Editing MPEP 711

<noinclude>{{MPEP Section|710|700|713}}</noinclude>

==[[MPEP 711|711 Abandonment of Patent Application]]== 

<noinclude><div class="noautonum">__TOC__</div></noinclude>

37 CFR 1.135. Abandonment for failure to reply within 
time period.

(a)If an applicant of a patent application fails to reply within 
the time period provided under § 1.134 and § 1.136, the application 
will become abandoned unless an Office action indicates otherwise.

(b)Prosecution of an application to save it from abandonment 
pursuant to paragraph (a) of this section must include such 
complete and proper reply as the condition of the application may 
require. The admission of, or refusal to admit, any amendment 
after final rejection or any amendment not responsive to the last 
action, or any related proceedings, will not operate to save the 
application from abandonment.

(c)When reply by the applicant is a bona fide attempt to 
advance the application to final action, and is substantially a complete 
reply to the non-final Office action, but consideration of 
some matter or compliance with some requirement has been inadvertently 
omitted, applicant may be given a new time period for 
reply under § 1.134 to supply the omission.

37 CFR 1.138. Express abandonment.

(a)An application may be expressly abandoned by filing a 
written declaration of abandonment identifying the application in 
the United States Patent and Trademark Office. Express abandonment 
of the application may not be recognized by the Office 
before the date of issue or publication unless it is actually received 
by appropriate officials in time to act.

(b)A written declaration of abandonment must be signed by 
a party authorized under § 1.33(b)(1), (b)(3), or (b)(4) to sign a 
paper in the application, except as otherwise provided in this paragraph. 
A registered attorney or agent, not of record, who acts in a 
representative capacity under the provisions of § 1.34(a) when 
filing a continuing application, may expressly abandon the prior 
application as of the filing date granted to the continuing application.

(c)An applicant seeking to abandon an application to avoid 
publication of the application (see § 1.211(a)(1)) must submit a 
declaration of express abandonment by way of a petition under 
this section including the fee set forth in § 1.17(h) in sufficient 
time to permit the appropriate officials to recognize the abandonment 
and remove the application from the publication process. 
Applicant should expect that the petition will not be granted and 
the application will be published in regular course unless such 
declaration of express abandonment and petition are received by 
the appropriate officials more than four weeks prior to the projected 
date of publication.

Abandonment may be either of the invention or of 
an application. This discussion is concerned with 
abandonment of the application for patent.

An abandoned application, in accordance with 
37 
CFR 1.135 and 1.138, is one which is removed 
from the Office docket of pending applications 
through:

(A)formal abandonment

(1)by the applicant (acquiesced in by the 
assignee if there is one), 

(2)by the attorney or agent of record , or

(3)by a registered attorney or agent acting in a 
representative capacity under 37 CFR 1.34(a) when 
filing a continuing application; or

(B)failure of applicant to take appropriate action 
within a specified time at some stage in the prosecution 
of the application.

Where an applicant, himself or herself, formally 
abandons an application and there is a corporate 
assignee, the acquiescence must be made through an 
officer whose official position is indicated and is 
authorized to sign on behalf of the corporate assignee.

===711.01Express or Formal Abandonment===

The applicant (acquiesced in by an assignee of 
record), or the attorney/agent of record, if any, can 
sign an express abandonment. It is imperative that the 
attorney or agent of record exercise every precaution 
in ascertaining that the abandonment of the application 
is in accordance with the desires and best interests 
of the applicant prior to signing a letter of express 
abandonment of a patent application. Moreover, special 
care should be taken to ensure that the appropriate 
application is correctly identified in the letter of abandonment.

A letter of abandonment properly signed becomes 
effective when an appropriate official of the Office 
takes action thereon. When so recognized, the date of 
abandonment may be the date of recognition or a later 
date if so specified in the letter itself. For example, 
where a continuing application is filed with a request 
to abandon the prior application as of the filing date 
accorded the continuing application, the date of the 
abandonment of the prior application will be in accordance 
with the request once it is recognized.

A letter of express abandonment or a petition under 
37 CFR 1.138(c) for express abandonment to avoid 
publication of the application (see 37 CFR 
1.211(a)(1)) accompanied by the petition fee set forth 
in 37 CFR 1.17(h) may be mailed or faxed.

Since a petition under 37 CFR 1.138(c) will not 
stop publication of the application unless it is recognized 
and acted on by the Pre-Grant Publication Division 
in sufficient time to avoid publication, applicants 
should transmit the petition by facsimile transmission 
in all instances where the projected publication date is 
less than 3 months from the date of the petition. This 
will increase the chance of such petition being 
received by the appropriate officials in sufficient time 
to recognize the abandonment and remove the application 
from the publication process. If the issue fee 
has been paid, the letter of express abandonment 
should be directed to the Office of Petitions instead of 
the Pre-Grant Publication Division and be accompanied 
by a petition to withdraw an application from 
issue under 37 CFR 1.313(c). See subsection “I. After 
Payment of Issue Fee.”

Action in recognition of an express abandonment 
may take the form of an acknowledgment by the Publishing 
Division of the receipt of the express abandonment, 
indicating that it is in compliance with 37 CFR 
1.138.

It is suggested that divisional applications be 
reviewed before filing to ascertain whether the prior 
application should be abandoned. Care should be 
exercised in situations such as these as the Office 
looks on express abandonments as acts of deliberation, 
intentionally performed.

Applications may be expressly abandoned as provided 
for in 37 CFR 1.138. When a letter expressly 
abandoning an application (not in issue) is received, 
the Office should acknowledge receipt thereof, and 
indicate whether it does or does not comply with the 
requirements of 37 CFR 1.138.

The filing of a request for a continued prosecution 
application (CPA) under 37 CFR 1.53(d) in a design 
application is considered to be a request to expressly 
abandon the prior application as of the filing date 
granted the continuing application.

If the letter expressly abandoning the application 
does comply with 37 CFR 1.138, the Office personnel 
should respond by using a “Notice of Abandonment” 
form PTO-1432, and by checking the appropriate 
box(es). If such a letter does not comply with the 
requirements of 37 CFR 1.138, a fully explanatory 
letter should be sent.

A letter of express abandonment which is not 
timely filed (because it was not filed within the period 
for reply), is not acceptable to expressly abandon the 
application. The letter of express abandonment should 
be placed in the application file but not formally 
entered.

The application should be pulled for abandonment 
after expiration of the maximum permitted period for 
reply (see MPEP § 711.04(a)) and applicant notified 
of the abandonment for failure to reply within the statutory 
period. See MPEP § 711.02 and § 711.04(c).

An amendment canceling all of the claims, even 
though said amendment is signed by the applicant 
himself/herself and the assignee, is not an express 
abandonment. The Office, however, will not enter any 
amendment that would cancel all of the claims in an 
application without presenting any new or substitute 
claims. Such an amendment is regarded as nonresponsive and 
is not a bona fide attempt to advance the application 
to final action. The practice set forth in 37 CFR 
1.135(c) does not apply to such amendment.

An attorney or agent not of record in an application 
may file a withdrawal of an appeal under 37 CFR 
1.34(a) except in those instances where such withdrawal 
would result in abandonment of the application. 
In such instances the withdrawal of appeal is in 
fact an express abandonment.

=====I. AFTER PAYMENT OF ISSUE FEE=====

If a letter of express abandonment is being submitted 
in an allowed application after the payment of the 
issue fee, the express abandonment must be accompanied 
by a petition to withdraw from issue under 37 
CFR 1.313(c) and the fee set forth in 37 CFR 1.17(h). 
Also see MPEP § 1308. The express abandonment 
may not be recognized by the Office unless it is actually 
received by appropriate officials in time to withdraw 
the application from issue. A petition under 37 
CFR 1.313 will not be effective to withdraw the application 
from issue unless it is actually received and 
granted by the appropriate official before the date of 
issue. After the issue fee has been paid, the application 
will not be withdrawn upon petition by the applicant 
for any reason except those reasons listed in 37 
CFR 1.313(c), which include express abandonment of 
the application. An application may be withdrawn 
from issue for express abandonment of the application 
in favor of a continuing application. The petition 
under 37 CFR 1.313(c) accompanied by the petition 
fee should be addressed to the Office of Petitions. If 
the petition and the letter of abandonment are 
received by appropriate officials in sufficient time to 
act on the petition and remove the application from 
the issue process, the letter of abandonment will be 
acknowledged by the Office of Patent Publication 
after the petition is granted. Petitions to withdraw an 
application from issue under 37 CFR 1.313(c) may 
be mailed, faxed, or hand-delivered.


See MPEP § 711.05 and § 1308. In cases where 
37 CFR 1.313 precludes giving effect to an express 
abandonment, the appropriate remedy is a petition, 
with fee, under 37 CFR 1.183, showing an extraordinary 
situation where justice requires suspension of 37 
CFR 1.313.

=====II. TO AVOID PUBLICATION OF APPLICATION=====

A petition under 37 CFR 1.138(c) will not stop 
publication of the application unless it is recognized 
and acted on by the Pre-Grant Publication Division in 
sufficient time to avoid publication. The petition will 
be granted when it is recognized in sufficient time to 
avoid publication of the application. The petition will 
be denied when it is not recognized in time to avoid 
publication. Generally, a petition under 37 CFR 
1.138(c) will not be granted and the application will 
be published in regular course unless such declaration 
of express abandonment and petition are received by 
the appropriate officials more than four weeks prior to 
the projected date of publication. It is unlikely that a 
petition filed within four weeks of the projected date 
of publication will be effective to avoid publication. 
Also note that withdrawal of an application from issue 
after payment of the issue fee may not be effective to 
avoid publication of an application under 35 U.S.C. 
122(b). See 37 
CFR 1.313(d).

=====III. TO OBTAIN REFUND OF SEARCH FEE AND EXCESS CLAIMS FEE=====

{{Statute|37 CFR 1.138. Express abandonment.}}
{{Ellipsis}}
(d) An applicant seeking to abandon an application filed 
under 35 U.S.C. 111(a) and § 1.53(b) on or after December 8, 
2004, to obtain a refund of the search fee and excess claims fee 
paid in the application, must submit a declaration of express abandonment 
by way of a petition under this paragraph before an 
examination has been made of the application. The date indicated 
on any certificate of mailing or transmission under § 1.8 will not 
be taken into account in determining whether a petition under § 
1.138(d) was filed before an examination has been made of the 
application. If a request for refund of the search fee and excess 
claims fee paid in the application is not filed with the declaration 
of express abandonment under this paragraph or within two 
months from the date on which the declaration of express abandonment 
under this paragraph was filed, the Office may retain the 
entire search fee and excess claims fee paid in the application. 
This two-month period is not extendable. If a petition and declaration 
of express abandonment under this paragraph are not filed 
before an examination has been made of the application, the Office will not refund any part of the search fee and excess claims fee paid in the application except as provided in § 1.26. 
|}


As provided in 37 CFR 1.138(d), refund of the 
search fee and excess claims fee paid in an application 
filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) on 
or after December 8, 2004 may be obtained by submitting 
a petition and declaration of express abandonment 
before an examination has been made of the 
application.

A petition under 37 CFR 1.138(d) will be granted if 
it was filed before an examination has been made of 
the application and will be denied if it was not filed 
before an examination has been made of the application. 
This averts the situation in which an applicant 
files a declaration of express abandonment to obtain a 
refund of the search fee and excess claims fee, the 
request for a refund is not granted because the declaration 
of express abandonment was not filed before an 
examination has been made of the application, the 
applicant then wishes to rescind the declaration of 
express abandonment upon learning that the declaration 
of express abandonment was not filed before an 
examination has been made of the application, and the 
Office cannot revive the application (once the declaration 
of express abandonment is recognized) because 
the application was expressly and intentionally abandoned 
by the applicant.

An “examination has been made of the application” 
for purposes of 37 CFR 1.138(d) once an action (e.g., 
restriction or election of species requirement, requirement 
for information under 37 CFR 1.105, first Office 
action on the merits, notice of allowability or notice of 
allowance, or action under Ex parte Quayle, 1935 
Dec. Comm’r Pat. 11 (1935)) is shown in the Patent 
Application Locating and Monitoring (PALM) system 
as having been counted. For purposes of 37 CFR 
1.138(d), “before” means occurring earlier in time, in 
that if a petition under 37 CFR 1.138(d) is filed and an 
action is counted on the same day, the petition under 
37 CFR 1.138(d) was not filed before an examination 
has been made of the application. In addition, the date 
indicated on any certificate of mailing or transmission 
under 37 CFR 1.8 is not taken into account in determining 
whether a petition under 37 CFR 1.138(d) was 
filed before an examination has been made of the 
application.

The PALM system maintains computerized contents 
records of all patent applications and reexamination 
proceedings. The PALM system will show a 
status higher than 031 once an action has been 
counted. If the status of an application as shown in 
PALM is higher than 031 before or on the day that the 
petition under 37 CFR 1.138(d) was filed, the petition 
under 37 CFR 1.138(d) will be denied and the search 
fee and excess claims fee will not be refunded except 
as provided in 37 CFR 1.26.

A petition under 37 CFR 1.138(d) may not be effective 
to stop publication of an application unless the 
petition under 37 CFR 1.138(d) is granted and the 
abandonment processed before technical preparations 
for publication of the application has begun. Technical 
preparations for publication of an application generally 
begin four months prior to the projected date of 
publication.

=====IV. APPLICATION IN INTERFERENCE=====

A written declaration of abandonment of the application 
signed only by an attorney or agent of record, 
when the application sought to be expressly or formally 
abandoned is the subject of an interference proceeding 
under 35 U.S.C. 135, is not effective to 
terminate the interference, and will not be considered 
until after ex parte prosecution is resumed. In order to 
be effective to terminate an interference proceeding, 
an abandonment of the application must be signed by 
the inventor with the written consent of the assignee 
where there has been an assignment.

===711.02 Failure To Take Required Action During Statutory Period===

37 CFR 1.135(a) specifies that an application 
becomes abandoned if applicant “fails to reply” to an 
office action within the fixed statutory period. This 
failure may result either from (A) failure to reply 
within the statutory period, or (B) insufficiency of 
reply, i.e., failure to file a “complete and proper reply, 
as the condition of the case may require” within the 
statutory period (37 CFR 1.135(b)).

When an amendment is filed after the expiration of 
the statutory period, the application is abandoned and 
the remedy is to petition to revive it. The examiner 
should notify the applicant or attorney at once that the 
application has been abandoned by using Notice of 
Abandonment form PTOL-1432. The proper boxes on 
the form should be checked and the blanks for the 
dates of the proposed amendment and the Office 
action completed. The late amendment is placed 
in the file wrapper but not formally entered. See 
MPEP §
 
714.17.

Form paragraph 7.90 or 7.98.02 may also be used.

¶ 7.90 Abandonment, Failure to Reply

This application is abandoned in view of applicant’s failure to 
submit a proper reply to the Office action mailed on [1] within the 
required period for reply.

Examiner Note:

1.A letter of abandonment should not be mailed until after the 
period for requesting an extension of time under 37 CFR 1.136(a)
has expired.

2.In pro se cases see form paragraph 7.98.02.



¶ 7.98.02 Reply Is Late, Petition To Revive Suggested, Pro 
Se

Applicant’s reply to the Office Action of [1] was received in 
the Patent and Trademark Office on [2], which is after the expiration 
of the period for reply set in the last Office Action. Since no 
time remains for applicant to obtain an extension of the period for 
reply by filing a petition under 37 
CFR 1.136(a), this application 
is abandoned. Applicant is advised that the abandonment of this 
application may only be overcome by filing a petition to revive 
under 37 CFR 1.137. A petition to revive may be appropriate if 
applicant’s failure to reply was either unavoidable or unintentional, 
as set forth below.

A. Failure to reply was unavoidable.

A petition to revive an abandoned application on the grounds 
that the failure to reply was unavoidable (37 CFR 1.137(a)) must 
be accompanied by: (1) the required reply (which has been filed); 
(2) a showing to the satisfaction of the Director that the entire 
delay in filing the required reply from the due date for the reply 
until the filing of a grantable petition pursuant to 37 CFR 1.137(a) 
was unavoidable; (3) any terminal disclaimer required pursuant to 
37 CFR 1.137(d); and (4) the $[3] petition fee as set forth in 37 
CFR 1.17(l). No consideration to the substance of a petition will 
be given until this fee is received.

The showing requirement can be met by submission of statements 
of fact establishing that the delay in filing the reply was 
unavoidable, as well as inadvertent. This must include: (1) a satisfactory 
showing that the cause of the delay resulting in failure to 
reply in timely fashion to the Office action was unavoidable; and 
(2) a satisfactory showing that the cause of any delay during the 
time period between abandonment and filing of the petition to 
revive was also unavoidable.

A terminal disclaimer and the $[4] terminal disclaimer fee is 
required under 37 CFR 1.137(d) if the application is: (1) a design 
application, (2) a utility application filed before June 8, 1995, or 
(3) a plant application filed before June 8, 1995. The terminal disclaimer 
must dedicate to the public a terminal part of the term of 
any patent granted the application equivalent to the period of 
abandonment of the application, and must also apply to any patent 
granted on any application containing a specific reference under 
35 
U.S.C. 120, 121 or 365(c) to the application for which revival 
is sought.

B. Failure to reply was unintentional.

A petition to revive an abandoned application on the grounds 
that the failure to reply was unintentional (37 CFR 1.137(b)) must 
be accompanied by: (1) the required reply (which has been filed); 
(2) a statement that the entire delay in filing the required reply 
from the due date for the reply until the filing of a grantable petition 
pursuant to 37 CFR 1.137(b) was unintentional; (3) any terminal 
disclaimer required pursuant to 37 CFR 1.137(d) (see above 
discussion); and (4) the $[5] petition fee as set forth in 37 CFR 
1.17(m). No consideration to the substance of a petition will be 
given until this fee is received. The Director may require additional 
information where there is a question whether the delay was 
unintentional.

 The required items and fees must be submitted promptly under 
a cover letter entitled “Petition to Revive.” 

 Further correspondence with respect to this matter should be 
addressed as follows:

By mail:

Mail Stop Petition

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

By FAX:

571-273-8300

Attn: Office of Petitions

Telephone inquiries with respect to this matter should be 
directed to the Office of Petitions Staff at (571) 272-3282. For 
more detailed information, see MPEP § 711.03(c).



To pass on questions of abandonment, it is essential 
that the examiner know the dates that mark the beginning 
and end of the statutory period under varying situations. 
Applicant's reply must reach the Office 
within the set shortened statutory period for reply dating 
from the date stamped or printed on the Office letter 
or within the extended time period obtained under 
37 CFR 1.136. (See MPEP § 710 to § 710.06.)

For a petition to withdraw a holding of abandonment 
based upon failure to receive an Office action, 
see MPEP § 711.03(c).

====711.02(a)Insufficiency of Reply====

Abandonment may result from a situation where 
applicant's reply is within the period for reply but is 
not fully responsive to the Office action. But see 
MPEP § 710.02(c). See also MPEP § 714.02 to 
§ 714.04.

