Miami, FL asked in Patents (Intellectual Property) for Florida

Q: Renewal fees have been missed on a patent due to financial limitations of owner. How can the patent be reinstated?

Late period from renewal due date is less than six months.

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

A: I do not think that the lapsed patent can be reinstated in accordance with the rules as the failure to pay was not unintentional under USPTO guidelines.

Traditionally, not having the money to pay a fee was not considered a reason that something was unintentional. See

C. Unintentional Delay

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(a) was unintentional” without requiring further information in the vast majority of petitions under 37 CFR 1.137(a). This is because the applicant is obligated under 37 CFR 11.18 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(a) 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 Cir. July 9, 1996)(unpublished)(patents held unenforceable due to a finding of inequitable conduct in submitting an inappropriate statement that the abandonment was unintentional).

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).

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 discretion 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. Excerpt from https://www.uspto.gov/web/offices/pac/mpep/s711.html

Note that the Federal Circuit looked the other way when the US Navy revived a patent when it intentionally let it lapse. I do not agree with this decision but my opinions are not the law. https://patentlyo.com/patent/2013/09/federal-circuit-intentional-abandonment-equals-unintentional-abandonment.html

You may want to consult with a patent attorney to see if the law would support filing a petition to revive given the current state of the law.

I hope that this helps.

Kevin E Flynn

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