
notice for requiring an additional explanation as to whether a delay is 
unintentional at a future point and may adjust the time period based on 
an evaluation of whether a two-year time period is appropriate for 
requesting additional information when determining whether a period of 
delay is unintentional. Nothing in this notice should be taken as an 
indication that the USPTO will only require additional information in 
consideration of a petition to revive an abandoned application under 37 
CFR 1.137 filed more than two years after the date the application 
became abandoned, a petition to accept a delayed maintenance fee 
payment in an expired patent under 37 CFR 1.378 filed more than two 
years after the date the patent expired, or a petition under 37 CFR 
1.55(e) or 1.78(c) or (e) to accept a delayed priority or benefit claim 
filed more than two years after the due date of the priority or benefit 
claim. The USPTO may require additional information whenever there is a

[[Page 12224]]

question as to whether the delay was unintentional.

    Dated: February 18, 2020.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2020-03715 Filed 2-28-20; 8:45 am]
 BILLING CODE 3510-16-P