How to Revive Abandoned Patents and Patent Applications. Episode 65
- Adam Diament
- Mar 20
- 4 min read
Why Might Your Patent Application Go Abandoned
In the last few episodes, I went over responding to final rejections and the various options. Now, I’m moving on to an entirely different topic: reviving patents and patent applications.
A patent application most commonly goes abandoned when an applicant fails to respond to a rejection from the patent office within the required timeframe. Typically, when you receive a rejection, the top of the notice will state that you have three months to respond, with an additional three-month extension available if you pay late fees. If you miss the deadline, your patent application goes abandoned.
Sometimes, an applicant intends to abandon an application, believing it is not worth pursuing. However, in many cases, missing a deadline is an accident. If that happens, what can you do?
Changes in the Rules for Reviving Abandoned Applications
If you search online for how to revive an abandoned patent or application, you may come across outdated information. The rules changed a few years ago.
Previously, there were two scenarios: unintentional abandonment and unavoidable abandonment. Unintentional abandonment applied when you simply forgot a deadline, while unavoidable abandonment covered cases where extraordinary circumstances—such as the death of the inventor or attorney—prevented action.
It used to be that there was a two-year limit to revive an unintentionally abandoned application. If more than two years had passed, you had to prove that the abandonment was unavoidable.
The good news is that there is no longer a time limit for reviving a patent or application under the unintentional standard. This means you can revive an abandoned patent application at any time, as long as the abandonment was unintentional.
Even though the unintentional standard is easier to meet, you should still be cautious. If your patent application went abandoned and you later revive it, opposing counsel in litigation may look for evidence that you intended to abandon the application. Because of this, I rarely recommend filing any document with the patent office explicitly stating that you intend to abandon an application. There are very few circumstances where such a paper trail is advisable.
How to Revive an Abandoned Patent Application
Reviving an abandoned patent application is relatively simple. You must file Form PTO/SB/64, called a Petition for Revival of an Application for Patent Abandoned Unintentionally. You will need to provide:
Your name
The application number
The title of the invention
The appropriate fees
The required fees (2019) include:
A petition fee, which is currently $500, $1,000, or $2,000 depending on whether you are a micro, small, or large entity.
Any reply fees or issue fees that were outstanding when the application was abandoned.
Any late fees that may have accrued before abandonment.
Additionally, you must submit a response to the last communication from the patent office. For example, if the last correspondence was an obviousness rejection, you must submit a reply addressing that rejection.
In some cases, you may need to file a terminal disclaimer, but this generally only applies to applications filed before 1995 or design patents.
This entire process can be completed electronically on the patent office website. If done correctly, your application should be automatically revived upon signing electronically and submitting payment.
How to Revive an Expired Patent
In addition to abandoned applications, you may need to revive an expired patent. While patents generally last 20 years from the filing date, they require maintenance fees at 3.5, 7.5, and 11.5 years after issuance. If you fail to pay a maintenance fee, your patent expires early.
If you forget to pay a maintenance fee, you can file a petition to revive the patent, provided the failure to pay was unintentional. The process includes:
Paying the missed maintenance fee
Submitting a petition and petition fee
Filing the required form online
The petition fee (2019) is the same as for abandoned applications: $500, $1,000, or $2,000 depending on entity size. This petition is called a Petition to Accept Unintentional Delayed Payment of Maintenance Fee in an Expired Patent. The PTO/SB/66 form used to be required, but now everything can be done directly online when paying maintenance fees.
The Problem of Zombie Patents
The good news is that reviving a patent or application is relatively easy if it was unintentionally abandoned. The bad news comes if you are on the other side of this process.
Let’s say you are developing a new product and researching existing patents. You find that a relevant patent has expired or the application was abandoned, so you assume it is safe to proceed. You invest time and money into production, only to find that the patent owner revives their abandoned or expired patent. Now, your product may be infringing on a revived patent that you thought was dead.
This situation is sometimes referred to as zombie patents—patents that were dead but brought back to life. If you began making and selling a product in good faith, assuming there were no active patents, and a patent owner revives their rights and sues you, you may have intervening rights.
Intervening rights mean that you should not be penalized for activities conducted before the patent was revived. However, proving this in court can be complicated and expensive. A court might grant you full intervening rights, allowing you to continue making and selling the product without penalty, or it might require you to pay royalties moving forward.
Conclusion
To summarize:
If your patent application or issued patent goes abandoned or expires unintentionally, you can revive it by paying the necessary fees and responding to outstanding patent office requests.
There is no longer a time limit for reviving an abandoned patent or application under the unintentional standard.
Be careful when relying on abandoned or expired patents, as zombie patents can return and create legal complications.
I’m Adam Diament, and until next time—keep on inventing!
