America-Israel Patent Law Blog

It’s not unusual for a patent applicant to lose interest in an application. I see this most often in the context of failed clinical trials for a new drug; without a product to protect, there’s usually no reason to continue to pursue patent protection for that product.  But there can be other reasons why applicants lose interest in a case. 

When this happens, practitioners typically don’t actively abandon the application, but simply don’t respond to any outstanding matters from the patent office.  And then they wait for a notice of abandonment. 

Sometimes, of course, the failure to respond wasn’t planned, but was due to an oversight on someone’s part, such as something didn’t get docketed, or something was docketed with the wrong date, and a deadline was missed.  And then the receipt of an unexpected notice of abandonment causes heart palpitations and a spike in blood pressure, among other things.    

Some jurisdictions are nicer than others about helping applicants avoid abandonments.  The practice in Israel is that, in most instances, if a maximally extended deadline is approaching during patent prosecution, the ILPTO sends a notice noting that the deadline is approaching, giving the applicant an additional month to respond (provided all extension fees are paid by the time the response is filed). This is an applicant-friendly approach, since it serves as an additional check, beyond a firm’s own docketing practices, to help prevent unintended abandonments.  And if the applicant plans to abandon the application, the notice can be ignored.

The USPTO, at least until now, has been not been as applicant-friendly.  The usual pattern has been for the maximally extended date to pass, and then for the USPTO to send out a notice of abandonment within a few weeks thereafter.  If the abandonment was unintentional, this gives the applicant notice so that the applicant can petition to revive the application, but it doesn’t give the applicant any additional reminders to help prevent the abandonment. 

In one way, the USPTO has even been worse: sometimes, after the drop-dead date has passed, and before a notice of abandonment has been mailed, an examiner will call and say, “Hey, did you know your application went abandoned last week?”  Practitioners hate those calls, because a record of the call will go in the file history, and now it’s clearly established when the practitioner had notice of the abandonment.

Which is why I was surprised yesterday to receive a call from an examiner a few days BEFORE a drop-dead date.  We’re aware of the deadline and planning to respond, and have been delaying the response for various reasons, but the warning was appreciated. 

Then I called a colleague to share my story, and he said a similar thing happened to him last week: a pre-abandonment call from a USPTO examiner.

Which leads me to wonder: has the USPTO changed its policy?  And if so, why?