Reviving abandoned patents

Have an accidentally abandoned US patent or patent application?  You can often revive them if you promptly file a USPTO petition for revival.

It just so happens that your friend here is only mostly dead. There’s a big difference between mostly dead and all dead.” Miracle Max, “The Princess Bride.”

The USPTO has various reasons to declare patents and patent applications “abandoned.” The USPTO often classifies patents as abandoned for failure to pay maintenance fees. If you fail to respond to your patent application’s office communication (office action) in time, it will also go abandoned.

Petitions to revive abandoned patents

Don’t despair.  Many of these abandoned patents are initially only “mostly dead,” rather than “all dead. You can restore these “mostly dead” patents by promptly filing a petition to “revive.” Here, you have to pay the appropriate revival fee (and other fees due). You also have to fix any other problem that caused the abandonment in the first place.

The keyword here is “prompt.”  Here, the USPTO attempts to distinguish between “unintentional abandonment” and “intentional abandonment.”  As you might imagine, this can be a somewhat subjective determination. The USPTO typically considers both the length of the delay and the explanations of the circumstances.

You don’t want the USPTO deciding that your patent was “intentionally abandoned.” If they do this, it’s over. Your patent is legally now “all dead.” This is why it is essential to act promptly.

From a patent law perspective, unintentionally abandoned” is a tricky gray area. Under two years, a form statement such as “the entire delay was unintentional” will usually suffice. But the longer the delay, the more that this strains credibility. After two years, the USPTO will require you to provide an additional explanation. Unless this is really good, they will probably deny your petition to revive.

The general rule is thus that you should try to initiate the revival actions as quickly as possible. Fortunately, this is “quick” by legal standards, rather than “quick” by video gamer standards.

As a very rough and informal rule of thumb, petitions filed within about six months of abandonment almost always succeed. Petitions filed up to two years after abandonment can often also work (although the risk of rejection may increase).

Petitions to revive abandoned patent applications

In the case of patent applications, merely filing a petition to revive the abandoned patent application is not enough by itself. You also need to include a formal response to any office actions that were outstanding at the time the patent went abandoned.

How much does it cost?

The USPTO usually requires two types of fees to revive. First, they require payment of any fees due before the original abandonment. In the case of patent applications, this can include payment of any late fees, extra claim fees, or other fees. In the case of patents, this includes any maintenance fees that were previously due.

Then, the USPTO also requires an additional revival fee payment. If you had an abandoned patent application, they call this a “petition for revival of an abandoned application for a patent.” If you failed to pay the maintenance fee for a previously issued patent, they call this “Petition for the delayed payment of the fee for maintaining a patent in force.” Either way, the fees are the same, and these fees vary depending in if the USPTO considers you a micro entity, small entity, or large entity (everyone else). As of 2023, these revival fees are an additional $420, $840, or $2,100 depending on your status.

Beware the second anniversary

The two-year time period is a significant milestone for abandoned patents. If you can respond in less than two years, often USPTO computer system will automatically decide your petition. The automated system will often give you a quick decision, and it also tends to be less critical. After two years, the computer system will refuse to consider your petition. Instead, you must submit your request form to human examiners.  These human examiners tend to be slower and also more critical. 

Even after two years or more, the USPTO may accept your petition to revive. But here, the situation does become more problematic. The petitions office may require more of an explanation for the delay. The chances that the USPTO will deny your petition are substantially higher.

Note that “expired” patents – patents that have died because their full patent term (often 20 years from the filing date) is up, are “all dead.”  These are lifetime expired patents, and they are now public domain.