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

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[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]


=======================================================================
-----------------------------------------------------------------------

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