¶ 7.91 Reply Is Not Fully Responsive, Extension of Time 
Suggested

The reply filed on [1] is not fully responsive to the prior Office 
action because: [2]. Since the period for reply set forth in the 
prior Office action has expired, this application will become abandoned 
unless applicant corrects the deficiency and obtains an 
extension of time under 37 
CFR 1.136(a). 

The date on which the petition under 37 CFR 1.136(a) and the 
appropriate extension fee have been filed is the date for purposes 
of determining the period of extension and the corresponding 
amount of the fee. In no case may an applicant reply outside the 
SIX (6) MONTH statutory period or obtain an extension for more 
than FIVE (5) MONTHS beyond the date for reply set forth in an 
Office action. A fully responsive reply must be timely filed to 
avoid abandonment of this application. 

Examiner Note:

1.In bracket 2, set forth why the examiner considers there to be 
a failure to take “complete and proper action” within the statutory 
period.

2.If the reply appears to be a bona fide attempt to respond with 
an inadvertent omission, do not use this form paragraph; instead 
use form paragraph 7.95.

====711.02(b)Special Situations InvolvingAbandonment====

The following situations involving questions of 
abandonment often arise, and should be specially 
noted:

(A)Copying claims from a patent when not suggested 
by the U.S. Patent and Trademark Office does 
not constitute a reply to the last Office action and will 
not save the application from abandonment, unless the 
last Office action relied solely on the patent for the 
rejection of all the claims rejected in that action.

(B)An application may become abandoned 
through withdrawal of, or failure to prosecute, an 
appeal to the Board of Patent Appeals and Interferences. 
See MPEP §
 
1215.01 to § 1215.04.

(C)An application may become abandoned 
through dismissal of appeal to the Court of Appeals 
for the Federal Circuit or civil action, where there was 
not filed prior to such dismissal an amendment putting 
the application in condition for issue or fully 
responsive to the Board’s decision. Abandonment 
results from failure to perfect an appeal as required by 
the Court of Appeals for the Federal Circuit. See 
MPEP § 1215.04 and § 1216.01.

(D)Where claims are suggested for interference 
near the end of the period for reply running against 
the application. See MPEP Chapter 2300.

(E) Where a continued prosecution application 
(CPA) under 37 CFR 1.53(d) is filed. See MPEP 
§ 201.06(d) and § 711.01. 

(F) Prior to a decision by the Board, an application 
on appeal that has no allowed claims may 
become abandoned when a Request for Continued 
Examination (RCE) is improperly filed without the 
appropriate fee or a submission (37 CFR 1.114(d)) in 
the application. The filing of an RCE will be treated 
as a withdrawal of the appeal by the applicant. See 
MPEP § 706.07(h), paragraph X.

(G) When a reply to a final Office action is outstanding, 
an application may become abandoned if an 
RCE is filed without a timely submission that meets 
the reply requirements of 37 CFR 1.111. The filing of 
an improper RCE will not operate to toll the running 
of any time period set in the previous Office action for 
reply to avoid abandonment of the application. See 
MPEP § 706.07(h), paragraph VI.


(H) Prior to payment of the issue fee, an 
allowed application may become abandoned if an 
RCE is improperly filed without the appropriate fee or 
a submission in the application. The improper RCE 
will not operate to toll the running of the time period 
for payment of the issue fee. See MPEP § 706.07(h), 
paragraph IX.

====711.02(c) Termination of Proceedings====

“Termination of proceedings” is an expression 
found in 35 U.S.C. 120. As there stated, a second 
application is considered to be copending with an earlier 
application if it is filed before 

(A)the patenting, 

(B)the abandonment of, or 

(C)termination of proceedings on the earlier 
application. 

“Before” has consistently been interpreted, in this 
context, to mean “not later than.”

In each of the following situations, proceedings are 
terminated:

(A)When the issue fee is not paid and the application 
is abandoned for failure to pay the issue fee, 
proceedings are terminated as of the date the issue fee 
was due and the application is the same as if it were 
abandoned after midnight on that date (but if the issue 
fee is later accepted, on petition, the application is 
revived). See MPEP § 711.03(c).

(B)If an application is in interference wherein all 
the claims present in the application correspond to the 
counts and the application loses the interference as to 
all the claims, then proceedings on that application are 
terminated as of the date appeal or review by civil 
action was due if no appeal or civil action was filed.

(C)Proceedings are terminated in an application 
after decision by the Board of Patent Appeals and 
Interferences as explained in MPEP § 1214.06.

(D)Proceedings are terminated after a decision by 
the court as explained in MPEP § 1216.01.

711.03Reconsideration of Holding of 
Abandonment; Revival

When advised of the abandonment of his or her 
application, applicant may either ask for reconsideration 
of such holding, if he or she disagrees with it on 
the basis that there is no abandonment in fact; or petition 
for revival under 37 
CFR 1.137.

====711.03(a) Holding Based on Insufficiencyof Reply====

Applicant may deny that the reply was incomplete.

While the primary examiner has no authority to act 
upon an application in which no action by applicant 
was taken during the period for reply, he or she may 
reverse his or her holding as to whether or not an 
amendment received during such period was responsive 
and act on an application of such character which 
he or she has previously held abandoned. This is not a 
revival of an abandoned application but merely a 
holding that the application was never abandoned. See 
also MPEP § 714.03.

====711.03(b) Holding Based on Failure To Reply Within Period====

When an amendment reaches the U.S. Patent and 
Trademark Office after the expiration of the period for 
reply and there is no dispute as to the dates involved, 
no question of reconsideration of a holding of abandonment 
can be presented.

However, the examiner and the applicant may disagree 
as to the date on which the period for reply 
commenced to run or ends. In this situation, as in the 
situation involving sufficiency of reply, the applicant 
may take issue with the examiner and point out to him 
or her that his or her holding was erroneous.

711.03(c)Petitions Relating to Abandonment 
[R-5]

37 CFR 1.135. Abandonment for failure to reply within 
time period.

(a)If an applicant of a patent application fails to reply within 
the time period provided under § 1.134 and §
 
1.136, the application 
will become abandoned unless an Office action indicates otherwise.


(b)Prosecution of an application to save it from abandonment 
pursuant to paragraph (a) of this section must include such 
complete and proper reply as the condition of the application may 
require. The admission of, or refusal to admit, any amendment 
after final rejection or any amendment not responsive to the last 
action, or any related proceedings, will not operate to save the 
application from abandonment.

(c)When reply by the applicant is a bona fide attempt 
to 
advance the application to final action, and is substantially a 
complete reply to the non-final Office action, but consideration of 
some matter or compliance with some requirement has been inadvertently 
omitted, applicant may be given a new time period for 
reply under §
 
1.134 to supply the omission.

37 CFR 1.137. Revival of abandoned application, 
terminated reexamination proceeding, or lapsed patent.

(a)Unavoidable. If the delay in reply by applicant or patent 
owner was unavoidable, a petition may be filed pursuant to this 
paragraph to revive an abandoned application, a reexamination 
proceeding terminated under §§ 1.550(d) or 1.957(b) or (c), or a 
lapsed patent. A grantable petition pursuant to this paragraph must 
be accompanied by:

(1)The reply required to the outstanding Office action or 
notice, unless previously filed;

(2)The petition fee as set forth in § 1.17(l);

(3)A showing to the satisfaction of the Director that the 
entire delay in filing the required reply from the due date for the 
reply until the filing of a grantable petition pursuant to this paragraph 
was unavoidable; and

(4)Any terminal disclaimer (and fee as set forth in 
§
 
1.20(d)) required pursuant to paragraph (d) of this section.

(b)Unintentional. If the delay in reply by applicant or patent 
owner was unintentional, a petition may be filed pursuant to this 
paragraph to revive an abandoned application, a reexamination 
proceeding terminated under §§ 1.550(d) or 1.957(b) or (c), or a 
lapsed patent. A grantable petition pursuant to this paragraph must 
be accompanied by:

(1)The reply required to the outstanding Office action or 
notice, unless previously filed;

(2)The petition fee as set forth in § 1.17(m);

(3)A statement that the entire delay in filing the required 
reply from the due date for the reply until the filing of a grantable 
petition pursuant to this paragraph was unintentional. The Director 
may require additional information where there is a question 
whether the delay was unintentional; and

(4)Any terminal disclaimer (and fee as set forth in 
§ 1.20(d)) required pursuant to paragraph (d) of this section.

(c)Reply. In a nonprovisional application abandoned for 
failure to prosecute, the required reply may be met by the filing of 
a continuing application. In a nonprovisional utility or plant application 
filed on or after June 8, 1995, and abandoned for failure to 
prosecute, the required reply may also be met by the filing of a 
request for continued examination in compliance with § 1.114. In 
an application or patent, abandoned or lapsed for failure to pay the 
issue fee or any portion thereof, the required reply must include 
payment of the issue fee or any outstanding balance. In an application, 
abandoned for failure to pay the publication fee, the 
required reply must include payment of the publication fee.

(d)Terminal disclaimer.

(1)Any petition to revive pursuant to this section in a 
design application must be accompanied by a terminal disclaimer 
and fee as set forth in § 1.321 dedicating to the public a terminal 
part of the term of any patent granted thereon equivalent to the 
period of abandonment of the application. Any petition to revive 
pursuant to this section in either a utility or plant application filed 
before June 8, 1995, must be accompanied by a terminal disclaimer 
and fee as set forth in § 1.321 dedicating to the public a 
terminal part of the term of any patent granted thereon equivalent 
to the lesser of:

(i)The period of abandonment of the application; or

(ii)The period extending beyond twenty years from 
the date on which the application for the patent was filed in the 
United States or, if the application contains a specific reference to 
an earlier filed application(s) under 35 U.S.C. 120, 121, or 365(c), 
from the date on which the earliest such application was filed.

(2)Any terminal disclaimer pursuant to paragraph (d)(1) 
of this section must also apply to any patent granted on a continuing 
utility or plant application filed before June 8, 1995, or a continuing 
design application, that contains a specific reference under 
35 U.S.C. 120, 121, or 365(c) to the application for which revival 
is sought.

(3)The provisions of paragraph (d)(1) of this section do 
not apply to applications for which revival is sought solely for 
purposes of copendency with a utility or plant application filed on 
or after June 8, 1995, to lapsed patents, to reissue applications, or 
to reexamination proceedings.

(e)Request for reconsideration. Any request for reconsideration 
or review of a decision refusing to revive an abandoned 
application, a terminated reexamination proceeding, or lapsed 
patent upon petition filed pursuant to this section, to be considered 
timely, must be filed within two months of the decision refusing to 
revive or within such time as set in the decision. Unless a decision 
indicates otherwise, this time period may be extended under:

(1)The provisions of § 1.136 for an abandoned application 
or lapsed patent;

(2)The provisions of § 1.550(c) for a terminated ex partereexamination proceeding filed under § 1.510; or

(3)The provisions of § 1.956 for a terminated inter partesreexamination proceeding filed under § 1.913.

(f)Abandonment for failure to notify the Office of a foreign 
filing: A nonprovisional application abandoned pursuant to 
35 
U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office 
of the filing of an application in a foreign country or under a multinational 
treaty that requires publication of applications eighteen 
months after filing, may be revived only pursuant to paragraph (b) 
of this section. The reply requirement of paragraph (c) of this section 
is met by the notification of such filing in a foreign country or 
under a multinational treaty, but the filing of a petition under this 
section will not operate to stay any period for reply that may be 
running against the application.

(g)Provisional applications: A provisional application, 
abandoned for failure to timely respond to an Office requirement, 
may be revived pursuant to this section. Subject to the provisions 
of 35 U.S.C. 119(e)(3) and § 1.7(b), a provisional application will 
not be regarded as pending after twelve months from its filing date 
under any circumstances.

37 CFR 1.181. Petition to the Director.

(a)Petition may be taken to the Director:

(1)From any action or requirement of any examiner in 
the ex parte prosecution of an application, or in ex parte or inter 
partes prosecution of a reexamination proceeding which is not 
subject to appeal to the Board of Patent Appeals and Interferences 
or to the court; 

(2)In cases in which a statute or the rules specify that the 
matter is to be determined directly by or reviewed by the Director; 
and

(3)To invoke the supervisory authority of the Director in 
appropriate circumstances. For petitions involving action of the 
Board of Patent Appeals and Interferences, see § 41.3 of this title.

(f)The mere filing of a petition will not stay any period for 
reply that may be running against the application, nor act as a stay 
of other proceedings. Any petition under this part not filed within 
two months of the mailing date of the action or notice from which 
relief is requested may be dismissed as untimely, except as otherwise 
provided. This two-month period is not extendable.

I.PETITION TO WITHDRAW HOLDING 
OF ABANDONMENT

A petition to revive an abandoned application (discussed 
below) should not be confused with a petition 
from an examiner’s holding of abandonment. Where 
an applicant contends that the application is not in fact 
abandoned (e.g., there is disagreement as to the sufficiency 
of the reply, or as to controlling dates), a petition 
under 37 CFR 1.181(a) requesting withdrawal of 
the holding of abandonment is the appropriate course 
of action, and such petition does not require a fee. 
Where there is no dispute as to whether an application 
is abandoned (e.g., the applicant’s contentions merely 
involve the cause of abandonment), a petition under 
37 CFR 1.137 (accompanied by the appropriate petition 
fee) is necessary to revive the abandoned application.

Two additional procedures are available for reviving 
an application that has become abandoned due to 
a failure to reply to an Office Action: (1) a petition 
under 37 CFR 1.137(a) based on unavoidable delay; 
and (2) a petition under 37 CFR 1.137(b) based on 
unintentional delay.

A.Petition To Withdraw Holding of Abandonment 
Based on Failure To Receive Office Action

In Delgar v. Schulyer, 172 USPQ 513 (D.D.C. 
1971), the court decided that the Office should mail a 
new Notice of Allowance in view of the evidence presented 
in support of the contention that the applicant’s 
representative did not receive the original Notice of 
Allowance. Under the reasoning of Delgar, an allegation 
that an Office action was never received may be 
considered in a petition to withdraw the holding of 
abandonment. If adequately supported, the Office 
may grant the petition to withdraw the holding of 
abandonment and remail the Office action. That is, the 
reasoning of Delgar is applicable regardless of 
whether an application is held abandoned for failure 
to timely pay the issue fee (35 U.S.C. 151) or for failure 
to prosecute (35 
U.S.C. 133).

To minimize costs and burdens to practitioners and 
the Office, the Office has modified the showing 
required to establish nonreceipt of an Office action. 
The showing required to establish nonreceipt of an 
Office communication must include a statement from 
the practitioner stating that the Office communication 
was not received by the practitioner and attesting to 
the fact that a search of the file jacket and docket 
records indicates that the Office communication was 
not received. A copy of the docket record where the 
nonreceived Office communication would have been 
entered had it been received and docketed must be 
attached to and referenced in practitioner’s statement. 
For example, if a three month period for reply was set 
in the nonreceived Office action, a copy of the docket 
report showing all replies docketed for a date three 
months from the mail date of the nonreceived Office 
action must be submitted as documentary proof of 
nonreceipt of the Office action. 

The showing outlined above may not be sufficient 
if there are circumstances that point to a conclusion 
that the Office action may have been lost after receipt 
rather than a conclusion that the Office action was lost 
in the mail (e.g., if the practitioner has a history of not 
receiving Office actions).

Evidence of nonreceipt of an Office communication 
or action (e.g., Notice of Abandonment or an 
advisory action) other than that action to which reply 
was required to avoid abandonment would not warrant 
withdrawal of the holding of abandonment. 

Abandonment takes place by operation of law for failure 
to reply to an Office action or timely pay the issue 
fee, not by operation of the mailing of a Notice of 
Abandonment. See Lorenz v. Finkl, 333 F.2d 885, 
889-90, 142 USPQ 26, 29-30 (CCPA 1964); Krahn v. 
Commissioner, 15 USPQ2d 1823, 1824 (E.D. Va 
1990); In re Application of Fischer, 6 USPQ2d 1573, 
1574 (Comm’r Pat. 1988). 

B.Petition To Withdraw Holding of Abandonment 
Based on Evidence That a Reply Was 
Timely Mailed or Filed

37 CFR 1.10(c) through 1.10(e) and 1.10(g) set 
forth procedures for petitioning the Director of the 
USPTO to accord a filing date to correspondence as of 
the date of deposit of the correspondence as “Express 
Mail.” A petition to withdraw the holding of abandonment 
relying upon a timely reply placed in “Express 
Mail” must include an appropriate petition under 37 
CFR 1.10(c), (d), (e), or (g) (see MPEP § 513). When 
a paper is shown to have been mailed to the Office 
using the “Express Mail” procedures, the paper must 
be entered in PALM with the “Express Mail” date.

Similarly, applicants may establish that a reply was 
filed with a postcard receipt that properly identifies 
the reply and provides prima facie evidence that the 
reply was timely filed. See MPEP § 503. For example, 
if the application has been held abandoned for failure 
to file a reply to a first Office action, and applicant has 
a postcard receipt showing that an amendment was 
timely filed in response to the Office action, then the 
holding of abandonment should be withdrawn upon 
the filing of a petition to withdraw the holding of 
abandonment. When the reply is shown to have been 
timely filed based on a postcard receipt, the reply 
must be entered into PALM using the date of receipt 
of the reply as shown on the post card receipt. 

Where a certificate of mailing under 37 CFR 1.8, 
but not a postcard receipt, is relied upon in a petition 
to withdraw the holding of abandonment, see 37 CFR 
1.8(b) and MPEP § 512. As stated in 37 CFR 
1.8(b)(3) the statement that attests to the previous 
timely mailing or transmission of the correspondence 
must be on a personal knowledge basis, or to the satisfaction 
of the Director of the USPTO. If the statement 
attesting to the previous timely mailing is not made by 
the person who signed the Certificate of Mailing (i.e., 
there is no personal knowledge basis), then the statement 
attesting to the previous timely mailing should 
include evidence that supports the conclusion that the 
correspondence was actually mailed (e.g., copies of a 
mailing log establishing that correspondence was 
mailed for that application). When the correspondence 
is shown to have been timely filed based on a 
certificate of mailing, the correspondence is entered 
into PALM with the actual date of receipt (i.e., the 
date that the duplicate copy of the papers was filed 
with the statement under 37 CFR 1.8).

37 CFR 1.8(b) also permits applicant to notify the 
Office of a previous mailing or transmission of correspondence 
and submit a statement under 37 CFR 
1.8(b)(3) accompanied by a duplicate copy of the correspondence 
when a reasonable amount of time (e.g., 
more than one month) has elapsed from the time of 
mailing or transmitting of the correspondence. Applicant 
does not have to wait until the application 
becomes abandoned before notifying the Office of the 
previous mailing or transmission of the correspondence. 
Applicant should check the private Patent 
Application Information Retrieval (PAIR) system for 
the status of the correspondence before notifying the 
Office. See MPEP § 512.

