Chester, VA asked in Intellectual Property and Patents (Intellectual Property) for Virginia

Q: What happens if you come across an invention w/status of "abandoned" on the application? Can you move forward with it?

Application was submitted in 2012. Abandoned status in 2014. I noticed that the product has been manufactured in China and available to import.

1 Lawyer Answer
Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: If an application is abandoned far enough back that it is not a situation where the response was lost in the mail (and may be revived), then you should check three things.

1) Sometimes when things are not going well, an applicant will file a continuation or a continuation-in-part and continue seeking patent protection under that new serial number. If you look at the application that is abandoned in Public PAIR -- you can check the tab labelled continuity data to see if this has happened. https://portal.uspto.gov/pair/PublicPair If so, you will want to look and see whether any other patents were issued in this family.

2) If the first patent application of interest was abandoned, then it is possible that they abandoned that application as there was prior art that claimed the same invention. You can see the arguments made to reject the now abandoned application by looking at the PDF files in the Image File Wrapper tab on Public PAIR. If the relevant prior art is relatively new and not expired, then you need to look to see whether the relevant prior art patents impact your plans.

3) Even if this one abandoned patent application does not point towards any other problems, you may want to look for additional prior art. My slide set at http://bit.ly/Patent_Searching is a good start. You may want to do forward chaining to look for other patents or pending applications that cite to the published application that you found as these may be particularly relevant (forward chaining is explained in the slide set).

I hope this helps.

Kevin E Flynn

Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.

The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.

Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.