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[JasonR]

I misunderstood some of my examiner's comments in his FINAL Office Action.  All my claims were rejected or objected to.  I thought it was not worth responding to keep my application alive, and nearly 6 months have gone by.  I did not realize that a claim being objected to does not necessarily mean it's going to be rejected.  A closer inspection revealed that the few claims that were objected to (all dependent) would be allowed subject matter if rewritted as primary claims.  I don't know if that means they would be allowed for further review or if they would definitely be accepted.  Anyhow, I'm almost out of time and I can't afford to pay the cost of extension fees and an RCE at this time, and in a few days my patent application will go abandoned.

My only hope now is that I can continue pitching my idea with nondisclosure agreements and have an interested party carry on the patent process.  Due to my above reason for mistakenly thinking my patent had no chance, would I qualify for a Petition to Revive Abandoned Application?  I guess I wouldn't qualify for the unavoidable type (37 CFR 1.17(l)), but would I at least qualify for the unintentional type (37 CFR 1.17(m))

[bleedingpen]

Well the USPTO will revive your application if you pay the fee, regardless of the facts.

But, no you shouldn't qualify for a petition to revive because you realized your error before the final extension of time expired and then chose not to respond. 

[khazzah]

Anyhow, I'm almost out of time and I can't afford to pay the cost of extension fees and an RCE at this time, and in a few days my patent application will go abandoned.

I guess I wouldn't qualify for the unavoidable type (37 CFR 1.17(l)), but would I at least qualify for the unintentional type (37 CFR 1.17(m))

The PTO will likely grant your petition for Unintentional -- but only because the filing papers require you to state that the delay was unintentional (as that term is interpreted by the law). And the PTO doesn't often look beyond this naked assertion.

However, under the facts you gave, the abandonment was quite intentional. See MPEP 711.03(c):

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:

(A) the applicant does not consider the claims to be patentable over the references relied upon in an outstanding Office action;
(B) the applicant does not consider the allowed or patentable claims to be of sufficient breadth or scope to justify the financial expense of obtaining a patent;
(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.

An improper filing for revival could certainly lead to problems when the patent is asserted. Under current case law, the patent would probably not be invalidated, but could be found unenforceable due to inequitable conduct, which is even worse than invalidity in terms of damages and consequences.

[klaviernista]

However, under the facts you gave, the abandonment was quite intentional. See MPEP 711.03(c):

Agreed.  In fact, there are cases on this very point.  Namely In re Application of G and In re Maldague.  Here is the relevant quote from the MPEP:

"Where the applicant deliberately permits an appli­cation to become abandoned (e.g., due to a conclusion that the claims are unpatentable, that a rejection in an Office action cannot be overcome, or that the inven­tion lacks sufficient commercial value to justify con­tinued prosecution), the abandonment of such application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as “unintentional” within the meaning of 37 CFR 1.137(b). See In re Application of G, 11 USPQ2d 1378, 1380 (Comm’r Pat. 1989). An intentional course of action is not rendered uninten­tional when, upon reconsideration, the applicant changes his or her mind as to the course of action that should have been taken. See In re Maldague, 10 USPQ2d 1477, 1478 (Comm’r Pat. 1988)."

[klaviernista]

Jason:

One possible avenue to try.  It is a long shot, but it might work.

Call the examiner and explain your situation.  See if he/she will agree to amend the claims by examiner's amendment and send out a supplemental action (i.e., a notice of allowance with an examiners amendment) before the expiration of the response deadline.  If the only issues raised in the Final OA are objections and the case would be allowable if those objections were overcome, you might be able to convince the examiner to make the necessary amendment(s) for you.  This is particularly true as it appears that you are a pro se applicant, and many examiners will go out of their way to help pro se applicants out (within the confines of the PTO rules, of course).  The Examiner would also get a count for the notice of allowance, which means he has another real incentive to help you.

Good luck.

Klav

[NJ Patent1]

khazza:  Can you expound?  I'm a patent owner and my patent is held invalid.  I get no damages.  I'm a patent owner and my patent is unenforceable.  I get no damages.  Were you suggesting that if my (patent owner's) inequitable conduct is so egregious the case may be found "exceptional" and my defendant gets fees, making the consequences "worse"?   