C.Treatment of Untimely Petition To Withdraw 
Holding of Abandonment

37 CFR 1.181(f) provides that, inter alia, except as 
otherwise provided, any petition not filed within 2 
months from the action complained of may be dismissed 
as untimely. Therefore, any petition (under 37 
CFR 1.181) to withdraw the holding of abandonment 
not filed within 2 months of the mail date of a notice 
of abandonment (the action complained of) may be 
dismissed as untimely. 37 CFR 1.181(f). 

Rather than dismiss an untimely petition to withdraw 
the holding of abandonment under 37 CFR 
1.181(f), the Office may require a terminal disclaimer 
as a condition of granting an untimely petition to 
withdraw the holding of abandonment. 

1.Design Applications, Utility Applications 
Filed Before June 8, 1995, and Plant Applications 
Filed Before June 8, 1995

(a)Applicant Receives Notice of Abandonment

In any design application, any utility application 
filed before June 8, 1995, or any plant application 
filed before June 8, 1995, if applicant receives a 
notice of abandonment, any petition to withdraw the 
holding of abandonment that is not filed within two 
months of the mail date of the notice of abandonment 
will not (absent extraordinary circumstances) be 
treated on its merits unless accompanied by a terminal 
disclaimer under 37 CFR 1.321(a), and the 
required fee set forth in 37 CFR 1.20(d). The period to 
be disclaimed is the terminal part of the term of any 
patent granted on the application, or of any patent 
granted on any utility or plant application that claims 
the benefit of the filing date of the application under 
35 U.S.C. 120, 121, or 365(c), equivalent to the 
period between:

(A)the date that is two months after the mail date 
of the notice of abandonment; and

(B)the filing date of a grantable petition to withdraw 
the holding of abandonment.

Form PTO/SB/62 is the appropriate terminal disclaimer 
to be used.

(b)Applicant Does Not Receive Notice of 
Abandonment

In any design application, any utility application 
filed before June 8, 1995, or any plant application 
filed before June 8, 1995, if applicant never receives 
the notice of abandonment, any petition to withdraw 
the holding of abandonment that is not filed within 
twelve months from the date of applicant’s filing (or 
date of submission, if the correspondence was never 
received by the Office) of correspondence with the 
Office for which further action by the Office can reasonably 
be expected, will not (absent extraordinary 
circumstances) be treated on its merit unless accompanied 
by a terminal disclaimer under 37 CFR 
1.321(a), and the required fee set forth in 37 CFR 
1.20(d). The period to be disclaimed is the terminal 
part of the term of any patent granted thereon, or of 
any patent granted on any utility or plant application 
that claims the benefit of the filing date of the application 
under 35 U.S.C. 120, 121, or 365(c), equivalent 
to the period between:

(A)the date that is twelve months from the date 
of applicant’s filing or submission of correspondence 
with the Office, for which further action by the Office 
can reasonably be expected; and

(B)the filing date of a grantable petition to withdraw 
the holding of abandonment.

Form PTO/SB/62 is the appropriate terminal disclaimer 
to be used.

2.Utility and Plant Applications Filed on or 
After June 8, 1995 but Before May 29, 2000

In utility and plant applications filed on or after 
June 8, 1995, but before May 29, 2000, a terminal disclaimer 
should not be required as a condition of 
granting an untimely petition to withdraw the holding 
of abandonment. However, the Office of Patent Legal 
Administration (OPLA) must be consulted in such situations 
if the holding of abandonment involves a 
period during: (A) appellate review by the Board of 
Patent Appeals and Interferences; (B) an interference 
proceeding under 35 U.S.C. 135(a), including any 
suspension due to an interference proceeding; or (C) 
which the application was in a sealed condition or 
prosecution was suspended due to a secrecy order 
under 35 U.S.C. 181. This is because it is necessary to 
effect (if appropriate) a reduction of patent term 
extension under the “due diligence” provisions of 
37 CFR 1.701(d)(2).

3.Utility and Plant Applications Filed on or 
After May 29, 2000

In utility and plant applications filed on or after 
May 29, 2000, a terminal disclaimer should not be 
required as a condition of granting an untimely petition 
to withdraw the holding of abandonment. This is 
because any patent term adjustment is automatically 
reduced under the provisions of 37 CFR 1.704(c)(4) 
in applications subject to the patent term adjustment 
provisions of the American Inventors Protection Act 
of 1999 (AIPA) if a petition to withdraw a holding of 
abandonment is not filed within two months from 
the 
mailing date of the notice of abandonment, and 
if 
applicant does not receive the notice of abandonment, 
any patent term adjustment is reduced under the 
provisions of 37 CFR 1.704(a) by a period equal to 
the period of time during which the applicant “failed 
to engage in reasonable efforts to conclude prosecution” 
(processing or examination) of the application. 

Where the record indicates that the applicant intentionally 
delayed the filing of a petition to withdraw 
the holding of abandonment, the Office may simply 
dismiss the petition as untimely (37 CFR 1.181(f)) 
solely on the basis of such intentional delay in taking 
action in the application without further addressing 
the merits of the petition. Obviously, intentional delay 
in seeking the revival of an abandoned application 
precludes relief under 37 CFR 1.137(a) or (b) (discussed 
below).

II.PETITIONS TO REVIVE AN ABANDONED 
APPLICATION, OR ACCEPT LATE PAYMENT 
OF ISSUE FEE

37 CFR 1.137 provides for the revival of abandoned 
applications and lapsed patents for the failure:

(A)to timely reply to an Office requirement in a 
provisional application; 

(B)to timely prosecute in a nonprovisional application; 

(C)to timely pay the issue fee for a design application; 

(D)to timely pay the issue fee for a utility or plant 
application; and 

(E)to timely pay any outstanding balance of the 
issue fee (lapsed patents).

A petition under 37 CFR 1.137(a) requires:

(A)the required reply, unless previously filed; 

(B)the petition fee as set forth in 37 CFR 1.17(l); 

(C)a showing to the satisfaction of the Director 
of the USPTO that the entire delay in filing the 
required reply from the due date for the reply until the 
filing of a grantable petition pursuant to 37 CFR 
1.137(a) was unavoidable; and 

(D)any terminal disclaimer required pursuant to 
37 CFR 1.137(d).

A petition under 37 CFR 1.137(b) requires:

(A)the required reply, unless previously filed; 

(B)the petition fee as set forth in 37 CFR 
1.17(m); 

(C)a statement that the entire delay in filing the 
required reply from the due date for the reply until the 
filing of a grantable petition pursuant to 37 CFR 
1.137(b) was unintentional; and 

(D)any terminal disclaimer required pursuant to 
37 
CFR 1.137(d). 

The Director of the USPTO may require additional 
information where there is a question whether the 
delay was unintentional.

A.Reply Requirement

Unlike a petition to withdraw the holding of abandonment, 
a petition to revive under 37 CFR 1.137must be accompanied by, inter alia, the required 
reply. See Ex parte Richardson, 1906 Dec. Comm’r 
Pat. 83 (1905) (“This Office has no authority to revive 
a case upon which no action has been taken within 
[the period for reply], but merely has authority to 
determine after an action is taken whether the delay in 
presenting it was unavoidable.”). Generally, the 
required reply is the reply sufficient to have avoided 
abandonment, had such reply been timely filed. A 
petition for an extension of time under 37 CFR 1.136and a fee for such an extension of time are not 
required to be included with the reply.

37 CFR 1.137(c) applies to the reply requirement 
for petitions under 37 CFR 1.137(a) and (b). In a nonprovisional 
application abandoned for failure to prosecute, 
the required reply may be met by the filing of a 
continuing application. In a nonprovisional utility or 
plant application filed on or after June 
8, 1995, and 
abandoned for failure to prosecute, the required reply 
may also be met by the filing of a request for continued 
examination (RCE) in compliance with 
37 CFR 1.114. In an application or patent, abandoned 
or lapsed for failure to pay the issue fee or any portion 
thereof, the required reply must include payment of 
the issue fee or any outstanding balance. In an application, 
abandoned for failure to pay the publication 
fee, the required reply must include payment of the 
publication fee. See below for more details on the 
reply requirement in specific situations of abandonment.

1.Abandonment for Failure To Pay the Issue 
Fee or Publication Fee

While the revival of applications abandoned for 
failure to timely prosecute and for failure to timely 
pay the issue fee are incorporated together in 37 CFR 

1.137, the statutory provisions for the revival of an 
application abandoned for failure to timely prosecute 
and for failure to timely submit the issue fee are mutually 
exclusive. See Brenner v. Ebbert, 398 F.2d 762, 
157 USPQ 609 (D.C. Cir. 1968). 35 U.S.C. 151 authorizes 
the acceptance of a delayed payment of the issue 
fee, if the issue fee “is submitted ... and the delay in 
payment is shown to have been unavoidable.” 
35 U.S.C. 41(a)(7) likewise authorizes the acceptance 
of an “unintentionally delayed payment of the fee for 
issuing each patent.” Thus, 35 U.S.C. 41(a)(7) and 
151 each require payment of the issue fee as a condition 
of reviving an application abandoned or patent 
lapsed for failure to pay the issue fee. Therefore, the 
filing of a continuing application without payment of 
the issue fee or any outstanding balance thereof is not 
an acceptable reply in an application abandoned or 
patent lapsed for failure to pay the issue fee or any 
portion thereof.

The Notice of Allowance requires the timely payment 
of the issue fee in effect on the date of its mailing 
to avoid abandonment of the application. In 
instances in which there is an increase in the issue fee 
by the time of payment of the issue fee required in the 
Notice of Allowance, the Office will mail a notice 
requiring payment of the balance of the issue fee then 
in effect. See In re Mills, 12 USPQ2d 1847, 1848 
(Comm’r Pat. 1989). The phrase “for failure to pay 
the issue fee or any portion thereof” applies to those 
instances in which the applicant fails to pay either the 
issue fee required in the Notice of Allowance or the 
balance of the issue fee required in a subsequent 
notice. In such instances, the reply must be the issue 
fee then in effect, if no portion of the issue fee was 
previously submitted, or any outstanding balance of 
the issue fee then in effect, if a portion of the issue fee 
was previously submitted.

In an application abandoned for failure to pay the 
publication fee, the required reply must include payment 
of the publication fee. Even if an application 
abandoned for failure to pay the publication fee is 
being revived solely for purposes of continuity with a 
continuing application, the petition to revive under 
37 CFR 1.137 must include payment of the publication 
fee.

2.Abandonment for Failure To Reply in a 
Nonprovisional Application

(a)Abandonment for Failure To Reply to a Non-
Final Action

The required reply to a non-final action in a nonprovisional 
application abandoned for failure to prosecute 
may be either:

(A)an argument or an amendment under 37 CFR 
1.111; 

(B)the filing of a continuing application under 
37 CFR 1.53(b) (or a continued prosecution application 
(CPA) under 37 CFR 1.53(d) if the application is 
a design application).

The grant of a petition under 37 CFR 1.137 is not a 
determination that any reply under 37 CFR 1.111 is 
complete. Where the proposed reply is to a non-final 
Office action, the petition may be granted if the reply 
appears to be bona fide. After revival of the application, 
the patent examiner may, upon more detailed 
review, determine that the reply is lacking in some 
respect. In this limited situation, the patent examiner 
should send out a letter giving a 1-month shortened 
statutory period under 37 CFR 1.135(c) for correction 
of the error or omission. Extensions of time under 
37 CFR 1.136(a) are permitted. If applicant does not 
correct the omission within the time period set in the 
letter (including any extension), the application is 
again abandoned. 

(b)Abandonment for Failure To Reply to a 
Final Action

A reply under 37 CFR 1.113 to a final action must 
include a request for continued examination (RCE) 
under 37 CFR 1.114 or cancellation of, or appeal from 
the rejection of, each claim so rejected. Accordingly, 
in a nonprovisional application abandoned for failure 
to reply to a final action, the reply required for consideration 
of a petition to revive must be: 

(A)a Notice of Appeal and appeal fee; 

(B)an amendment under 37 CFR 1.116 that cancels 
all the rejected claims or otherwise prima facieplaces the application in condition for allowance; 

(C)the filing of an RCE (accompanied by a submission 
that meets the reply requirements of 37 
CFR 
1.111 and the requisite fee) under 37 CFR 1.114 for 
utility or plant applications filed on or after June 8, 
1995 (see paragraph (d) below); or 

(D)the filing of a continuing application under 
37 
CFR 1.53(b) (or a CPA under 37 CFR 1.53(d) if 
the application is a design application). 

When a notice of appeal is the reply filed pursuant 
to 37 CFR 1.137(a)(1) or 1.137(b)(1), the time period 
under 37 CFR 41.37 for filing the appeal brief will be 
set by the Director of the USPTO in the decision 
granting the petition. 

An application subject to a final action in which a 
proposed amendment under 37 CFR 1.116 is filed as 
the required reply will normally be routed by the 
Office of Petitions to the Technology Center (TC) to 
determine whether a proposed amendment places the 
application in condition for allowance prior to granting 
any petition to revive such application. The examiner 
is instructed that if the reply places the 
application in condition for allowance, the examiner 
should write in the margin of the reply “OK to enter 
upon revival.” For Image File Wrapper (IFW) processing, 
see IFW Manual. If the petition is otherwise 
grantable and the examiner indicates that the reply 
places the application in condition for allowance, the 
petition will be granted. If, on the other hand, the 
reply would not place the application in condition for 
allowance, the examiner is instructed to complete 
form PTOL-303 and return the form to the Office of 
Petitions with the application. Form PTOL-303 
should not be mailed to the applicant by the examiner. 
In this situation, the Office of Petitions will not grant 
the petition. A copy of the form PTOL-303 is marked 
with the notation “Courtesy Copy” by the Office of 
Petitions. The courtesy copy is sent as an attachment 
with the decision on the petition. The advisory form 
PTOL-303 merely serves as an advisory notice to the 
Office of Petitions regarding the decision of the examiner 
on the amendment after final rejection. For Image 
File Wrapper (IFW) processing, see IFW Manual.

(c)Abandonment for Failure To File an Appeal 
Brief

In those situations where abandonment occurred 
because of the failure to file an appeal brief, the reply 
required pursuant to 37 
CFR 1.137(a)(1) or 
1.137(b)(1) must be either:

(A)an appeal brief in compliance with 37 CFR 
41.37(c) and appeal brief fee; 

(B)the filing of an RCE accompanied by a submission 
and the requisite fee in compliance with 
37 CFR 1.114 for utility or plant applications filed on 
or after June 8, 1995 (see paragraph (d) below); or

(C)the filing of a continuing application under 
37 CFR 1.53(b) (or a CPA under 37 CFR 1.53(d) if 
the application is a design application).

(d)Filing an RCE as the Required Reply

For utility or plant applications abandoned for failure 
to reply to a final Office action or for failure to file 
an appeal brief, the required reply may be the filing of 
an RCE accompanied by a submission and the requisite 
fee. When an RCE is the reply filed pursuant to 
37 CFR 1.137(a)(1) or 1.137(b)(1) to revive such an 
application, the submission accompanying the RCE 
must be a reply responsive within the meaning of 
37 CFR 1.111 to the last Office action. Consideration 
of whether the submission is responsive within the 
meaning of 37 CFR 1.111 to the last Office action is 
done without factoring in the “final” status of such 
action. The submission may be a previously filed 
amendment after final or a statement that incorporates 
by reference the arguments in a previously filed 
appeal or reply brief. See MPEP § 706.07(h), paragraph 
II.

The petition may be granted if the submission 
appears to be a bona fide attempt to provide a complete 
reply to the last Office action. After revival of 
the application, the examiner may, upon a more 
detailed review, determine that the reply is lacking in 
some respect. In this limited situation, the examiner 
should send out a letter giving a 1-month shortened 
statutory period under 37 CFR 1.135(c) for correction 
of the error or omission. Extensions of time under 
37 CFR 1.136(a) are permitted. If the applicant does 
not correct the omission within the time period set in 
the letter (including any extension), the application is 
again abandoned. 

(e)A Continuing Application or RCE May Be 
Required by the Office

The Office may require the 
filing of a continuing 
application or an RCE (if the prosecution prior to 
abandonment was closed) (or request for 
further examination pursuant to 37 CFR 1.129(a)) to 
meet the reply requirement of 37 CFR 1.137(a)(1) (or 
37 CFR 1.137(b)(1)) where, under the circumstances 
of the application, treating a reply under 37 CFR 
1.111 or 1.113 would place an inordinate burden on 
the Office. Exemplary circumstances of when treating 
a reply under 37 CFR 1.111 or 1.113 may place an 
inordinate burden on the Office are where: 

(A)an application has been abandoned for an 
inordinate period of time; 

(B)an application file contains multiple or conflicting 
replies to the last Office action; or 

(C)the reply or replies submitted under 37 CFR 
1.137(a)(1) (or 37 CFR 1.137(b)(1)) are questionable 
as to compliance with 37 CFR 1.111 or 1.113.

3.Abandonment for Failure To Notify the Office 
of a Foreign Filing After the Submission 
of a Non-Publication Request

If an applicant makes a nonpublication request 
upon filing with the appropriate certifications, the 
utility or plant application filed on or after November 
29, 2000 will not be published under 35 
U.S.C. 122(b)(1). See 35 U.S.C. 122(b)(2)(B)(i). If an applicant 
makes a nonpublication request and then 
rescinds, pursuant to 35 U.S.C. 122(b)(2)(B)(ii), the 
nonpublication request before or on the date a counterpart 
application is filed in a foreign country, or 
under a multilateral international agreement, that 
requires eighteen-month publication, the nonpublication 
request will be treated as annulled and the application 
will be treated as if the nonpublication request 
were never made. See MPEP § 1123 and § 1124. An 
applicant who has made a nonpublication request, but 
who subsequently files an application directed to the 
invention disclosed in the U.S. application in a foreign 
country, or under a multilateral international 
agreement, that requires eighteen-month publication 
before the nonpublication request is rescinded, must, 
in addition to the rescission, notify the Office of such 
filing 
within forty-five days after the date of such filing. 
The requirement in 35 
U.S.C. 122(b)(2)(B)(iii) 
for notice of the foreign filing is in addition to any 
rescission of the nonpublication request under 35 
U.S.C. 122(b)(2)(B)(ii). If an applicant files a counterpart 
application in a foreign country after having 
filed an application in the USPTO with a nonpublication 
request, filing a rescission of the nonpublication 
request under 35 U.S.C. 122(b)(2)(B)(ii) without also 
providing a notice of the foreign filing in a timely 
manner will result in the abandonment of the U.S. 
application under 35 U.S.C. 122(b)(2)(B)(iii). 
35 U.S.C. 122(b)(2)(B)(iii), however, also provides 
that an application abandoned as a result of the failure 
to timely provide such a notice to the Office is subject 
to revival if the “delay in submitting the notice was 
unintentional.” 

