Author: Adam Cermak

In a notice published on March 2, 2020 (“Notice”), the U.S. Patent and Trademark Office (“PTO”) introduced a two-year time period beyond which, when a party petitions to reclaim certain rights based on an “unintentional” delay in taking actions before the PTO, the PTO will require additional information concerning the petitioner’s assertion that the delay was unintentional.

In Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 Fed. Reg. 12222 (March 2, 2020) ([TEXT] [PDF]), the PTO announced a “clarification” concerning its practice in situations that will require additional information about whether a delay in seeking the revival of an abandoned application, acceptance of a delayed maintenance fee payment, or acceptance of a delayed priority or benefit claim, was unintentional. The Notice indicates that the new requirements are applicable to any petition decided on or after March 2, 2020.

As background, the Patent Law Implementation Treaty of 2010 provided, among other things, that the PTO may establish procedures to revive an unintentionally abandoned application for patent, including acceptance of an unintentionally delayed issue fee payment, and to accept the payment of any maintenance fee required by statute after the six-month grace period, if the delay is shown to the satisfaction of the director to have been unintentional. The American Inventors Protection Act of 1999 provided that a priority claim for a foreign or international application, and a benefit claim to an earlier domestic provisional or nonprovisional application, must be filed within the period required by the PTO (37 C.F.R. §§ 1.55 and 1.78), but that the PTO may establish procedures to accept an unintentionally delayed priority or benefit claim.

The provisions for the revival of an abandoned patent application require a petition including a statement that the entire delay in filing the required reply, from the due date of the reply until the filing of a grantable petition, was unintentional. Similarly, the provisions for the acceptance of a delayed maintenance fee payment require a petition including a statement that the delay in payment of the maintenance fee was unintentional. The provisions for the acceptance of a delayed priority or benefit claim likewise require a statement that the delay between the date the claim was due and the date the claim was filed was unintentional. For each of these provisions, the existing patent rules provide that the PTO may require additional information where there is a question whether the delay was unintentional.

The PTO will now require additional information in these three cases: first, when a petition to revive an abandoned application is filed more than two years after the date the application became abandoned; second, when a petition to accept a delayed maintenance fee payment is filed more than two years after the date the patent expired for nonpayment; and, third, when a petition to accept a delayed priority or benefit claim is filed more than two years after the date the priority or benefit claim was due. The PTO reasons in the Notice that requiring additional information in cases where there has been a two-year delay will ensure that the PTO is provided with sufficient information of the facts and circumstances surrounding the entire delay to support a conclusion that the entire delay was ”unintentional.” The PTO previously relied upon the petitioner’s duty of candor and good faith and accepted the statement that the entire delay was unintentional without requiring further information because of the petitioner’s obligation under 37 C.F.R. § 11.18 to inquire into the underlying facts and circumstances when providing this statement to the PTO. However, the PTO is now taking the position that an extended period of delay (i.e., more than two years) raises a question as to whether the entire delay was unintentional.

The Notice also acknowledges that an inappropriate statement that the delay was “unintentional” may have an adverse effect when attempting to enforce a patent, and highlights that accepting such statements more than two years after the date of abandonment, expiration of the patent, or due date of the priority claim can also create uncertainty and unpredictability relating to patent rights, because the abandoned status of an application, or the expired status of a patent, or an absence of the priority or benefit claim, may be relied upon by third parties. The Notice indicates that the PTO may reconsider the two-year time period established in the Notice at a later time and may adjust the time period based on an evaluation of whether a two-year time period is appropriate for requesting additional information in these circumstances.