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Author Topic: Can this expired PCT application enter USA?  (Read 4790 times)

Invention

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Can this expired PCT application enter USA?
« on: 05-13-11 at 01:50 am »

I submitted a PCT application on July 7th, 2006. The fees were paid.
I submitted an application online to USPTO on January 4th, 2009.
The latter claimed the priority of the former which should enter the USA around that time.
But I did not pay the fees.
Could I resurrect the application?
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JimIvey

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Re: Can this expired PCT application enter USA?
« Reply #1 on: 05-13-11 at 09:43 am »

The USPTO should have sent you a Notice to File Missing Parts, in which you'd be asked to pay the fees.  It should have a 2 month deadline to respond from its mailing date.  You can pay late fees for up to 4 additional months.

The Notice typically goes out within about 1-2 months of your filing.  So, the 2-month deadline should be coming up soon or may have just passed.  But you probably only need 1-2 months of extension to respond -- not too expensive, but 3rd and 4th months get expensive.

Regards.
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James D. Ivey
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khazzah

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Re: Can this expired PCT application enter USA?
« Reply #2 on: 05-13-11 at 10:39 am »

The USPTO should have sent you a Notice to File Missing Parts, in which you'd be asked to pay the fees.  It should have a 2 month deadline to respond from its mailing date.  You can pay late fees for up to 4 additional months.

Then after the time period for late fees has passed, the PTO will mail a Notice of Abandonment. There are procedures for reviving an abandoned application -- one for "unintentional" abandonment and another for "unavoidable" abandonment. Don't know which applies to your situation, since you didn't provide any facts about why you didn't pay the fees.
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Karen Hazzah
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Invention

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Re: Can this expired PCT application enter USA?
« Reply #3 on: 05-14-11 at 07:09 pm »

The application has been abandoned on 9/28/2009.
Because I do not have enough money to pay at that time.
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JimIvey

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Re: Can this expired PCT application enter USA?
« Reply #4 on: 05-14-11 at 07:56 pm »

Oh, duh!  I completely missed the year, 2009.  Just glossed over that detail.

If the delay in filing the "missing parts" was unintentional, you can revive the application as Karen indicated.

Regards.
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James D. Ivey
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khazzah

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Re: Can this expired PCT application enter USA?
« Reply #5 on: 05-14-11 at 09:06 pm »

If the delay in filing the "missing parts" was unintentional, you can revive the application as Karen indicated.

I don't think "no money" qualifies as unintentional.

MPEP 711.03(c)
Quote
A delay resulting from a deliberately chosen course of action on the part of the applicant does not become an "unintentional" delay within the meaning of 37 CFR 1.137(b) because:
(C) the applicant does not consider any patent to be of sufficient value to justify the financial expense of obtaining the patent;
(D) the applicant does not consider any patent to be of sufficient value to maintain an interest in obtaining the patent; or
(E) the applicant remains interested in eventually obtaining a patent, but simply seeks to defer patent fees and patent prosecution expenses.

Jim, am I missing something?
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Karen Hazzah
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JimIvey

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Re: Can this expired PCT application enter USA?
« Reply #6 on: 05-15-11 at 09:17 am »

Jim, am I missing something?

No, I was being kind.

I didn't want to completely foreclose the notion that the delay could have been unintentional.  Suppose the Notice sent the OP on a new fund-raising junket and, in the midst of the junket, forgot about the application and only recently remembered it.

The bottom line is that the application can be revived if it can be shown (or honestly stated) that the delay was unintentional.  If the OP actually decided to not file missing parts and intentionally allowed the case to go abandoned for lack of money (or any other reason), it can't be revived.  I don't want to go so far as to say anything posted here has conclusively proved one or the other.

Regards.
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James D. Ivey
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khazzah

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Re: Can this expired PCT application enter USA?
« Reply #7 on: 05-15-11 at 11:26 am »

I didn't want to completely foreclose the notion that the delay could have been unintentional. 

Fair enough. I agree there aren't enough facts to conclusively say one way or the other. That said, I though it was worth pointing out in this thread several common situations which are not "unintentional," as that word is used in the relevant regulation.
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Karen Hazzah
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Invention

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Re: Can this expired PCT application enter USA?
« Reply #8 on: 05-17-11 at 12:12 am »

I have not got the PAIR key yet, so I could not know the exact details of the application, including how much fees I should pay.
Also I do not know about the patent regulation of the USA.
Can this situation be called unintentional?
What kind of situation on earth is called unintentional? Please explain it simply and give some examples.
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klaviernista

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Re: Can this expired PCT application enter USA?
« Reply #9 on: 05-17-11 at 06:04 am »

The USPTO should have sent you a Notice to File Missing Parts, in which you'd be asked to pay the fees.  It should have a 2 month deadline to respond from its mailing date.  You can pay late fees for up to 4 additional months.

Minor correction, which I am sure you know.  Applicants have have 2 months to respond to a NTFMP, and can extend up to an adidtional 5 months (not 4). 

Best,

klav
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khazzah

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Re: Can this expired PCT application enter USA?
« Reply #10 on: 05-17-11 at 08:38 am »

I have not got the PAIR key yet, so I could not know the exact details of the application, including how much fees I should pay.
Also I do not know about the patent regulation of the USA.
Can this situation be called unintentional?
What kind of situation on earth is called unintentional? Please explain it simply and give some examples.

Read MPEP 711.03(c) for common situations that are *not* unintentional abandonment.

http://www.uspto.gov/web/offices/pac/mpep/documents/0700_711_03_c.htm
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Karen Hazzah
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JimIvey

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Re: Can this expired PCT application enter USA?
« Reply #11 on: 05-17-11 at 10:12 am »

Minor correction, which I am sure you know.  Applicants have have 2 months to respond to a NTFMP, and can extend up to an adidtional 5 months (not 4). 

I know there's a statutory limit of 6 months to respond to an Office Action on the merits.  Does the same 6-month statutory limit not apply to NTFMP?

Regards.
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MLM

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Re: Can this expired PCT application enter USA?
« Reply #12 on: 05-17-11 at 01:08 pm »

Minor correction, which I am sure you know.  Applicants have have 2 months to respond to a NTFMP, and can extend up to an adidtional 5 months (not 4). 

I know there's a statutory limit of 6 months to respond to an Office Action on the merits.  Does the same 6-month statutory limit not apply to NTFMP?

Regards.

The 2-month period for reply to a NTFMP is non-statutory (as opposed to shortened statutory). Therefore, a five-month extension is available under rule 1.136(a). See MPEP 710.02(d).
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