35 U.S.C. 122(b)(2)(B)(iii) provides for revival 
only on the basis of unintentional delay, and not on 
the basis of unavoidable delay. Therefore, a nonprovisional 
application abandoned pursuant to 35 
U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office 
of the filing of an application in a foreign country or 
under a multinational treaty that requires eighteen-
month publication may be revived only on the basis of 
unintentional delay pursuant to 37 CFR 1.137(b). The 
reply requirement of 37 CFR 1.137(c) is met by the 
notification of such filing in a foreign country or 
under a multinational treaty, but the filing of a petition 
under 37 CFR 1.137(b) will not operate to stay any 
period for reply that may be running against the application. 
Since the Office cannot ascertain whether an 
application is abandoned under 35 U.S.C. 
122(b)(2)(B)(iii), the Office may continue to process 
and examine the application until the Office is notified 
of applicant’s failure to meet the forty-five days 
notice requirement of 35 U.S.C. 122(b)(2)(B)(iii). 
Therefore, the filing of a petition under 
37 CFR 1.137(b) to revive such an application will 
not operate to stay any period for reply that may be 
running against the application. Applicants may use 
form PTO/SB/64a to file a petition for revival under 
37 CFR 1.137(b).

B.Petition Fee Requirement

35 U.S.C. 41(a)(7) provides that a petition for the 
revival of an unintentionally abandoned application or 
for the unintentionally delayed payment of the issue 
fee must be accompanied by the petition fee set forth 
in 37 CFR 1.17(m), unless the petition is filed under 
35 U.S.C. 133 or 151 (on the basis of unavoidable 
delay), in which case the fee is set forth in 37 CFR 
1.17(l). Thus, unless the circumstances warrant the 
withdrawal of the holding of abandonment (i.e., it is 
determined that the application is not properly held 
abandoned), the payment of a petition fee to obtain 
the revival of an abandoned application is a statutory 
prerequisite to revival of the abandoned application, 
and cannot be waived.

In addition, the phrase “[o]n filing” in 35 U.S.C. 
41(a)(7) means that the petition fee is required for the 
filing (and not merely the grant) of a petition under 37 
CFR 1.137. See H.R. Rep. No. 542, 97th Cong., 2d 
Sess. 6 (1982), reprinted in 1982 U.S.C.C.A.N. 770 
(“[t]he fees set forth in this section are due on filing 
the petition”). Therefore, the Office: (A) will not 
refund the petition fee required by 37 CFR 1.17(l) or 
1.17(m), regardless of whether the petition under 
37 CFR 1.137 is dismissed or denied; and (B) will not 
reach the merits of any petition under 37 CFR 1.137lacking the requisite petition fee.

The phrase “unless the petition is filed under 
[35 U.S.C.] 133 or 151” signifies that petitions to 
revive filed on the basis of “unavoidable” delay 
(under 35 U.S.C. 133 or 151) are a subset of petitions 
to revive filed on the basis of unintentional delay. 
That is, “unavoidable” delay and “unintentional” 
delay are not alternatives; “unavoidable” delay is the 
epitome of “unintentional” delay. Any petition to 
revive an abandoned application or lapsed patent must 
meet the minimal “unintentional” delay threshold, and 
an applicant need only pay the fee specified in 
37 CFR 1.17(l) (rather than the fee specified in 
37 CFR 1.17(m)) if the petition is also accompanied 
by an adequate showing that the entire delay in filing 
the required reply, from the due date for the reply until 
the filing of a grantable petition pursuant to 37 CFR 
1.137(a), was unavoidable.

C. Unintentional and Unavoidable Delay

Petitions under 37 CFR 1.137(b) are less burdensome 
(statement(s) rather than a showing accompanied 
by documentary evidence) to file and are 
evaluated under the less stringent “unintentional 
delay” standard. Applicants determining whether to 
file a petition to revive an application under 37 CFR 
1.137(b) or 1.137(a) should take the following into 
account:

While the Office reserves the authority to require 
further information concerning the cause of abandonment 
and delay in filing a petition to revive, the Office 
relies upon the applicant’s duty of candor and good 
faith and accepts the statement that “the entire delay 
in filing the required reply from the due date for the 
reply until the filing of a grantable petition pursuant to 
37 CFR 1.137(b) was unintentional” without requiring 
further information in the vast majority of petitions 
under 37 CFR 1.137(b). This is because the 
applicant is obligated under 37 CFR 10.18 to inquire 
into the underlying facts and circumstances when a 
practitioner provides this statement to the Office. In 
addition, providing an inappropriate statement in a 
petition under 37 CFR 1.137(b) to revive an abandoned 
application may have an adverse effect when 
attempting to enforce any patent resulting from the 
application. See Lumenyte Int’l Corp. v. Cable Lite 
Corp., Nos. 96-1011, 96-1077, 1996 U.S. App. 
LEXIS 16400, 1996 WL 383927 (Fed. Cir. July 9, 
1996)(unpublished)(patents held unenforceable due to 
a finding of inequitable conduct in submitting an 
inappropriate statement that the abandonment was 
unintentional).

Even if the Office requires further information in a 
petition under 37 CFR 1.137(b), such petition is still 
significantly less burdensome to prepare and prosecute 
than a petition under 37 CFR 1.137(a). The 
Office is almost always satisfied as to whether “the 
entire delay…was unintentional” on the basis of statement(
s) by the applicant or representative explaining 
the cause of the delay (accompanied at most by copies 
of correspondence relevant to the period of delay). A 
showing of unavoidable delay will (in addition to the 
above) require: (1) evidence concerning the procedures 
in place that should have avoided the error 
resulting in the delay; (2) evidence concerning the 
training and experience of the persons responsible for 
the error; and (3) copies of any applicable docketing 
records to show that 
the error was in fact the cause of 
the delay. See MPEP § 711.03(c), subsection 
II.C.2. In addition, a petition under 37 
CFR 1.137(a) 
must establish that the delay was unavoidable, and not 
just that it was unintentional. Thus, many petitions 
originally filed under 37 CFR 1.137(a) end up being 
granted under 37 
CFR 1.137(b) when the applicant 
realizes that sufficient evidence concerning the delay 
is too difficult to obtain or the cause of delay simply 
does not amount to 
“unavoidable delay” within the 
meaning of 37 CFR 1.137(a).

Since the requirements of 37 CFR 1.137(a) are 
more exacting than the corresponding requirements of 
37 CFR 1.137(b), a petition under 37 CFR 1.137(a) is 
significantly less likely to be grantable as filed than is 
a petition under 37 
CFR 1.137(b). The Office usually 
must render a number of interlocutory decisions dismissing 
a petition under 37 CFR 1.137(a) and requesting 
additional evidence until either the applicant 
provides a satisfactory showing of unavoidable delay 
(in which case the petition can be granted) or the 
Office concludes that the applicant cannot provide a 
satisfactory showing of unavoidable delay (in which 
case the petition must be denied). Thus, the period 
between when an applicant first files a petition to 
revive and the Office renders a decision granting (or 
denying) that petition will, more often than not, be 
much longer if the petition is under 37 CFR 1.137(a) 
than it would have been if the petition were under 
37 CFR 1.137(b).

1.Unintentional Delay

The legislative history of Public Law 97-247, § 3, 
96 Stat. 317 (1982), reveals that the purpose of 
35 U.S.C. 41(a)(7) is to permit the Office to have 
more discretion than in 35 U.S.C. 133 or 151 to revive 
abandoned applications in appropriate circumstances, 
but places a limit on this discretion stating that 
“[u]nder this section a petition accompanied by [the 
requisite fee] would not be granted where the abandonment 
or the failure to pay the fee for issuing the 
patent was intentional as opposed to being unintentional 
or unavoidable.” H.R. Rep. No. 542, 97th 
Cong., 2d Sess. 6-7 (1982), reprinted in 1982 
U.S.C.C.A.N. 770-71. A delay resulting from a deliberately 
chosen course of action on the part of the 
applicant is not an “unintentional” delay within the 
meaning of 37 CFR 1.137(b).

Where the applicant deliberately permits an application 
to become abandoned (e.g., due to a conclusion 
that the claims are unpatentable, that a rejection in an 
Office action cannot be overcome, or that the invention 
lacks sufficient commercial value to justify continued 
prosecution), the abandonment of such 
application is considered to be a deliberately chosen 
course of action, and the resulting delay cannot be 
considered as “unintentional” within the meaning of 
37 CFR 1.137(b). See In re Application of G, 
11 USPQ2d 1378, 1380 (Comm’r Pat. 1989). An 
intentional course of action is not rendered unintentional 
when, upon reconsideration, the applicant 
changes his or her mind as to the course of action that 
should have been taken. See In re Maldague, 
10 USPQ2d 1477, 1478 (Comm’r Pat. 1988).

A delay resulting from a deliberately chosen course 
of action on the part of the applicant does not become 
an “unintentional” delay within the meaning of 
37 CFR 1.137(b) because: 

(A)the applicant does not consider the claims to 
be patentable over the references relied upon in an 
outstanding Office action; 

(B)the applicant does not consider the allowed or 
patentable claims to be of sufficient breadth or scope 
to justify the financial expense of obtaining a patent; 

(C)the applicant does not consider any patent to 
be of sufficient value to justify the financial expense 
of obtaining the patent; 

(D)the applicant does not consider any patent to 
be of sufficient value to maintain an interest in obtaining 
the patent; or 

(E)the applicant remains interested in eventually 
obtaining a patent, but simply seeks to defer patent 
fees and patent prosecution expenses.

Likewise, a change in circumstances that occurred 
subsequent to the abandonment of an application does 
not render “unintentional” the delay resulting from a 
previous deliberate decision to permit an application 
to be abandoned. These matters simply confuse the 
question of whether there was a deliberate decision 
not to continue the 
prosecution of an application with 
why there was a deliberate decision not to continue 
the prosecution of an application.

In order to expedite treatment, applicants filing a 
petition under 37 CFR 1.137(b) to revive an abandoned 
application are advised to include the statement 
“the entire delay in filing the required reply from the 
due date for the reply until the filing of a grantable 
petition pursuant to 37 CFR 1.137(b) was unintentional,” 
even if applicant chooses to include a statement 
of the facts concerning the delay. Applicants 
may use the forms provided by the Office (PTO/SB/
64, PTO/SB/64a, or PTO/SB/64PCT).

Form PTO/SB/64. Petition for Revival of an Application for Patent Abandoned Unintentionally under 37 CFR 1.137(b)Form PTO/SB/64. Petition for Revival of an Application for Patent Abandoned Unintentionally under 37 CFR 1.137(b)
PTO/SB/64 (07-06) 
Approved for use through 09/30/2006. OMB 0651-0031 
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE 
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. 
PETITION FOR REVIVAL OF AN APPLICATION FOR PATENT 
ABANDONED UNINTENTIONALLY UNDER 37 CFR 1.137(b) 
Docket Number (Optional) 
First named inventor: 
Application No.: Art Unit: 
Filed: Examiner: 
Title:
Attention: Office of Petitions 
Mail Stop Petition 
Commissioner for Patents 
P.O. Box 1450 
Alexandria, VA 22313-1450 
FAX (571) 273-8300 
NOTE: If information or assistance is needed in completing this form, please contact Petitions 
Information at (571) 272-3282. 
The above-identified application became abandoned for failure to file a timely and proper reply to a notice or 
action by the United States Patent and Trademark Office. The date of abandonment is the day after the expiration 
date of the period set for reply in the office notice or action plus an extensions of time actually obtained. 
APPLICANT HEREBY PETITIONS FOR REVIVAL OF THIS APPLICATION 
NOTE: A grantable petition requires the following items: 
(1) Petition fee; 
(2) Reply and/or issue fee; 
(3) Terminal disclaimer with disclaimer fee - required for all utility and plant applications 
filed before June 8, 1995; and for all design applications; and 
(4) Statement that the entire delay was unintentional. 
1.Petition fee 
Small entity-fee $ ________ (37 CFR 1.17(m)). Applicant claims small entity status. See 37 CFR 1.27. 
Other than small entity – fee $ ____________ (37 CFR 1.17(m)) 
2. Reply and/or fee 
A. The reply and/or fee to the above-noted Office action in 
the form of __________________________________________(identify type of reply): 
has been filed previously on _________________________. 
is enclosed herewith. 
B. The issue fee and publication fee (if applicable) of $ ____________. 
has been paid previously on _________________________. 
is enclosed herewith. 
[Page 1 of 2] 
This collection of information is required by 37 CFR 1.137(b). The information is required to obtain or retain a benefit by the public which is to file (and by the 
USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 1.0 hour to 
complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any 
comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, 
U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED 
FORMS TO THIS ADDRESS. SEND TO: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2. 
Doc Code:





 

PTO/SB/64 Page 2PTO/SB/64 Page 2
PTO/SB/64 (07-06) 
Approved for use through 09/30/2006. OMB 0651-0031 
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE 
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. 
3. Terminal disclaimer with disclaimer fee 
Since this utility/plant application was filed on or after June 8, 1995, no terminal disclaimer is required. 
A terminal disclaimer (and disclaimer fee (37 CFR 1.20(d)) of $ ________ for a small entity or $ ________ 
for other than a small entity) disclaiming the required period of time is enclosed herewith (see 
PTO/SB/63). 
4. STATEMENT: The entire delay in filing the required reply from the due date for the required reply until the 
filing of a grantable petition under 37 CFR 1.137(b) was unintentional. [NOTE: The United States Patent and 
Trademark Office may require additional information if there is a question as to whether either the 
abandonment or the delay in filing a petition under 37 CFR 1.137(b) was unintentional (MPEP 711.03(c), 
subsections (III)(C) and (D)).]
WARNING: 
Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent application that may 
contribute to identity theft. Personal information such as social security numbers, bank account numbers, or credit card 
numbers (other than a check or credit card authorization form PTO-2038 submitted for payment purposes) is never required by 
the USPTO to support a petition or an application. If this type of personal information is included in documents submitted to theUSPTO, petitioners/applicants should consider redacting such personal information from the documents before submitting them 
to the USPTO. Petitioner/applicant is advised that the record of a patent application is available to the public after publication 
of the application (unless a non-publication request in compliance with 37 CFR 1.213(a) is made in the application) or issuanceof a patent. Furthermore, the record from an abandoned application may also be available to the public if the application is 
referenced in a published application or an issued patent (see 37 CFR 1.14). Checks and credit card authorization forms PTO-
2038 submitted for payment purposes are not retained in the application file and therefore are not publicly available. 
___________________________________________________ ____________________________ 
Signature Date 
___________________________________________________ _________________________ 
Typed or printed name Registration Number, if applicable 
___________________________________________________ ____________________________ 
Address Telephone Number 
___________________________________________________ 
Address 
Enclosures: Fee Payment 
Reply 
Terminal Disclaimer Form 
Additional sheets containing statements establishing unintentional delay 
Other:___________________________________________________________________ 
CERTIFICATE OF MAILING OR TRANSMISSION [37 CFR 1.8(a)] 
I hereby certify that this correspondence is being: 
Deposited with the United States Postal Service on the date shown below with sufficient 
postage as first class mail in an envelope addressed to: Mail Stop Petition, Commissioner for 
Patents, P. O. Box 1450, Alexandria, VA 22313-1450. 
Transmitted by facsimile on the date shown below to the United States Patent and Trademark 
Office as (571) 273-8300. 
___________________ _____________________________________________ 
Date Signature 
_____________________________________________ 
Typed or printed name of person signing certificate 
[Page 2 of 2]
Doc Code:





 

Privacy Act StatementPrivacy Act Statement
Privacy Act Statement 
ThePrivacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection 
with your submission of the attached form related to a patent application or patent. Accordingly, 
pursuant to the requirements of the Act, please be advised that: (1) the general authority for the 
collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; 
and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark 
Office is to process and/or examine your submission related to a patent application or patent. If you do 
not furnish the requested information, the U.S. Patent and Trademark Office may not be able to 
process and/or examine your submission, which may result in termination of proceedings or 
abandonment of the application or expiration of the patent. 
The information provided by you in this form will be subject to the following routine uses: 
1. The information on this form will be treated confidentially to the extent allowed under the 
Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from 
this system of records may be disclosed to the Department of Justice to determine whether 
disclosure of these records is required by the Freedom of Information Act. 
2. A record from this system of records may be disclosed, as a routine use, in the course of 
presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to 
opposing counsel in the course of settlement negotiations. 
3. A record in this system of records may be disclosed, as a routine use, to a Member of 
Congress submitting a request involving an individual, to whom the record pertains, when the 
individual has requested assistance from the Member with respect to the subject matter of the 
record. 
4. A record in this system of records may be disclosed, as a routine use, to a contractor of the 
Agency having need for the information in order to perform a contract. Recipients of 
information shall be required to comply with the requirements of the Privacy Act of 1974, as 
amended, pursuant to 5 U.S.C. 552a(m). 
5. A record related to an International Application filed under the Patent Cooperation Treaty in 
this system of records may be disclosed, as a routine use, to the International Bureau of the 
World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty. 
6. A record in this system of records may be disclosed, as a routine use, to another federal 
agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to 
the Atomic Energy Act (42 U.S.C. 218(c)). 
7. A record from this system of records may be disclosed, as a routine use, to the Administrator, 
General Services, or his/her designee, during an inspection of records conducted by GSA as 
part of that agency’s responsibility to recommend improvements in records management 
practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall 
be made in accordance with the GSA regulations governing inspection of records for this 
purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not 
be used to make determinations about individuals. 
8. A record from this system of records may be disclosed, as a routine use, to the public after 
either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent 
pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 
CFR 1.14, as a routine use, to the public if the record was filed in an application which 
became abandoned or in which the proceedings were terminated and which application is 
referenced by either a published application, an application open to public inspection or an 
issued patent. 
9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, 
or local law enforcement agency, if the USPTO becomes aware of a violation or potential 
violation of law or regulation. 





