Keeping Your Patent Active at the USPTO: How to Avoid and Remedy Abandonment

There are many statuses a patent application can have at the United States Patent and Trademark Office (USPTO). Pending status indicates that a patent application has been filed for an invention, but no patent rights have been granted. Your application will remain pending until it is granted or abandoned. [1].

Granted patents are approved by the USPTO and provide enforceable patent rights while active. Applications are considered abandoned when the applicant fails to respond to USPTO communications, pay required fees, or withdraw the application expressly. [2]. Abandonment could mean the loss of patent rights. Let's explore the USPTO’s abandonment and revival rules to learn how to avoid or recover from a potentially bad situation.

How a patent application is abandoned

Express abandonment

Applicants may submit a declaration of abandonment when they feel the invention doesn’t have sufficient commercial value or the claims appear unpatentable. [3]. Strategically abandoning patents can generate an administrative disclosure – an application that publishes and prevents the issuance of broader patent rights to later applicants. This disclosure effectively expands the public domain and narrows the scope of new patents that competitors can obtain.

Failure to respond to office action (OA)

Each OA sets a deadline to respond. Applicants must submit a response before the deadline or pay for available extensions. [4]. Applicants must meet response deadlines if they wish their patent application to remain pending.

Insufficient response to OA

Every OA requires the applicant to submit a response that addresses all the necessary elements. Responses that fail or are insufficient in this regard may cause the USPTO to declare the application abandoned. [5]. Working with a skilled patent practitioner to draft OA responses to the USPTO is essential.

Failure to pay required fees

The USPTO requires fees at various phases of the patenting process. Failure to pay fees by their respective deadlines results in application abandonment. [6]. These fees include:

1. Filing fees

2. Publication fees

3. Issue fees

4. Extension fees to respond to OA

5. Requests for continued examination

Provisional patent expiration

Provisional patents are automatically abandoned 12 months after filing. These applications are not examined, do not grant patent rights, and cannot be revived. Provisional applications provide patent pending status for your invention. However, they must be claimed by a subsequently filed non-provisional application to confer any value.

Abandonment of granted patents

Granted patents expire (are abandoned) if the owners fail to pay the required maintenance fees. These fees are due at 3.5, 7.5, and 11.5 years after issuance, and failure to pay results in the patent expiring before its full term. Revival due to a maintenance fee lapse is governed by 37 C.F.R. § 1.378.

Methods of reviving abandoned patents

The primary mechanism for revival is through a petition under 37 C.F.R. § 1.137, which allows for revival based on unintentional delay. [7].  The critical element in revival petitions is establishing that the entire delay was unintentional. The USPTO generally relies on the applicant's duty of candor and good faith when accepting such statements.

A grantable petition for revival must include:

1. The required reply to the outstanding OA or notice (if applicable)

2. The petition fee as outlined in 37 C.F.R. § 1.17(m)

3. A statement that the entire delay in filing the required reply from the due date until the filing of a grantable petition was unintentional

4. Any terminal disclaimer (and associated fee) if required

The reply must satisfy the requirements of any outstanding OA. [8] For example, to revive an abandoned application after receiving a notice of allowance, the applicant must include the issuance fee in the petition to revive. It is important to note that the USPTO does not see monetary hardship as sufficient to support the claim of unintentional delay. Medical emergencies or postal service delays are examples of acceptable unintentional delays.

Costs of revival

The petition fee for revival based on unintentional delay is substantial [9]:

• $2,260 for large entities

• $904 for small entities

• $452 for micro entities

Delayed revival

Revival petitions are generally taken at face value.  However, applicants seeking the revival of a patent more than two years after abandonment must provide additional information to support their claim that the delay was unintentional. [7]. The fee requirements for delays greater than two years are also increased. [9]:

• $3,000 for large entities

• $1,200 for small entities

• $600 for micro entities

Applicants who cannot prove the entirety of an extended delay was unintentional do not meet the eligibility requirements for revival. Therefore, triggering the revival process as soon as possible is essential. Barring that, applicants should maintain thorough documentation of the causes of the delay.

Intervening rights, where a competitor develops a similar invention when your patent lapses, may arise if patent owners do not maintain uninterrupted patent rights. [10].

Conclusion

There are many ways your patent can be abandoned at the USPTO and only one way to revive a patent once abandoned. Because abandonment could mean the loss of patent rights, applicants should avoid abandoning valuable patents. The USPTO's revival procedures offer a path to restore abandoned applications and expired patents, but only when the entire delay was genuinely unintentional. The USPTO generally takes the applicant's word but requires explanations if the applicant delays more than 2 years before revival.

Abandonment can be strategic or unintentional. By implementing proactive monitoring systems and responding promptly to any signs of potential abandonment, patent owners can ensure they decide on the option that maximizes value for their portfolio.

At Bright-Line IP, we've helped clients minimize the risks associated with unintentional abandonment and maintain their valuable intellectual property rights.

Whether you're looking to revive your patent rights or to abandon patents in your portfolio strategically, we're here to guide you every step of the way.

Ready to protect your patent portfolio? Contact Bright-Line IP today to discuss developing a winning patent strategy.

Sources

1. Manual of Patent Examining Procedure § 102 (9th ed., Rev. 07.2022, Jan. 2022), https://www.uspto.gov/web/offices/pac/mpep/s102.html (last visited Apr. 13, 2025).

2. Manual of Patent Examining Procedure § 711 (9th ed., Rev. 07.2015, Jan. 2015), https://www.uspto.gov/web/offices/pac/mpep/s711.html (last visited Apr. 13, 2025).

3. 37 C.F.R. § 1.138 (2025), https://www.govinfo.gov/app/details/CFR-2025-title37-vol1/CFR-2025-title37-vol1-sec1-138 (last visited Apr. 13, 2025).

4. 37 C.F.R. § 1.135 (2025), https://www.ecfr.gov/current/title-37/section-1.135 (last visited Apr. 13, 2025).

5. Manual of Patent Examining Procedure § 711.02(a) (9th ed., Rev. 08.2012, Jan. 2012), https://www.uspto.gov/web/offices/pac/mpep/s711.html#d0e81694 (last visited Apr. 13, 2025).

6. 37 C.F.R. § 1.137 (2025), https://www.ecfr.gov/current/title-37/section-1.137 (last visited Apr. 13, 2025).

7. U.S. Patent & Trademark Office, Revival Based on Unintentional Delay, https://www.uspto.gov/patents/apply/petitions/09-revival-based-unintentional-delay (last visited Apr. 13, 2025).

8. Manual of Patent Examining Procedure § 711.03(c) (9th ed., Rev. 01.2024, Jan. 2024), https://www.uspto.gov/web/offices/pac/mpep/s711.html#d0e81972 (last visited Apr. 13, 2025).

9. U.S. Patent & Trademark Office, USPTO Fee Schedule, 37 C.F.R. §§ 1.16-1.28 (2025), https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule (last visited Apr. 13, 2025).

10. 35 U.S.C. § 252 (2025), https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#d0e305365 (last visited Apr. 13, 2025).