[rmr236]

Call the examiner and explain your situation.  See if he/she will agree to amend the claims by examiner's amendment and send out a supplemental action (i.e., a notice of allowance with an examiners amendment) before the expiration of the response deadline.  If the only issues raised in the Final OA are objections and the case would be allowable if those objections were overcome, you might be able to convince the examiner to make the necessary amendment(s) for you. 

Only drawback here is that he will still need to pay the EOT fee (via deposit account) to have the amendment entered.

[NJ Patent1]

rm6236:  As I undersantd the OP, any action other than abandonment will require EOT fees to maintain pendency.  No? 

[klaviernista]

rm6236:  As I undersantd the OP, any action other than abandonment will require EOT fees to maintain pendency.  No? 

I think that is true with respect to applicant initiated actions.  E.g., some form of paper or other response to the Final OA.  I am not certain whether an EOT would be required if the OP managed to convince the examiner via a telephone interview to issue a supplemental action, such as a notice of allowance with an examiner's amendment.  I might be recalling the statutes incorrectly, but my understanding is that they set a shortened statutroy period for reply which may be extended under 1.136 by paying a required fee.  An supplemental action issued by the Office is not a reply, and thus would require no fee (I think).  One thing I would make sure of, however, is that the examiner sets a new time period for reply to the supplemental action. 

EDIT:  As noted below, my comments here are obviously wrong.  While I'm generally confident in what I post here, I do occassionally get a rule incorrect.  Particularly when I do not take the time to actually look up the answer.  Might have to bring the scarlet S back.

[khazzah]

khazza:  Can you expound?  I'm a patent owner and my patent is held invalid.  I get no damages.  I'm a patent owner and my patent is unenforceable.  I get no damages.  Were you suggesting that if my (patent owner's) inequitable conduct is so egregious the case may be found "exceptional" and my defendant gets fees, making the consequences "worse"?   

NJPatent1, I was indeed referring to an award of attorney fees, which is sometimes a consequence of a finding of an inequitable conduct.  In that sense, IC is "worse" then mere invalidity.

[lazyexaminer]

rm6236:  As I undersantd the OP, any action other than abandonment will require EOT fees to maintain pendency.  No? 

I think that is true with respect to applicant initiated actions.  E.g., some form of paper or other response to the Final OA.  I am not certain whether an EOT would be required if the OP managed to convince the examiner via a telephone interview to issue a supplemental action, such as a notice of allowance with an examiner's amendment.  I might be recalling the statutes incorrectly, but my understanding is that they set a shortened statutroy period for reply which may be extended under 1.136 by paying a required fee.  An supplemental action issued by the Office is not a reply, and thus would require no fee (I think).  One thing I would make sure of, however, is that the examiner sets a new time period for reply to the supplemental action. 

See MPEP 706.07(f)

(G) Where a complete first reply to a final Office action has not been filed within 2 months of the final Office action, applicant's authorization to make an amendment to place the application in condition for allowance must be made either within the 3 month shortened statutory period or within an extended period for reply that has been petitioned and paid for by applicant pursuant to 37 CFR 1.136(a). However, an examiner's amendment correcting only formal matters which are identified for the first time after a reply is made to a final Office action would not require any extension fee, since the reply to the final Office action put the application in condition for allowance except for the correction of formal matters, the correction of which had not yet been required by the examiner.

[klaviernista]

See MPEP 706.07(f)

(G) Where a complete first reply to a final Office action has not been filed within 2 months of the final Office action, applicant's authorization to make an amendment to place the application in condition for allowance must be made either within the 3 month shortened statutory period or within an extended period for reply that has been petitioned and paid for by applicant pursuant to 37 CFR 1.136(a). However, an examiner's amendment correcting only formal matters which are identified for the first time after a reply is made to a final Office action would not require any extension fee, since the reply to the final Office action put the application in condition for allowance except for the correction of formal matters, the correction of which had not yet been required by the examiner.

Ah, I stand corrected.  Thanks for clarifying the issue.