 

Page 1 Form PTO/SB/64a Petition for Revival of an Application for Patent Abandoned for Failure To Notify the Office of a Foreign or International Filing (37 CFR 1.137(f).Page 1 Form PTO/SB/64a Petition for Revival of an Application for Patent Abandoned for Failure To Notify the Office of a Foreign or International Filing (37 CFR 1.137(f).
PTO/SB/64a (07-06)
Approved for use through 09/30/2006. OMB 0651-0031 
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE 
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. 
PETITION FOR REVIVAL OF AN APPLICATION FOR PATENT 
ABANDONED FOR FAILURE TO NOTIFY THE OFFICE OFA FOREIGN 
OR INTERNATIONAL FILING (37 CFR 1.137(f)) 
Docket Number (Optional) 
First named inventor: 
Application No.: Art Unit: 
Filed: Examiner: 
Title:
Attention: Office of Petitions 
Mail Stop Petition 
Commissioner for Patents 
P.O. Box 1450 
Alexandria, VA 22313-1450 
FAX (571) 273-8300 
NOTE: If information or assistance is needed in completing this form, please contact Petitions 
Information at (571) 272-3282. 
The above-identified application became abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely 
notify the Office of the filing of an application in a foreign country or under a multinational international treaty that 
requires publication of applications eighteen months after filing. The date of abandonment is the day after the 
expiration date of the forty-five (45) day period set in 35 U.S.C. 122(b)(2)(B)(iii). 
PURSUANT TO 37 CFR 1.137(f), APPLICANT HEREYBY PETITIONS FOR REVIVAL OF THIS APPLICATION 
UNDER 37 CFR 1.137(b) 
1.Petition fee 
Small entity-fee $ ________ (37 CFR 1.17(m)). Applicant claims small entity status. See 37 CFR 1.27. 
Other than small entity – fee $ ____________ (37 CFR 1.17(m)) 
2. Notice of Foreign or International Filing (35 U.S.C. 122(b)(2)(B)(iii) and 37 CFR 1.213(c)) 
Subsequent to the filing of the above-identified application, an application was filed in another country, 
or under a multinational international treaty (e.g., filed under the Patent Cooperation Treaty), that 
requires publication of applications eighteen months after the filing. The filing date of the subsequently 
filed foreign or international application is _________________________. 
[Page 1 of 2] 
This collection of information is required by 37 CFR 1.137. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO 
to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 1.0 hour to complete, 
including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments 
on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent 
and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS 
ADDRESS.SEND TO:Mail Stop Petition,Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2. 
Doc Code: 

Page 2 Form PTO/SB/64a Petition for Revival of an Application for Patent Abandoned for Failure To Notify the Office of a Foreign or International Filing (37 CFR 1.137(f).Page 2 Form PTO/SB/64a Petition for Revival of an Application for Patent Abandoned for Failure To Notify the Office of a Foreign or International Filing (37 CFR 1.137(f).
PTO/SB/64a (07-06)
Approved for use through 09/30/2006. OMB 0651-0031 
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE 
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. 
STATEMENT: The entire delay in filing the required notice of a foreign or international filing from the due date for 
the required notice until the filing of a grantable petition under 37 CFR 1.137(b) was unintentional. [NOTE: The 
United States Patent and Trademark Office may require additional information there is a question as to whether 
either the abandonment or the delay in filing a petition under 37 CFR 1.137(b) was unintentional (MPEP 
711.03(c),subsections (III)(C) and (D)).] 
WARNING:
Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent 
application that may contribute to identity theft. Personal information such as social security numbers, bank 
account numbers, or credit card numbers (other than a check or credit card authorization form PTO-2038 
submitted for payment purposes) is never required by the USPTO to support a petition or an application. If 
this type of personal information is included in documents submitted to the USPTO, petitioners/applicants 
should consider redacting such personal information from the documents before submitting them to the 
USPTO. Petitioner/applicant is advised that the record of a patent application is available to the public after 
publication of the application (unless a non-publication request in compliance with 37 CFR 1.213(a) is made in 
the application) or issuance of a patent. Furthermore, the record from an abandoned application may also be 
available to the public if the application is referenced in a published application or an issued patent (see 37 
CFR 1.14). Checks and credit card authorization forms PTO-2038 submitted for payment purposes are not 
retained in the application file and therefore are not publicly available. 
___________________________________________________ ____________________________ 
Signature Date 
___________________________________________________ _________________________ 
Typed or printed name Registration Number, if applicable 
___________________________________________________ ___________________________ 
Address Telephone Number 
___________________________________________________ 
Address 
Enclosures: Fee Payment 
Additional sheets containing statements establishing unintentional delay 
Other:__________________________________________ 
CERTIFICATE OF MAILING OR TRANSMISSION [37 CFR 1.8(a)] 
I hereby certify that this correspondence is being: 
Deposited with the United States Postal Service on the date shown below with sufficient 
postage as first class mail in an envelope addressed to: Mail Stop Petition, Commissioner for 
Patents, P. O. Box 1450, Alexandria, VA 22313-1450. 
Transmitted by facsimile on the date shown below to the United States Patent and Trademark 
Office at (571) 273-8300. 
_________________________ ___________________________________________________ 
Date Signature 
___________________________________________________ 
Typed or printed name of person signing certificate[Page 2 of 2]
Doc Code: 

Privacy Act StatementPrivacy Act Statement
Privacy Act Statement 
ThePrivacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection 
with your submission of the attached form related to a patent application or patent. Accordingly, 
pursuant to the requirements of the Act, please be advised that: (1) the general authority for the 
collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; 
and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark 
Office is to process and/or examine your submission related to a patent application or patent. If you do 
not furnish the requested information, the U.S. Patent and Trademark Office may not be able to 
process and/or examine your submission, which may result in termination of proceedings or 
abandonment of the application or expiration of the patent. 
The information provided by you in this form will be subject to the following routine uses: 
1. The information on this form will be treated confidentially to the extent allowed under the 
Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from 
this system of records may be disclosed to the Department of Justice to determine whether 
disclosure of these records is required by the Freedom of Information Act. 
2. A record from this system of records may be disclosed, as a routine use, in the course of 
presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to 
opposing counsel in the course of settlement negotiations. 
3. A record in this system of records may be disclosed, as a routine use, to a Member of 
Congress submitting a request involving an individual, to whom the record pertains, when the 
individual has requested assistance from the Member with respect to the subject matter of the 
record. 
4. A record in this system of records may be disclosed, as a routine use, to a contractor of the 
Agency having need for the information in order to perform a contract. Recipients of 
information shall be required to comply with the requirements of the Privacy Act of 1974, as 
amended, pursuant to 5 U.S.C. 552a(m). 
5. A record related to an International Application filed under the Patent Cooperation Treaty in 
this system of records may be disclosed, as a routine use, to the International Bureau of the 
World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty. 
6. A record in this system of records may be disclosed, as a routine use, to another federal 
agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to 
the Atomic Energy Act (42 U.S.C. 218(c)). 
7. A record from this system of records may be disclosed, as a routine use, to the Administrator, 
General Services, or his/her designee, during an inspection of records conducted by GSA as 
part of that agency’s responsibility to recommend improvements in records management 
practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall 
be made in accordance with the GSA regulations governing inspection of records for this 
purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not 
be used to make determinations about individuals. 
8. A record from this system of records may be disclosed, as a routine use, to the public after 
either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent 
pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 
CFR 1.14, as a routine use, to the public if the record was filed in an application which 
became abandoned or in which the proceedings were terminated and which application is 
referenced by either a published application, an application open to public inspection or an 
issued patent. 
9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, 
or local law enforcement agency, if the USPTO becomes aware of a violation or potential 
violation of law or regulation. 

Page 1 Form PTO/SB/64/PCT Petition for Revival of an International Application for Patent designating the U.S. Abandoned Intentionally Under 37 CFR 1.137(b).Page 1 Form PTO/SB/64/PCT Petition for Revival of an International Application for Patent designating the U.S. Abandoned Intentionally Under 37 CFR 1.137(b).
PTO/SB/64/PCT (10-05) 
Approved for use through 03/31/2007. OMB 0651-0021 
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE 
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. 
PETITION FOR REVIVAL OF AN INTERNATIONAL APPLICATION FOR PATENT 
DESIGNATING THE U.S. ABANDONED UNINTENTIONALLY UNDER 37 CFR 1.137(b)
Docket Number 
(Optional)
First Named Inventor: 
International (PCT) Application No.: U.S. Application No.: 
(if known) 
Filed:
Title:
Attention: PCT Legal Staff 
Mail Stop PCT 
Commissioner for Patents 
P.O. Box 1450 
Alexandria, VA 22313-1450 
The above-identified application became abandoned as to the United States because the fees and documents 
required by 35 U.S.C. 371(c) were not filed prior to the expiration of the time set in 37 CFR 1.495(b) or (c) as 
applicable. The date of abandonment is the day after the date on which the 35 U.S.C. 371(c) requirements were 
due. See 37 CFR 1.495(h). 
APPLICANT HEREBY PETITIONS FOR REVIVAL OF THIS APPLICATION 
NOTE: A grantable petition requires the following items: 
(1) Petition fee 
(2) Proper reply 
(3) Terminal disclaimer with disclaimer fee which is required for all international applications 
having an international filing date before June 8, 1995; and 
(4) Statement that the entire delay was unintentional. 
1. Petition fee 
Small entity - fee $____________(37 CFR 1.17(m)). Applicant claims small entity status. 
See 37 CFR 1.27. 
Other than small entity - fee $__________(37 CFR 1.17(m)) 
2. Proper reply 
A. The proper reply (the missing 35 U.S.C. 371(c) requirement(s)) in the form of 
___________________________________________ (identify type of reply): 
has been filed previously on ____________________________________. 
is enclosed herewith. 
[Page 1 of 2] 
This collection of information is required by 37 CFR 1.137(b). The information is required to obtain or retain a benefit by the public which is to file (and by the 
USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 1.0 hour to 
complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any 
comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, 
U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS 
TO THIS ADDRESS. SEND TO: Mail Stop PCT, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. 
If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2. 
Doc Code: 

Page 2 Form PTO/SB/64/PCT Petition for Revival of an International Application for Patent designating the U.S. Abandoned Intentionally Under 37 CFR 1.137(b).Page 2 Form PTO/SB/64/PCT Petition for Revival of an International Application for Patent designating the U.S. Abandoned Intentionally Under 37 CFR 1.137(b).
PTO/SB/64/PCT (10-05) 
Approved for use through 03/31/2007. OMB 0651-0021 
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE 
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. 
3. Terminal disclaimer with disclaimer fee 
Since this international application has an international filing date on or after June 8, 1995, no terminal disclaimer 
is required. 
A terminal disclaimer (and disclaimer fee (37 CFR 1.20(d)) of $ _____________ for a small entity or 
$___________ for other than a small entity) disclaiming the required period of time is enclosed herewith 
(see PTO/SB/63). 
4. Statement. The entire delay in filing the required reply from the due date for the required reply until the 
filing of a grantable petition under 37 CFR 1.137(b) was unintentional. 
WARNING: 
Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent application that 
may contribute to identity theft. Personal information such as social security numbers, bank account numbers, or credit 
card numbers (other than a check or credit card authorization form PTO-2038 submitted for payment purposes) is never 
required by the USPTO to support a petition or an application. If this type of personal information is included in documents 
submitted to the USPTO, petitioners/applicants should consider redacting such personal information from the documents 
before submitting them to the USPTO. Petitioner/applicant is advised that the record of a patent application is available to 
the public after publication of the application (unless a non-publication request in compliance with 37 CFR 1.213(a) is 
made in the application) or issuance of a patent. Furthermore, the record from an abandoned application may also be 
available to the public if the application is referenced in a published application or an issued patent (see 37 CFR 1.14). 
Checks and credit card authorization forms PTO-2038 submitted for payment purposes are not retained in the application 
file and therefore are not publicly available. 
Signature Date 
Typed or Printed Name Registration Number, if applicable 
Address Telephone Number 
Address 
Enclosures: Response 
Fee Payment 
Terminal Disclaimer 
Other (please identify): 
[Page 2 of 2] 
Doc Code: 

Privacy Act StatementPrivacy Act Statement
Privacy Act Statement 
ThePrivacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection 
with your submission of the attached form related to a patent application or patent. Accordingly, 
pursuant to the requirements of the Act, please be advised that: (1) the general authority for the 
collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; 
and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark 
Office is to process and/or examine your submission related to a patent application or patent. If you do 
not furnish the requested information, the U.S. Patent and Trademark Office may not be able to 
process and/or examine your submission, which may result in termination of proceedings or 
abandonment of the application or expiration of the patent. 
The information provided by you in this form will be subject to the following routine uses: 
1. The information on this form will be treated confidentially to the extent allowed under the 
Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from 
this system of records may be disclosed to the Department of Justice to determine whether 
disclosure of these records is required by the Freedom of Information Act. 
2. A record from this system of records may be disclosed, as a routine use, in the course of 
presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to 
opposing counsel in the course of settlement negotiations. 
3. A record in this system of records may be disclosed, as a routine use, to a Member of 
Congress submitting a request involving an individual, to whom the record pertains, when the 
individual has requested assistance from the Member with respect to the subject matter of the 
record. 
4. A record in this system of records may be disclosed, as a routine use, to a contractor of the 
Agency having need for the information in order to perform a contract. Recipients of 
information shall be required to comply with the requirements of the Privacy Act of 1974, as 
amended, pursuant to 5 U.S.C. 552a(m). 
5. A record related to an International Application filed under the Patent Cooperation Treaty in 
this system of records may be disclosed, as a routine use, to the International Bureau of the 
World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty. 
6. A record in this system of records may be disclosed, as a routine use, to another federal 
agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to 
the Atomic Energy Act (42 U.S.C. 218(c)). 
7. A record from this system of records may be disclosed, as a routine use, to the Administrator, 
General Services, or his/her designee, during an inspection of records conducted by GSA as 
part of that agency’s responsibility to recommend improvements in records management 
practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall 
be made in accordance with the GSA regulations governing inspection of records for this 
purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not 
be used to make determinations about individuals. 
8. A record from this system of records may be disclosed, as a routine use, to the public after 
either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent 
pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 
CFR 1.14, as a routine use, to the public if the record was filed in an application which 
became abandoned or in which the proceedings were terminated and which application is 
referenced by either a published application, an application open to public inspection or an 
issued patent. 
9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, 
or local law enforcement agency, if the USPTO becomes aware of a violation or potential 
violation of law or regulation. 

2.Unavoidable Delay

As discussed above, “unavoidable” delay is the 
epitome of “unintentional” delay. Thus, an intentional 
delay precludes revival under 37 CFR 1.137(a)
(“unavoidable” delay) or 37 CFR 1.137(b) (“unintentional” 
delay). See Maldague, 10 USPQ2d at 1478.

Decisions on reviving abandoned applications on 
the basis of “unavoidable” delay have adopted the 
reasonably prudent person standard in determining if 
the delay was unavoidable:

The word ‘unavoidable’ . . . is applicable to ordinary 
human affairs, and requires no more or greater care or diligence 
than is generally used and observed by prudent and 
careful men in relation to their most important business. It 
permits them in the exercise of this care to rely upon the 
ordinary and trustworthy agencies of mail and telegraph, 
worthy and reliable employees, and such other means and 
instrumentalities as are usually employed in such important 
business. If unexpectedly, or through the unforeseen 
fault or imperfection of these agencies and instrumentalities, 
there occurs a failure, it may properly be said to be 
unavoidable, all other conditions of promptness in its rectification 
being present.

In re Mattullath, 38 App. D.C. 497, 514-15 
(1912)(quoting Pratt, 1887 Dec. Comm’r Pat. 31, 32-
33 (1887)); see also Winkler v. Ladd, 221 F. Supp. 
550, 552, 138 USPQ 666, 667-68 (D.D.C. 1963), 
aff’d, 143 USPQ 172 (D.C. Cir. 1963); Ex parte Henrich, 
1913 Dec. Comm’r Pat. 139, 141 (1913). In 
addition, decisions on revival are made on a “case-by-
case basis, taking all the facts and circumstances into 
account.” Smith v. Mossinghoff, 671 F.2d 533, 538, 
213 USPQ 977, 982 (D.C. Cir. 1982). Finally, a petition 
cannot be granted where a petitioner has failed to 
meet his or her burden of establishing that the delay 
was “unavoidable.” Haines v. Quigg, 673 F. Supp. 
314, 316-17, 5 USPQ2d 1130, 1131-32 (N.D. Ind. 
1987).

A delay resulting from an error (e.g., a docketing 
error) on the part of an employee in the performance 
of a clerical function may provide the basis for a 
showing of “unavoidable” delay, provided it is shown 
that:

(A)the error was the cause of the delay at issue; 

(B)there was in place a business routine for performing 
the clerical function that could reasonably be 
relied upon to avoid errors in its performance; and

(C)the employee was sufficiently trained and 
experienced with regard to the function and routine 
for its performance that reliance upon such employee 
represented the exercise of due care.

See In re Egbers, 6 USPQ2d 1869, 1872 (Comm’r 
Pat. 1988), rev’d on other grounds sub nom., Theodor 
Groz & Sohne & Ernst Bechert Nadelfabrik KG v. 
Quigg, 10 
USPQ2d 1787 (D.D.C. 1988); In re Katrapat, 
6 USPQ2d 1863, 1867-68 (Comm’r Pat. 1988). 
For example, where an application becomes abandoned 
as a consequence of a change of correspondence 
address (the Office action being mailed to the 
old, uncorrected address and failing to reach the applicant 
in sufficient time to permit a timely reply) an 
adequate showing of “unavoidable” delay will require 
a showing that due care was taken to adhere to the 
requirement for prompt notification in each concerned 
application of the change of address (see MPEP 
§ 601.03), and must include an adequate showing that 
a timely notification of the change of address was 
filed in the application concerned, and in a manner 
reasonably calculated to call attention to the fact that 
it was a notification of a change of address. The following 
do not constitute proper notification of a 
change in correspondence address:

(A)the mere inclusion, in a paper filed in an 
application for another purpose, of an address differing 
from the previously provided correspondence 
address, without mention of the fact that an address 
change was being made; 

(B)the notification on a paper listing plural applications 
as being affected (except as provided for 
under the Customer Number practice - see MPEP 
§ 403); or 

(C)the lack of notification, or belated notification, 
to the U.S. Patent and Trademark Office of the 
change in correspondence address.

Delay resulting from the lack of knowledge or 
improper application of the patent statute, rules of 
practice or the MPEP, however, does not constitute 
“unavoidable” delay. See Haines, 673 F. Supp. at 317, 
5 USPQ2d at 1132; Vincent v. Mossinghoff, 
230 USPQ 621, 624 (D.D.C. 1985); Smith v. Diamond, 
209 USPQ 1091 (D.D.C. 1981); Potter v. 
Dann, 201 USPQ 574 (D.D.C. 1978); Ex parte Murray, 
1891 Dec. Comm’r Pat. 130, 131 (1891). For 
example, as 37 CFR 1.116 and 1.135(b) are manifest 
that proceedings concerning an amendment after final 
rejection will not operate to avoid abandonment of the 
application in the absence of a timely and proper 
appeal, a delay is not “unavoidable” when the applicant 
simply permits the maximum extendable statutory 
period for reply to a final Office action to expire 
while awaiting a notice of allowance or other action. 
Likewise, as a “reasonably prudent person” would file 
papers or fees in compliance with 37 CFR 1.8 or 1.10 
to ensure their timely filing in the USPTO, as well as 
preserve adequate evidence of such filing, a delay 
caused by an applicant’s failure to file papers or fees 
in compliance with 37 CFR 1.8 and 1.10 does not 
constitute “unavoidable” delay. See Krahn, 
15 USPQ2d at 1825. Finally, a delay caused by an 
applicant’s lack of knowledge or improper application 
of the patent statute, rules of practice or the MPEP is 
not rendered “unavoidable” due to: (A) the 
applicant’s reliance upon oral advice from USPTO employees; or 
(B) the USPTO’s failure to advise the applicant of any 
deficiency in sufficient time to permit the applicant to 
take corrective action. See In re Sivertz, 227 USPQ 
255, 256 (Comm’r Pat. 1985).

