Restoration of Rights in U.S. Patent Application Procedures

The restoration process is a crucial step in the U.S. patent application process, especially when an applicant receives a notice of abandonment from the U.S. Patent and Trademark Office (USPTO ) .

Review of waiver ruling

• According to Section 711.03 of the USPTO's Manual of Patent Examining Procedure, upon receiving a notice of abandonment, an applicant may request reconsideration of the decision. If an applicant disagrees with the examiner's notice of abandonment, for example, if the examiner issues a notice of abandonment based on the applicant's response to the office action being incomplete, but the applicant believes their response is substantially complete, the applicant may request revocation of the notice of abandonment within two months of the mailing date of the notice.

Recovery based on “unintentional” reasons (unintentional)

• Under 37 C.F.R. § 137, if the applicant or patentee's delay in responding is due to "unintentional" reasons, the applicant or patentee may file a petition to reinstate a patent application or patent. When filing a petition to reinstate, the applicant or patentee must pay the reinstatement fee, complete any missing formalities, and state in the petition that the entire delay from the deadline for responding to the petition until the filing of the admissible petition was "unintentional."
• This is the primary avenue of recovery in U.S. patent application proceedings and applies to the following situations:
  • 30-month period for US national phase entry
  • 12-month period to file an application claiming priority
  • Deadline for submitting foreign application permission
  • Other deadlines where "waiver of recognition and reconsideration" is not applicable
• Generally, the USPTO does not require applicants to provide detailed explanations or additional information regarding the reasons for "unintentional" claims. However, according to the Clarification Notice (FR Doc. 2020-03715) issued by the USPTO on March 20, 2020, the USPTO will require applicants to provide additional information for requests for restoration of rights received after the issuance of the Clarification Notice if the request for restoration is filed more than two years after the date of abandonment.