35 U.S.C. 133 and 151 each require a showing that 
the “delay” was “unavoidable,” which requires not 
only a showing that the delay which resulted in the 
abandonment of the application was unavoidable, but 
also a showing of unavoidable delay until the filing of 
a petition to revive. See In re Application of Takao, 17 
USPQ2d 1155 (Comm'r Pat. 1990). The burden of 
continuing the process of presenting a grantable petition 
in a timely manner likewise remains with the 
applicant until the applicant is informed that the petition 
is granted. Id. at 1158. Thus, an applicant seeking 
to revive an “unavoidably” abandoned application 
must cause a petition under 37 CFR 1.137(a) to be 
filed without delay (i.e., promptly upon becoming 
notified, or otherwise becoming aware, of the abandonment 
of the application).

An applicant who fails to file a petition under 
37 CFR 1.137(a) “promptly” upon becoming notified, 
or otherwise becoming aware, of the abandonment of 
the application will not be able to show that the entire 
delay in filing the required reply from the due date for 
the reply until the filing of a grantable petition pursuant 
to 37 CFR 1.137(a) was unavoidable. The removal 
of the language in 37 CFR 1.137(a) requiring that any 
petition thereunder be “promptly filed after the applicant 
is notified of, or otherwise becomes aware of, the 
abandonment” should not be viewed as: (A) permitting 
an applicant, upon becoming notified, or otherwise 
becoming aware, of the abandonment of the 
application, to delay the filing of a petition under 
37 CFR 1.137(a); or (B) changing (or modifying) the 
result in In re Application of S, 8 USPQ2d 1630 
(Comm’r Pat. 1988), in which a petition under 
37 CFR 1.137(a) was denied due to the applicant’s 
deliberate deferral in filing a petition under 37 CFR 
1.137. An applicant who deliberately chooses to delay 
the filing of a petition under 37 CFR 1.137 (as in 
Application of S, 8 USPQ2d at 1632) will not be able 
to show that “the entire delay in filing the required 
reply from the due date for the reply until the filing of 
a grantable petition pursuant to [37 CFR 1.137(a)] 
was unavoidable” or even make an appropriate statement 
that “the entire delay in filing the required reply 
from the due date for the reply until the filing of a 
grantable petition pursuant to [37 CFR 1.137(b)] was 
unintentional.”

The dismissal or denial of a petition under 37 CFR 
1.137(a) does not preclude an applicant from obtaining 
relief pursuant to 37 CFR 1.137(b) on the basis of 
unintentional delay (unless the decision dismissing or 
denying the petition under 37 CFR 1.137(a) indicates 
otherwise). In such an instance, a petition under 
37 CFR 1.137(b) may be filed accompanied by the fee 
set forth in 37 CFR 1.17(m), the required reply, a 
statement that the entire delay in filing the required 
reply from the due date for the reply until the filing of 
a grantable petition pursuant to 37 CFR 1.137(b) was 
unintentional, and any terminal disclaimer required by 
37 CFR 1.137(c).

Form PTO/SB/61 or PTO/SB/61PCT may be used 
to file a petition for revival of an unavoidably abandoned 
application.

Form PTO/SB/61. Petition for Revival of an Application for Patent Abandoned Unavoidably under 37 CFR 1.137(a)Form PTO/SB/61. Petition for Revival of an Application for Patent Abandoned Unavoidably under 37 CFR 1.137(a)
PTO/SB/61 (07-06) 
Approved for use through 09/30/2006. OMB 0651-0031 
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE 
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. 
PETITION FOR REVIVAL OF AN APPLICATION FOR PATENT 
ABANDONED UNAVOIDABLY UNDER 37 CFR 1.137(a)
Docket Number (Optional) 
First Named Inventor: Art Unit: 
Application Number: Examiner: 
Filed: 
Title: 
Attention: Office of Petitions 
Mail Stop PetitionCommissioner for Patents 
P.O. Box 1450 
Alexandria, VA 22313-1450 
NOTE: If information or assistance is needed in completing this form, please contact 
Petitions Information at (571) 272-3282. 
The above-identified application became abandoned for failure to file a timely and proper reply to a notice or action by 
the United Sates Patent and Trademark Office. The date of abandonment is the day after the expiration date of the 
period set for reply in the Office notice or action plus any extensions of time actually obtained. 
APPLICANT HEREBY PETITIONS FOR REVIVAL OF THIS APPLICATION. 
NOTE: A grantable petition requires the following items: 
(1) Petition fee. 
(2) Reply and/or issue fee. 
(3) Terminal disclaimer with disclaimer fee-required for all utility and plant applications filed 
before June 8, 1995, and for all design applications; and 
(4) Adequate showing of the cause of unavoidable delay. 
1. Petition fee 
Small entity – fee $ (37 CFR 1.17(l)). Applicant claims small entity status. 
See 37 CFR 1.27. 
Other than small entity – fee $ (37 CFR 1.17(l)). 
2. Reply and/or fee 
A.
The reply and/or fee to the above-noted Office action in the form of 
(identify the type of reply): 
has been filed previously on . 
is enclosed herewith. 
BThe issue fee of $ 
has been filed previously on . 
is enclosed herewith. 
[Page 1 of 3] 
This collection of information is required by 37 CFR 1.137(a). The information is required to obtain or retain a benefit by the public which is to file (and by the 
USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 8 hours to 
complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. 
Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information 
Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR 
COMPLETED FORMS TO THIS ADDRESS. SEND TO: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. 
If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2. 
Doc Code: 

Form PTO/SB/61. Petition for Revival of an Application for Patent Abandoned Unavoidably Under 37 CFR 1.137(a) [Page 2 of 3]Form PTO/SB/61. Petition for Revival of an Application for Patent Abandoned Unavoidably Under 37 CFR 1.137(a) [Page 2 of 3]
PTO/SB/61 (07-06) 
Approved for use through 09/30/2006. OMB 0651-0031 
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE 
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. 
PETITION FOR REVIVAL OF AN APPLICATION FOR PATENT ABANDONED 
UNAVOIDABLY UNDER 37 CFR 1.137(a)
3. Terminal disclaimer with disclaimer fee 
Since this utility/plant application was filed on or after June 8, 1995, no terminal disclaimer is required.
A terminal disclaimer (and disclaimer fee (37 CFR 1.20(d)) of $ _______________ for a small entity or 
$ _______________ for other than a small entity) disclaiming the required period of time is enclosed 
herewith (see PTO/SB/63). 
4. An adequate showing of the cause of the delay, and that the entire delay in filing the required reply from the due date 
for the reply until the filing of a grantable petition under 37 CFR 1.137(a) was unavoidable, is enclosed. 
WARNING: 
Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent application 
that may contribute to identity theft. Personal information such as social security numbers, bank account 
numbers, or credit card numbers (other than a check or credit card authorization form PTO-2038 submitted for 
payment purposes) is never required by the USPTO to support a petition or an application. If this type of personal 
information is included in documents submitted to the USPTO, petitioners/applicants should consider redacting 
such personal information from the documents before submitting them to the USPTO. Petitioner/applicant is 
advised that the record of a patent application is available to the public after publication of the application (unless 
a non-publication request in compliance with 37 CFR 1.213(a) is made in the application) or issuance of a patent. 
Furthermore, the record from an abandoned application may also be available to the public if the application is 
referenced in a published application or an issued patent (see 37 CFR 1.14). Checks and credit card 
authorization forms PTO-2038 submitted for payment purposes are not retained in the application file and 
therefore are not publicly available. 
SignatureDateTyped or printed name 
Registration Number, if applicable 
AddressTelephone Number 
AddressEnclosure Fee Payment 
Reply 
Terminal Disclaimer Form 
Additional sheets containing statements establishing unavoidable delay 
CERTIFICATE OF MAILING OR TRANSMISSION (37 CFR 1.8(a))
I hereby certify that this correspondence is being: 
deposited with the United States Postal Service on the date shown below with sufficient postage as first 
class mail in an envelope addressed to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, 
Alexandria, VA 22313-1450. 
transmitted by facsimile on the date shown below to the United States Patent and Trademark Office at 
(571) 273-8300. 
DateSignature 
Typed or printed name of person signing certificate 
[Page 2 of 3] 
Doc Code: 

Form PTO/SB/61. Petition for Revival of an Application for Patent Abandoned Unavoidably Under 37 CFR 1.137(a) [Page 3 of 3]Form PTO/SB/61. Petition for Revival of an Application for Patent Abandoned Unavoidably Under 37 CFR 1.137(a) [Page 3 of 3]
PTO/SB/61 (07-06) 
Approved for use through 09/30/2006. OMB 0651-0031 
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE 
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. 
PETITION FOR REVIVAL OF AN APPLICATION FOR PATENT ABANDONED 
UNAVOIDABLY UNDER 37 CFR 1.137(a)
NOTE: The following showing of the cause of unavoidable delay must be signed by all applicants or by any other 
party who is presenting statements concerning the cause of delay. 
Signature DateTyped or printed name Registration Number, if applicable 
(In the space provided below, please explain in detail the reasons for the delay in filing a proper reply.) 
(Please attach additional sheets if additional space is needed.) 
[Page 3 of 3]
Doc Code: 

Privacy Act StatementPrivacy Act Statement
Privacy Act Statement 
ThePrivacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection 
with your submission of the attached form related to a patent application or patent. Accordingly, 
pursuant to the requirements of the Act, please be advised that: (1) the general authority for the 
collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; 
and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark 
Office is to process and/or examine your submission related to a patent application or patent. If you do 
not furnish the requested information, the U.S. Patent and Trademark Office may not be able to 
process and/or examine your submission, which may result in termination of proceedings or 
abandonment of the application or expiration of the patent. 
The information provided by you in this form will be subject to the following routine uses: 
1. The information on this form will be treated confidentially to the extent allowed under the 
Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from 
this system of records may be disclosed to the Department of Justice to determine whether 
disclosure of these records is required by the Freedom of Information Act. 
2. A record from this system of records may be disclosed, as a routine use, in the course of 
presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to 
opposing counsel in the course of settlement negotiations. 
3. A record in this system of records may be disclosed, as a routine use, to a Member of 
Congress submitting a request involving an individual, to whom the record pertains, when the 
individual has requested assistance from the Member with respect to the subject matter of the 
record. 
4. A record in this system of records may be disclosed, as a routine use, to a contractor of the 
Agency having need for the information in order to perform a contract. Recipients of 
information shall be required to comply with the requirements of the Privacy Act of 1974, as 
amended, pursuant to 5 U.S.C. 552a(m). 
5. A record related to an International Application filed under the Patent Cooperation Treaty in 
this system of records may be disclosed, as a routine use, to the International Bureau of the 
World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty. 
6. A record in this system of records may be disclosed, as a routine use, to another federal 
agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to 
the Atomic Energy Act (42 U.S.C. 218(c)). 
7. A record from this system of records may be disclosed, as a routine use, to the Administrator, 
General Services, or his/her designee, during an inspection of records conducted by GSA as 
part of that agency’s responsibility to recommend improvements in records management 
practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall 
be made in accordance with the GSA regulations governing inspection of records for this 
purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not 
be used to make determinations about individuals. 
8. A record from this system of records may be disclosed, as a routine use, to the public after 
either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent 
pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 
CFR 1.14, as a routine use, to the public if the record was filed in an application which 
became abandoned or in which the proceedings were terminated and which application is 
referenced by either a published application, an application open to public inspection or an 
issued patent. 
9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, 
or local law enforcement agency, if the USPTO becomes aware of a violation or potential 
violation of law or regulation. 

Page 1 Form PTO/SB/61/PCT Petition for Revival of an International application for PAtent designationg the U.S. Abandoned Unavoidably Under 37 CFR 1.l137(a).Page 1 Form PTO/SB/61/PCT Petition for Revival of an International application for PAtent designationg the U.S. Abandoned Unavoidably Under 37 CFR 1.l137(a).
PTO/SB/61/PCT (10-05) 
Approved for use through 03/31/2007. OMB 0651-0021 
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE 
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. 
PETITION FOR REVIVAL OF AN INTERNATIONAL APPLICATION FOR PATENT 
DESIGNATING THE U.S. ABANDONED UNAVOIDABLY UNDER 37 CFR 1.137(a)
Docket Number (Optional) 
First named inventor: U.S. Application No.: 
(if known) 
International (PCT) Application Number: 
Filed: 
Title: 
Attention: PCT Legal Staff 
Mail Stop PCT 
Commissioner for Patents 
P.O. Box 1450 
Alexandria, VA 22313-1450 
The above-identified application became abandoned as to the United States because the fees and documents required by 
35 U.S.C. 371(c) were not filed prior to the expiration of the time set in 37 CFR 1.495(b) or (c) (as applicable). The date of 
abandonment is the day after the date on which the 35 U.S.C. 371(c) requirements were due. See 37 CFR 1.495(h). 
APPLICANT HEREBY PETITIONS FOR REVIVAL OF THIS APPLICATION 
NOTE: A grantable petition requires the following items: 
(1) Petition fee; 
(2) Proper reply; 
(3) Terminal disclaimer with disclaimer fee—required for all international applications having an 
international filing date before June 8, 1995; and 
(4) Adequate showing of the cause of unavoidable delay. 
1. Petition fee 
small entity – fee $_____________ (37 CFR 1.17(l)). Applicant claims small entity status. 
See 37 CFR 1.27. 
Other than small entity - fee $ _____________ (37 CFR 1.17(l)) 
2. Proper reply 
A. The proper reply (the missing 35 U.S.C. 371(c) requirements) in the form of 
__________________________________________ (identify the type of reply): 
was previously filed on _____________________ 
is enclosed herewith. 
[Page 1 of 3] 
This collection of information is required by 37 CFR 1.137(a). The information is required to obtain or retain a benefit by the public which is to file (and by the 
USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 8.0 hours to 
complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any 
comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, 
U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED 
FORMS TO THIS ADDRESS. SEND TO:Mail Stop PCT,Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2. 
Doc Code:

Page 2 Form PTO/SB/61/PCT Petition for Revival of an International application for PAtent designationg the U.S. Abandoned Unavoidably Under 37 CFR 1.l137(a).Page 2 Form PTO/SB/61/PCT Petition for Revival of an International application for PAtent designationg the U.S. Abandoned Unavoidably Under 37 CFR 1.l137(a).
PTO/SB/61/PCT (10-05) 
Approved for use through 03/31/2007. OMB 0651-0021 
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE 
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. 
PETITION FOR REVIVAL OF AN INTERNATIONAL APPLICATION FOR PATENT 
DESIGNATING THE U.S. ABANDONED UNAVOIDABLY UNDER 37 CFR 1.137(a) 
3. Terminal disclaimer with disclaimer fee 
Since this international application has an international filing date on or after June 8, 1995, 
no terminal disclaimer is required. 
A terminal disclaimer (and disclaimer fee (37 CFR 1.20(d)) of $ _________________ for a small entity 
or $ ___________________for other than a small entity) disclaiming the required period of time is enclosed 
herewith (see PTO/SB/63). 
4. An adequate showing of the cause of the delay, and that the entire delay in filing the 35 U.S.C. 371(c) requirements (or a 
continuing U.S. application) from their due date until the filing of a grantable petition under 37 CFR 1.137(a) was 
unavoidable, is enclosed. 
WARNING: 
Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent application that 
may contribute to identity theft. Personal information such as social security numbers, bank account numbers, or credit 
card numbers (other than a check or credit card authorization form PTO-2038 submitted for payment purposes) is never 
required by the USPTO to support a petition or an application. If this type of personal information is included in documents 
submitted to the USPTO, petitioners/applicants should consider redacting such personal information from the documents 
before submitting them to the USPTO. Petitioner/applicant is advised that the record of a patent application is available to 
the public after publication of the application (unless a non-publication request in compliance with 37 CFR 1.213(a) is 
made in the application) or issuance of a patent. Furthermore, the record from an abandoned application may also be 
available to the public if the application is referenced in a published application or an issued patent (see 37 CFR 1.14). 
Checks and credit card authorization forms PTO-2038 submitted for payment purposes are not retained in the application 
file and therefore are not publicly available. 
Signature Date 
Typed or Printed Name Registration Number, if applicable 
Address Telephone Number 
Address 
Enclosures: Additional sheets containing statements establishing unavoidable delay 
Fee Payment 
Reply 
Terminal Disclaimer Form 
Other (please identify): 
[Page 2 of 3] 
Doc Code:

Page 3 Form PTO/SB/61/PCT Petition for Revival of an International application for PAtent designationg the U.S. Abandoned Unavoidably Under 37 CFR 1.l137(a).Page 3 Form PTO/SB/61/PCT Petition for Revival of an International application for PAtent designationg the U.S. Abandoned Unavoidably Under 37 CFR 1.l137(a).
PTO/SB/61/PCT (10-05) 
Approved for use through 03/31/2007. OMB 0651-0021 
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE 
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. 
PETITION FOR REVIVAL OF AN INTERNATIONAL APPLICATION FOR PATENT 
DESIGNATING THE U.S. ABANDONED UNAVOIDABLY UNDER 37 CFR 1.137(a)
Docket Number (Optional) 
NOTE: The following showing of the cause of unavoidable delay must be signed by all applicants or by any other 
party who is presenting statements concerning the cause of delay. 
Signature Date 
Typed or Printed Name Registration Number, if applicable 
(In the space provided below, please explain in detail why the 35 U.S.C. 371(c) elements (or continuing U.S. application) 
were not timely filed.) 
[Page 3 of 3] 
Doc Code:

Privacy Act StatementPrivacy Act Statement
Privacy Act Statement 
ThePrivacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection 
with your submission of the attached form related to a patent application or patent. Accordingly, 
pursuant to the requirements of the Act, please be advised that: (1) the general authority for the 
collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; 
and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark 
Office is to process and/or examine your submission related to a patent application or patent. If you do 
not furnish the requested information, the U.S. Patent and Trademark Office may not be able to 
process and/or examine your submission, which may result in termination of proceedings or 
abandonment of the application or expiration of the patent. 
The information provided by you in this form will be subject to the following routine uses: 
1. The information on this form will be treated confidentially to the extent allowed under the 
Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from 
this system of records may be disclosed to the Department of Justice to determine whether 
disclosure of these records is required by the Freedom of Information Act. 
2. A record from this system of records may be disclosed, as a routine use, in the course of 
presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to 
opposing counsel in the course of settlement negotiations. 
3. A record in this system of records may be disclosed, as a routine use, to a Member of 
Congress submitting a request involving an individual, to whom the record pertains, when the 
individual has requested assistance from the Member with respect to the subject matter of the 
record. 
4. A record in this system of records may be disclosed, as a routine use, to a contractor of the 
Agency having need for the information in order to perform a contract. Recipients of 
information shall be required to comply with the requirements of the Privacy Act of 1974, as 
amended, pursuant to 5 U.S.C. 552a(m). 
5. A record related to an International Application filed under the Patent Cooperation Treaty in 
this system of records may be disclosed, as a routine use, to the International Bureau of the 
World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty. 
6. A record in this system of records may be disclosed, as a routine use, to another federal 
agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to 
the Atomic Energy Act (42 U.S.C. 218(c)). 
7. A record from this system of records may be disclosed, as a routine use, to the Administrator, 
General Services, or his/her designee, during an inspection of records conducted by GSA as 
part of that agency’s responsibility to recommend improvements in records management 
practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall 
be made in accordance with the GSA regulations governing inspection of records for this 
purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not 
be used to make determinations about individuals. 
8. A record from this system of records may be disclosed, as a routine use, to the public after 
either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent 
pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 
CFR 1.14, as a routine use, to the public if the record was filed in an application which 
became abandoned or in which the proceedings were terminated and which application is 
referenced by either a published application, an application open to public inspection or an 
issued patent. 
9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, 
or local law enforcement agency, if the USPTO becomes aware of a violation or potential 
violation of law or regulation.

D.Delay Until the Filing of a Grantable Petition

There are three periods to be considered during the 
evaluation of a petition under 37 CFR 1.137: 

(A)the delay in reply that originally resulted in 
the abandonment; 

(B)the delay in filing an initial petition pursuant 
to 37 
CFR 1.137 to revive the application; and 

(C)the delay in filing a grantable petition pursuant 
to 37 CFR 1.137 to revive the application.

As discussed above, the abandonment of an application 
is considered to be a deliberately chosen course 
of action, and the resulting delay cannot be considered 
as “unintentional” within the meaning of 37 CFR 
1.137(b), where the applicant deliberately permits the 
application to become abandoned. See Application of 
G, 11 USPQ2d at 1380. Likewise, where the applicant 
deliberately chooses not to seek or persist in seeking 
the revival of an abandoned application, or where the 
applicant deliberately chooses to delay seeking the 
revival of an abandoned application, the resulting 
delay in seeking revival of the abandoned application 
cannot be considered as “unintentional” within the 
meaning of 37 CFR 1.137(b). An intentional delay 
resulting from a deliberate course of action chosen by 
the applicant is not affected by:

(A)the correctness of the applicant’s (or applicant’s 
representative’s) decision to abandon the application 
or not to seek or persist in seeking revival of 
the application; 

(B)the correctness or propriety of a rejection, or 
other objection, requirement, or decision by the 
Office; or 

(C)the discovery of new information or evidence, 
or other change in circumstances subsequent to the 
abandonment or decision not to seek or persist in 
seeking revival.

Obviously, delaying the revival of an abandoned 
application, by a deliberately chosen course of action, 
until the industry or a competitor shows an interest in 
the invention is the antithesis of an “unavoidable” or 
“unintentional” delay. An intentional abandonment of 
an application, or an intentional delay in seeking the 
revival of an abandoned application, precludes a finding 
of unavoidable or unintentional delay pursuant to 
37 CFR 1.137. See Maldague, 10 USPQ2d at 1478.

The Office does not generally question whether 
there has been an intentional or otherwise impermissible 
delay in filing an initial petition pursuant to 
37 
CFR 1.137(a) or (b), when such petition is filed: 
(A) within 3 months of the date the applicant is first 
notified that the application is abandoned; and (2) 
within 1 year of the date of abandonment of the application. 
Thus, an applicant seeking revival of an abandoned 
application is advised to file a petition pursuant 
to 37 
CFR 1.137 within 3 months of the first notification 
that the application is abandoned to avoid the 
question of intentional delay being raised by the 
Office (or by third parties seeking to challenge any 
patent issuing from the application).

Where a petition pursuant to 37 CFR 1.137(a) or 
(b) is not filed within 3 months of the date the applicant 
is first notified that the application is abandoned, 
the Office may consider there to be a question as 
to whether the delay was unavoidable or unintentional. 
In such instances, 

(A)the Office will require a showing as to how 
the delay between the date the applicant was first notified 
that the application was abandoned and the date a 
37 CFR 1.137(a) petition was filed was “unavoidable”; 
or 

(B)the Office may require further information as 
to the cause of the delay between the date the applicant 
was first notified that the application was abandoned 
and the date a 37 CFR 1.137(b) petition was 
filed, and how such delay was “unintentional.”

To avoid delay in the consideration of the merits of 
a petition under 37 CFR 1.137(a) or (b) in instances in 
which such petition was not filed within 3 months of 
the date the applicant was first notified that the application 
was abandoned, applicants should include a 
showing as to how the delay between the date the 
applicant was first notified by the Office that the 
application was abandoned and the filing of a petition 
under 37 CFR 1.137 was (A) “unavoidable” in a petition 
under 37 CFR 1.137(a); or (B) “unintentional” in 
a petition under 37 CFR 1.137(b).

Where a petition pursuant to 37 CFR 1.137(a)  is 
not filed within 1 year of the date of abandonment of 
the application (note that abandonment takes place by 
operation of law, rather than by the mailing of a 
Notice of Abandonment), the Office will require: 

(A)further information as to when the applicant 
(or  applicant’s representative) first became aware of 
the abandonment of the application; and 

(B)a showing as to how the delay in discovering 
the abandoned status of the application occurred 
despite the exercise of due care or diligence on the 
part of the applicant (or applicant’s representative) 
(see Pratt, 1887 Dec. Comm’r Pat. at 32-33).

Where a petition pursuant to 37 CFR 1.137(b) is 
not filed within 1 year of the date of abandonment of 
the application (note that abandonment takes place by 
operation of law, rather than by the mailing of a 
Notice of Abandonment), the Office may require:

(A)further information as to when the applicant 
(or the applicant’s representative) first became aware 
of the abandonment of the application; and

(B)a showing as to how the delay in discovering 
the abandoned status of the application occurred 
despite the exercise of due care or diligence on the 
part of the applicant (or applicant’s representative).

To avoid delay in the consideration of the merits of 
a petition under 37 CFR 1.137(b) in instances in 
which such petition was not filed within 1 year of the 
date of abandonment of the application, applicants 
should include:

(A)the date that the applicant first became aware 
of the abandonment of the application; and 

(B)a showing as to how the delay in discovering 
the abandoned status of the application occurred 
despite the exercise of due care or diligence on the 
part of the applicant.

In either instance, applicant’s failure to carry the 
burden of proof to establish that the “entire” delay 
was “unavoidable” or “unintentional” may lead to the 
denial of a petition under 37 CFR 1.137(a) or 37 CFR 
1.137(b), regardless of the circumstances that originally 
resulted in the abandonment of the application.

E.Party Whose Delay Is Relevant

The question under 37 CFR 1.137 is whether the 
delay on the part of the party having the right or 
authority to reply to avoid abandonment (or not reply) 
was unavoidable or unintentional. When the applicant 
assigns the entire right, title, and interest in an invention 
to a third party (and thus does not retain any legal 
or equitable interest in the invention), the applicant’s 
delay is irrelevant in evaluating whether the delay was 
unavoidable or even unintentional. See Kim v. Quigg, 
718 F. Supp. 1280, 1284, 12 USPQ2d 1604, 1607-08 
(E.D. Va. 1989). When an applicant assigns the application 
to a third party (e.g., the inventor/applicant’s 
employer), and the third party decides not to file a 
reply to avoid abandonment, the applicant’s actions, 
inactions or intentions are irrelevant under 37 CFR 
1.137, unless the third party has reassigned the application 
to the applicant prior to the due date for the 
reply. Id. 

Likewise, where the applicant permits a third party 
(whether a partial assignee, licensee, or other party) to 
control the prosecution of an application, the third 
party’s decision whether or not to file a reply to avoid 
abandonment is binding on the applicant. See Winkler, 
221 F. Supp. at 552, 138 USPQ at 667. Where an 
applicant enters an agreement with a third party for 
the third party to take control of the prosecution of an 
application, the applicant will be considered to have 
given the third party the right and authority to prosecute 
the application to avoid abandonment (or not 
prosecute), unless, by the express terms of the contract 
between applicant and the third party, the third 
party is conducting the prosecution of the application 
for the applicant solely in a fiduciary capacity. See 
Futures Technology Ltd. v. Quigg, 684 F. Supp. 430, 
431, 7 USPQ2d 1588, 1589 (E.D. Va. 1988). Otherwise, 
the applicant will be considered to have given 
the third party unbridled discretion to prosecute (or 
not prosecute) the application to avoid abandonment, 
and will be bound by the actions or inactions of such 
third party.

F.Burden of Proof To Establish Unavoidable or 
Unintentional Delay

37 CFR 1.137(a)(3) requires a showing to the satisfaction 
of the Director of the USPTO that the entire 
delay in filing the required reply from the due date for 
the reply until the filing of a grantable petition pursuant 
to 37 CFR 1.137(a) was unavoidable. Therefore, 
the Office will require the applicant in every petition 
under 37 CFR 1.137(a) to carry the burden of proof to 
establish that the delay from the due date for the reply 
until the filing of a grantable petition 
was 
unavoidable. See Haines, 673 F. Supp. at 316-17, 
5 
USPQ2d at 1131-32.

37 CFR 1.137(b)(3) requires that a petition under 
37 
CFR 1.137(b) must be accompanied by a statement 
that the entire delay in providing the required reply 
from the due date for the reply until the filing of a 
grantable petition pursuant to 37 CFR 1.137(b) was 
unintentional, but also provides that “[t]he Director 
may require additional information where there is a 
question whether the delay was unintentional.” While 
the Office will generally require only the statement 
that the entire delay in providing the required reply 
from the due date for the reply until the filing of a 
grantable petition pursuant to 37 CFR 1.137(b) was 
unintentional, the Office may require an applicant to 
carry the burden of proof to establish that the delay 
from the due date for the reply until the filing of a 
grantable petition was unintentional within the meaning 
of 35 U.S.C. 41(a)(7) and 37 CFR 1.137(b) where 
there is a question whether the entire delay was unintentional. 
See Application of G, 11 USPQ2d at 1380.

G.Terminal Disclaimer Requirement

37 CFR 1.137(d) requires that a petition under 
either 37 
CFR 1.137(a) or 1.137(b) be accompanied 
by a terminal disclaimer (and fee), regardless of the 
period of abandonment, in: 

(A)a design application;

(B)a nonprovisional utility application (other 
than a reissue application) filed before June 8, 1995; 
or 

(C)a nonprovisional plant application (other than 
a reissue application) filed before June 8, 1995. 

In addition, a terminal disclaimer (and fee) is also 
required for a utility or plant application filed on or 
after June 8, 1995, but before May 29, 2000, where 
the application became abandoned (1) during appeal, 
(2) during interference, or (3) while under a secrecy 
order. The reason being that utility and plant patents 
issuing on applications filed on or after June 8, 1995, 
but before May 29, 2000, are eligible for the patent 
term extension under former 35 U.S.C. 154(b) (as a 
result of the Uruguay Round Agreements Act 
(URAA)). See 35 U.S.C. 154(b) (1999); see also 
37 
CFR 1.701. If such an application is abandoned (1) 
during appeal, (2) during interference, or (3) while 
under a secrecy order, the patentee of a patent issuing 
from such an application is eligible for patent term 
extension for the entire period of abandonment. The 
requirement for a terminal disclaimer for these situations 
will make certain that any patent term extension 
obtained for the period of abandonment while the 
application is under appeal, interference, or a secrecy 
order will be dedicated to the public. For utility and 
plant applications filed on or after May 29, 2000, a 
terminal disclaimer (and fee) is not required since the 
period of abandonment is reduced from the patent 
term adjustment pursuant to 37 CFR 1.704.

The terminal disclaimer submitted in a design 
application must dedicate to the public a terminal part 
of the term of any patent granted thereon equivalent to 
the period of abandonment of the application. The terminal 
disclaimer submitted in either a utility or plant 
application filed before June 8, 1995 must dedicate to 
the public a terminal part of the term of any patent 
granted thereon equivalent to the lesser of: (1) the 
period of abandonment of the application; or (2)the 
period extending beyond twenty years from the date 
on which the application for the patent was filed in the 
United States or, if the application contains a specific 
reference to an earlier filed application(s) under 
35 
U.S.C. 120, 121, or 365(c), from the date on which 
the earliest such application was filed. The terminal 
disclaimer must also apply to any patent granted on 
any continuing utility or plant application filed before 
June 8, 1995, or any continuing design application, 
entitled under 35 U.S.C. 120, 121, or 365(c) to the 
benefit of the filing date of the application for which 
revival is sought. The terminal disclaimer requirement 
of 37 CFR 1.137(d) does not apply to (A) applications 
for which revival is sought solely for purposes of 
copendency with a utility or plant application filed on 
or after June 8, 1995, (B) lapsed patents, (C) reissue 
applications, or (D) reexamination proceedings.

 The Office cannot determine (at the time a petition 
to revive is granted) the period disclaimed (i.e., which 
period is lesser: the period of abandonment of the 
application, or the period extending beyond twenty 
years from the date on which the application for the 
patent was filed in the United States or, if the application 
contains a specific reference to an earlier filed 
application(s) under 35 
U.S.C. 120, 121, or 365(c), 
from the date on which the earliest such application 
was filed). Therefore, the Office will not indicate the 
period disclaimed under 37 CFR 
1.137(d) in its decision 
granting a petition to revive an abandoned application.

The filing of a terminal disclaimer is not a substitute 
for unavoidable or unintentional delay. See Application 
of Takao, 17 USPQ2d at 1159. The requirement 
that the entire delay have been unavoidable (37 CFR 
1.137(a)) or at least unintentional (37 CFR 1.137(b)) 
is distinct from the requirement for a terminal disclaimer. 
Therefore, the filing of a terminal disclaimer 
cannot excuse an intentional delay in filing a petition 
or renewed petition to revive an abandoned application. 
Likewise, an unavoidable or unintentional delay 
in filing a petition or renewed petition to revive an 
abandoned application will not warrant waiver of the 
terminal disclaimer requirement of 37 CFR 1.137(d).

In the event that an applicant considers the requirement 
for a terminal disclaimer to be inappropriate 
under the circumstances of the application at issue, 
the applicant should file a petition under 37 CFR 
1.183 (and petition fee) to request a waiver of this 
requirement of 37 CFR 1.183. Such a petition may 
request waiver of this requirement in toto, or to the 
extent that such requirement exceeds the period considered 
by applicant as the appropriate period of disclaimer. 
The grant of such a petition, however, is 
strictly limited to situations wherein applicant has 
made a showing of an “extraordinary situation” in 
which “justice requires” the requested relief. An 
example of such a situation is when the abandonment 
of the application caused no actual delay in prosecution 
(e.g., an application awaiting decision by the 
Board of Appeals and Interferences during period of 
abandonment).

Forms PTO/SB/62 and PTO/SB/63 may be used 
when filing a terminal disclaimer in accordance with 
37 CFR 1.137(d).

Form PTO/SB/62. Terminal Disclaimer to Accompany Petition (Period Specified)Form PTO/SB/62. Terminal Disclaimer to Accompany Petition (Period Specified)
PTO/SB/62 (07-06) 
Approved for use through 09/30/2006. OMB 0651-0031 
Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE 
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. 
TERMINAL DISCLAIMER TO ACCOMPANY PETITION 
(Period Specified) 
Docket Number (Optional) 
In re Application of: 
Name:
Application Number: 
Filed: 
For: 
The owner, of percent interest in the above-identified 
application hereby disclaims the terminal months of any patent granted on the above-identified application or on 
any application that contains a specific reference under 35 U.S.C. 120, 121, or 365(c) to this application. This disclaimer is 
binding upon the grantee, its successors or assigns. 
Check either box 1 or 2 below, if appropriate. 
1. For submissions on behalf of an organization (e.g., corporation, partnership, university, government agency, etc.), the 
person signing is empowered to act on behalf of the organization. 
I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information 
and belief are believed to be true; and further, that these statements are made with knowledge that willful false statements andthe like so made are punishable by fine or imprisonment, or both, under Section 1001, Title 18 of the United States Code, and 
that such willful false statements may jeopardize the validity of the application or any patent issuing thereon. 
2. The undersigned is an attorney of record. Registration Number 
Signature Date 
Typed or printed nameTelephone Number 
Terminal disclaimer fee under 37 CFR 1.20(d) included. 
WARNING: Information on this form may become public. Credit card information should 
not be included onthis form. Provide credit card information and authorization on 
PTO-2038. 
 Certification under 37 CFR 3.73(b) is required if terminal disclaimer is signed by the assignee (owner). Form PTO/SB/96 
may be used for making this certification. See MPEP § 324. 
This collection of information is required by 37 CFR 1.137. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO 
to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 12 minutes to complete, 
including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments 
on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent 
and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS 
ADDRESS.SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2. 
Doc Code:

Privacy Act StatementPrivacy Act Statement
Privacy Act Statement 
ThePrivacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection 
with your submission of the attached form related to a patent application or patent. Accordingly, 
pursuant to the requirements of the Act, please be advised that: (1) the general authority for the 
collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; 
and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark 
Office is to process and/or examine your submission related to a patent application or patent. If you do 
not furnish the requested information, the U.S. Patent and Trademark Office may not be able to 
process and/or examine your submission, which may result in termination of proceedings or 
abandonment of the application or expiration of the patent. 
The information provided by you in this form will be subject to the following routine uses: 
1. The information on this form will be treated confidentially to the extent allowed under the 
Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from 
this system of records may be disclosed to the Department of Justice to determine whether 
disclosure of these records is required by the Freedom of Information Act. 
2. A record from this system of records may be disclosed, as a routine use, in the course of 
presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to 
opposing counsel in the course of settlement negotiations. 
3. A record in this system of records may be disclosed, as a routine use, to a Member of 
Congress submitting a request involving an individual, to whom the record pertains, when the 
individual has requested assistance from the Member with respect to the subject matter of the 
record. 
4. A record in this system of records may be disclosed, as a routine use, to a contractor of the 
Agency having need for the information in order to perform a contract. Recipients of 
information shall be required to comply with the requirements of the Privacy Act of 1974, as 
amended, pursuant to 5 U.S.C. 552a(m). 
5. A record related to an International Application filed under the Patent Cooperation Treaty in 
this system of records may be disclosed, as a routine use, to the International Bureau of the 
World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty. 
6. A record in this system of records may be disclosed, as a routine use, to another federal 
agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to 
the Atomic Energy Act (42 U.S.C. 218(c)). 
7. A record from this system of records may be disclosed, as a routine use, to the Administrator, 
General Services, or his/her designee, during an inspection of records conducted by GSA as 
part of that agency’s responsibility to recommend improvements in records management 
practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall 
be made in accordance with the GSA regulations governing inspection of records for this 
purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not 
be used to make determinations about individuals. 
8. A record from this system of records may be disclosed, as a routine use, to the public after 
either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent 
pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 
CFR 1.14, as a routine use, to the public if the record was filed in an application which 
became abandoned or in which the proceedings were terminated and which application is 
referenced by either a published application, an application open to public inspection or an 
issued patent. 
9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, 
or local law enforcement agency, if the USPTO becomes aware of a violation or potential 
violation of law or regulation.

Form PTO/SB/63. Terminal Disclaimer to Accompany Petition (Period of Disclaimer to be Completed by Petitions Examiner)Form PTO/SB/63. Terminal Disclaimer to Accompany Petition (Period of Disclaimer to be Completed by Petitions Examiner)
PTO/SB/63 (07-06) 
Approved for use through 09/30/2006. OMB 0651-0031 
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE 
Under the Paperwork Reduction Act of 1995, no persons are required to a collection of information unless it displays a valid OMB control number. 
TERMINAL DISCLAIMER TO ACCOMPANY PETITION Docket Number (Optional) 
In re Application of: 
Name:
Application Number: 
Filed:
For:
The owner, ______________________ of _________ percent interest in the above-identified application hereby 
disclaims a terminal part of the term of any patent granted the above-identified application equivalent to: (1) if the 
above-identified application is a design application, the period of abandonment of the above-identified application, 
and (2) if the above-identified application is a utility or plant application, the lesser of: (a) the period of 
abandonment of the application; or (b) the period extending beyond twenty years from the date on which the 
above-identified application was filed in the United States or, if the application contains a specific reference to an 
earlier filed application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on which the earliest such 
application was filed. This disclaimer also applies to any patent granted on a utility or plant application filed before 
June 8, 1995, or a design application, that contains a specific reference under 35 U.S.C. 120, 121, or 365(c) to 
the above-identified application. This disclaimer is binding upon the grantee, and its successors or assigns. 
Check either box 1 or 2 below, if appropriate. 
1. For submissions on behalf of an organization (e.g., corporation, partnership, university, government 
agency, etc.), the undersigned is empowered to act on behalf of the organization. 
2. The undersigned is an attorney or agent of record. Registration Number_______________________. 
_______________________________________________________ _________________________ 
Signature Date 
_______________________________________________________ _________________________ 
Typed or Printed Name Telephone Number 
Terminal disclaimer fee under 37 CFR 1.20(d) included. 
WARNING: Information on this form may become public. Credit card information should not be 
included on this form. Provide credit card information and authorization on PTO-2038. 
 Statement under 37 CFR 3.73(b) is required if terminal disclaimer is signed by the assignee (owner). 
Form PTO/SB/96 may be used for making this certification. See MPEP § 324. 
This collection of information is required by 37 CFR 1.137. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO 
to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 12 minutes to complete, 
including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on 
the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and 
Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS 
ADDRESS.SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2. 
Doc Code: 

Privacy Act StatementPrivacy Act Statement
Privacy Act Statement 
ThePrivacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection 
with your submission of the attached form related to a patent application or patent. Accordingly, 
pursuant to the requirements of the Act, please be advised that: (1) the general authority for the 
collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; 
and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark 
Office is to process and/or examine your submission related to a patent application or patent. If you do 
not furnish the requested information, the U.S. Patent and Trademark Office may not be able to 
process and/or examine your submission, which may result in termination of proceedings or 
abandonment of the application or expiration of the patent. 
The information provided by you in this form will be subject to the following routine uses: 
1. The information on this form will be treated confidentially to the extent allowed under the 
Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from 
this system of records may be disclosed to the Department of Justice to determine whether 
disclosure of these records is required by the Freedom of Information Act. 
2. A record from this system of records may be disclosed, as a routine use, in the course of 
presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to 
opposing counsel in the course of settlement negotiations. 
3. A record in this system of records may be disclosed, as a routine use, to a Member of 
Congress submitting a request involving an individual, to whom the record pertains, when the 
individual has requested assistance from the Member with respect to the subject matter of the 
record. 
4. A record in this system of records may be disclosed, as a routine use, to a contractor of the 
Agency having need for the information in order to perform a contract. Recipients of 
information shall be required to comply with the requirements of the Privacy Act of 1974, as 
amended, pursuant to 5 U.S.C. 552a(m). 
5. A record related to an International Application filed under the Patent Cooperation Treaty in 
this system of records may be disclosed, as a routine use, to the International Bureau of the 
World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty. 
6. A record in this system of records may be disclosed, as a routine use, to another federal 
agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to 
the Atomic Energy Act (42 U.S.C. 218(c)). 
7. A record from this system of records may be disclosed, as a routine use, to the Administrator, 
General Services, or his/her designee, during an inspection of records conducted by GSA as 
part of that agency’s responsibility to recommend improvements in records management 
practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall 
be made in accordance with the GSA regulations governing inspection of records for this 
purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not 
be used to make determinations about individuals. 
8. A record from this system of records may be disclosed, as a routine use, to the public after 
either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent 
pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 
CFR 1.14, as a routine use, to the public if the record was filed in an application which 
became abandoned or in which the proceedings were terminated and which application is 
referenced by either a published application, an application open to public inspection or an 
issued patent. 
9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, 
or local law enforcement agency, if the USPTO becomes aware of a violation or potential 
violation of law or regulation. 

H.Request for Reconsideration

37 CFR 1.137(e) requires that any request for 
reconsideration or review of a decision refusing to 
revive an abandoned application or lapsed patent must 
be filed within 2 months of the decision refusing to 
revive or within such time as set in the decision. 
37 
CFR 1.137(e) further provides that, unless a decision 
indicates otherwise, this time period for requesting 
reconsideration or review may be extended under 
the provisions of 37 CFR 1.136.

37 CFR 1.137(e) specifies a time period within 
which a renewed petition pursuant to 37 CFR 1.137must be filed to be considered timely. Where an applicant 
files a renewed petition, request for reconsideration, 
or other petition seeking review of a prior 
decision on a petition pursuant to 37 
CFR 1.137 outside 
the time period specified in 37 CFR 1.137(e), the 
Office may require, inter alia, a specific showing as to 
how the entire delay was “unavoidable” (37 
CFR 
1.137(a)) or “unintentional” (37 CFR 1.137(b)). As 
discussed above, a delay resulting from the applicant 
deliberately choosing not to persist in seeking the 
revival of an abandoned application cannot be considered 
“unavoidable” or “unintentional” within the 
meaning of 37 CFR 1.137, and the correctness or propriety 
of the decision on the prior petition pursuant to 
37 CFR 1.137, the correctness of the applicant’s (or 
the applicant's representative's) decision not to persist 
in seeking revival, the discovery of new information 
or evidence, or other change in circumstances subsequent 
to the abandonment or decision to not persist in 
seeking revival are immaterial to such intentional 
delay caused by the deliberate course of action chosen 
by the applicant.

I.Provisional Applications

37 CFR 1.137 is applicable to a provisional application 
abandoned for failure to reply to an Office 
requirement. A petition under 37 CFR 1.137(a) or (b) 
must be accompanied by any outstanding reply to an 
Office requirement, since 37 CFR 1.137(a)(1) and 
1.137(b)(1) permit the filing of a continuing application 
in lieu of the required reply only in a nonprovisional 
application.

35 U.S.C. 111(b)(5) provides that a provisional 
application shall be regarded as abandoned 12 months 
after its filing date and shall not be subject to revival 
after such 12-month period. 37 CFR 1.137(g) provides 
that a provisional application, abandoned for 
failure to timely respond to an Office requirement, 
may be revived pursuant to 37 CFR 1.137, however a 
provisional application will not be regarded as pending 
after twelve months from its filing date under any 
circumstances. Note that the pendency of a provisional 
application is extended to the next succeeding 
secular or business day if the day that is twelve 
months after the filing date of the provisional application 
falls on a Saturday, Sunday, or Federal holiday 
within the District of Columbia. See 35 U.S.C. 
119(e)(3).

A provisional application may be abandoned prior 
to 12 
months from its filing date for failure to reply to 
an Office requirement (e.g., failure to submit the filing 
fee and/or cover sheet). Applicant may petition to 
have an abandoned provisional application revived as 
a pending provisional application for a period of nolonger than 12 months from the filing date of the provisional 
application where the delay was unavoidable 
or unintentional. It would be permissible to file a petition 
for revival later than 12 months from the filing 
date of the provisional application but only to revive 
the application for the 12-month period following the 
filing of the provisional application. Thus, even if the 
petition were granted to establish the pendency up to 
the end of the 12-month period, the provisional application 
would not be considered pending after 12 
months from its filing date.

====711.03(d) Examiner’s Statement on Petition To Set Aside Examiner’s Holding====

37 CFR 1.181 states that the examiner “may be 
directed by the Director to furnish a written statement 
within a specific time setting forth the reasons for his 
or her decision upon the matters averred in the petition, 
supplying a copy thereof to the petitioner.”
Unless requested, however, such a statement should 
not be prepared. See MPEP § 1002.01.

===711.04 Public Access to Abandoned Applications===

Access will be provided to the application file 
itself for any non-Image File Wrapper (IFW) abandoned 
published application. When access to the IFW 
system is available in the File Information Unit (FIU) 
and/or Internet access to abandoned published IFW 
applications, such files will be provided to the public 
via the FIU and/or Internet. Since there is no paper 
file wrapper for IFW applications, if electronic access 
is not available to the public, then access to IFW files 
is only available by ordering a copy of the application-
as-filed, the file contents of the published application 
or a specific document in the file of the 
published application from the Office of Public 
Records and payment of the appropriate fee set forth 
in 37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(ii).

Access to an abandoned unpublished application 
may be provided to any person if a written request for 
access is submitted, and the abandoned application is 
identified or relied upon:

(A)in a U.S. patent application publication or 
patent; 

(B)in statutory invention registration; or 

(C)in an international application that is published 
in accordance with PCT Article 21(2). 

An application is considered identified in a document 
such as a patent when the application number or serial 
number and filing date, first named inventor, title and 
filing date or other application specific information 
are provided in the text of the patent, but not when the 
identification is made in a paper in the file contents of 
the patent and is not included in the printed patent. 
See 37 CFR 1.14(a)(1)(iv). A copy of the application-
as-filed, the file contents of the abandoned application, 
or a specific document in the file of the abandoned 
application may also be provided to any person 
upon written request, and payment of the fee set forth 
in 37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(iv). See 
also MPEP § 103. Form PTO/SB/68 may be used to 
request access of an abandoned application under 
37 
CFR 1.14(a)(1)(iv).

====711.04(a) Pulling and Forwarding Abandoned Applications====

The files of abandoned applications are pulled and 
forwarded to the Files Repository on a biweekly basis 
1 month after the full 6-month statutory period has 
expired. However, the date of abandonment is after 
midnight of the date on which the set shortened statutory 
period, including any extensions under 37 CFR 
1.136, expired.

The applications should be carefully scrutinized by 
the appropriate examiner to verify that they are actually 
abandoned. A check should be made of files containing 
a decision of the Board of Patent Appeals and 
Interferences for the presence of allowed claims 
to avoid their being erroneously sent to the Files 
Repository.

Although the abandoned files are not pulled until 
the maximum permissible period for which an extension 
of time under 37 CFR 1.136(a) plus 1 month has 
expired, the date of the abandonment is after midnight 
of the date the period for reply actually expired. This 
is normally the end of the 3-month shortened statutory 
period.

====711.04(b) Ordering of Patented andAbandoned Files====

In examination of an application it is sometimes 
necessary to inspect the application papers of a previously 
patented or abandoned application. It is always 
necessary to do so in the examination of a reissue 
application.

Recently patented and abandoned paper files are 
stored at the Files Repository. Older files are 
housed in warehouses located off site. Image File 
Wrapper (IFW) applications are stored electronically 
and do not have a paper file wrapper to be stored. The 
electronic file is the official record of the application. 
See the IFW Manual section 3.7.

Patented and abandoned files are ordered by means 
of a PALM video display transaction. To place such 
an order, the examiner is required to input his/her 
PALM location code, employee number, and patent 
number(s) and/or application number(s) of the file(s) 
that are needed. After transmission of the request 
transaction by the examiner, a “response” screen 
appears on the video display terminal which informs 
him/her of the status of the request for each file. The 
examiner is informed that the request is:

(A)accepted; 

(B)accepted, but for which the file is stored at a 
warehouse off site (in which case delivery time is 
increased); 

(C)not accepted since the file is not located at the 
repository or warehouse; 

(D)not accepted since a previous request for the 
file has not yet been filled; or 

(E)not accepted since the patent or application 
number inputted is not valid.

Periodically each day, personnel at the Files Repository 
perform a PALM print transaction which produces 
a list of all accepted requests in patent number 
order and, for requests for abandoned files, in application 
number order. The printed record of each request 
is detached from the list when its associated file is 
found. It is then stapled to it. Throughout the day, 
periodic deliveries of files are made directly to the 
offices of their requestors by Files Repository personnel. 
Upon delivery of files at the various locations, 
files that are ready to be returned to the repository are 
picked up. For applications stored in IFW, this process 
is no longer necessary.

With the exception of certain older files, the drawings 
of patented and abandoned files, if any, are now 
stored within their respective application file wrappers. 
Since it is desired not to separate one from the 
other, both the file and its drawings are delivered 
when a file is ordered. For applications stored in IFW, 
it is no longer necessary to order or deliver the files.

====711.04(c) Notifying Applicants of Abandonment====

The Patent Examining Corps currently mails to the 
correspondence address of record, a Notice of Abandonment 
form PTOL-1432 in all applications which 
become abandoned in the Corps for failure to prosecute. 
However, in no case will mere failure to receive 
a notice of abandonment affect the status of an abandoned 
application.

This procedure should enable applicants to take 
appropriate and diligent action to reinstate an application 
inadvertently abandoned for failure to timely 
reply to an official communication. In most cases, a 
petition to revive under 37 CFR 1.137 will be the 
appropriate remedy. It may be that a reply to the 
Office action was mailed to the Office with a certificate 
of mailing declaration as a part thereof (MPEP 
§ 512) but was not received in the Office. In this 
instance, adequate relief may be available by means 
of a petition to withdraw the holding of abandonment.

In any instance, if action is not taken promptly after 
receiving the notice of abandonment, appropriate 
relief may not be granted. If a lack of diligent action is 
predicated on the contention that neither the Office 
action nor the notice of abandonment was received, 
one may presume that there is a problem with the correspondence 
address of record. Accordingly, attention 
is directed to MPEP § 402 and § 601.03 dealing with 
changes of address. In essence, it is imperative that a 
paper notifying the Office of a change of address be 
filed promptly in each application in which the correspondence 
address is to be changed (except as provided 
for under Customer Number practice — see 
MPEP § 403).

===711.05 Letter of Abandonment Received After Application Is Allowed===

Receipt of a letter of abandonment while an application 
is allowed is acknowledged by the Publishing 
Division.

An express abandonment arriving after the issue fee 
has been paid will not be accepted without a showing 
of one of the reasons indicated in 37 CFR 1.313(c), or 
else a showing under 37 CFR 1.183 justifying suspension 
of 37 CFR 1.313. See also MPEP § 711.01.

===711.06 Abstracts, Abbreviatures, and Defensive Publications===

I. ABSTRACTS

Abstracts were prepared and published in accordance 
with the Notice of January 25, 1949, 619 O.G. 
258. Each abstract includes a summary of the disclosure 
of the abandoned application, and in applications 
having drawings, a figure of the drawing. The publication 
of such abstracts was discontinued in 1953.

II. ABBREVIATURES

Abbreviatures were prepared and published in 
accordance with the procedure indicated in the Notice 
of October 13, 1964, 808 O.G. 1. Each abbreviature 
contains a specific portion of the disclosure of the 
abandoned application, preferably a detailed representative 
claim, and, in applications having drawings, a 
figure of the drawing. The publication of such abbreviatures 
was discontinued in 1965.

III. DEFENSIVE PUBLICATIONS

The Defensive Publication Program, which provided 
for the publication of the abstract of the technical 
disclosure of a pending application if the applicant 
waived his or her rights to an enforceable patent, was 
available between April 1968 and May 8, 1985. The 
program was ended in view of the applicant’s ability 
to obtain a Statutory Invention Registration.

An application was laid open for public inspection 
under the Defensive Publication Program and the 
applicant provisionally abandoned the application, 
retaining rights to an interference for a limited period 
of 5 years from the earliest effective U.S. filing date.

The defensive publication of an application precluded 
a continuing application (divisional, continuation-
in-part, or continuation) filed under 35 U.S.C. 
120 from being entitled to the benefit of the filing date 
of the defensively published application unless a continuing 
application was filed within 30 months after 
the earliest effective U.S. filing date. Where a similar 
application was not filed until after expiration of the 
30 month period, the application was examined, but it 
was not entitled to claim the benefit of the earlier filing 
date of the defensive publication application. 

If a first continuing application was filed within 
30 months from the earliest U.S. effective filing date 
of the application published under the Defensive Publication 
Program, later copending continuing applications 
(such as divisions if restriction is required 
during the prosecution of the first continuing application) 
were not barred and could be filed during the 
pendency of the first continuing application, even 
though beyond the 30 month period, without loss of 
the right to claim the benefit of the filing date of the 
Defensive Publication application.

The Defensive Publication Abstract and a selected 
figure 
of the drawing, if any, were published in the 
Official Gazette. Defensive Publication Search Copies, 
containing the defensive publication abstract and 
suitable drawings, if any, were provided for the application 
file, the Patent Search Room and the examiner’s 
search files. A defensive publication is not a 
patent or an application publication under 35 U.S.C. 
122(b); it is a publication. Therefore, it is prior art 
only as of its publication date. See MPEP § 2136. 

The defensive publication application files are 
maintained in the File Information Unit (Record 
Room).

Defensive Publication Number

Distinct numbers are assigned to all Defensive Publications 
published December 16, 1969 through October 
1980, for example.

Defensive Publication Number Example

For Defensive Publications published on and after 
November 4, 1980, a different numbering system is 
used.

The revised numbering system is as follows:

Defensive Publication Number Example

Defensive Publications are included in subclass 
lists and subscription orders. The distinct numbers are 
used for all official reference and document copy 
requirements.

A conversion table from the application serial number 
to the distinct number for all Defensive Publications 
published before December 16, 1969 appears at 
869 O.G. 687.

====711.06(a)Citation and Use of Abstracts, Abbreviatures, and DefensivePublications as References====

It is important that abstracts, abbreviatures, and 
defensive publications (O.G. Defensive Publication 
and Defensive Publication Search Copy) be referred 
to as publications.

These printed publications are cited as prior art 
under 35 
U.S.C. 102(a) or 102(b) effective from the 
date of publication in the Official Gazette. See Ex 
parte Osmond, 191 USPQ 334 (Bd. App. 1973) and 
Ex Parte Osmond, 191 USPQ 340 (Bd. App. 
1976). See also MPEP § 2136.

An application or portion thereof from which an 
abstract, abbreviature or defensive publication has 
been prepared  may be used as a reference under 
35 U.S.C.102(a), effective from the actual date of filing 
in the United States, only for evidence of prior 
knowledge of another.

These publications may be used alone or in combination 
with other prior art in rejecting claims under 
35 U.S.C. 102 and 103.

Defensive Publications are listed with “U.S. Patent 
Documents.” Abstracts and Abbreviatures are listed 
under “Other References” in the citation thereof as 
follows:

(A)Abstracts and Abbreviatures

Brown, (abstract or abbreviature) of Serial No. 
........, filed ............., published in O.G. ........., on ........, 
(list classification).

(B)Applications or designated portions thereof, 
abstracts, abbreviatures, and defensive publications

 Jones, Application Serial No. ........, filed 
............., laid open to public inspection on ............... 
as noted at .......... O.G. (portion of application relied 
on), (list classification, if any).