Intellectual Property Forum

Patents => Patent Filing and Prosecution => Topic started by: Schmicka on 11-09-17 at 11:34 am

Title: Paid Notice of Appeal Fee, Forgot to File Form
Post by: Schmicka on 11-09-17 at 11:34 am
Hi everyone, I'm new here and have a question. We filed a Pre-Appeal Request for Review on the final 6 month deadline after a Final Action. We paid the Notice of Appeal fee and the three extensions of time but forgot to file the actual Notice of Appeal form (don't ask).

We received a notice that the Pre-Appeal Request won't be reviewed because we didn't file the Notice of Appeal. Okay, fine. My question, however, is whether I have now abandoned the application. Do I have to submit the petition to revive? Or is there some other mechanism to overcome this problem of not having filed the form?
Title: Re: Paid Notice of Appeal Fee, Forgot to File Form
Post by: lazyexaminer on 11-09-17 at 11:51 am
I do not know the answer. But 37 CFR 41.31(a)(1) says: Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in 41.20(b)(1)  within the time period provided under 1.134  of this title for reply.

You didn't file the notice of appeal, so you didn't really meet the requirements and have not actually appealed, according to the rule. Since you didn't appeal, you did not file a proper response within the time period so you are in fact abandoned and would need to revive.

Again, I don't know if this is the right answer, but this answer follows from the rule IMO.
Title: Re: Paid Notice of Appeal Fee, Forgot to File Form
Post by: still_learnin on 11-09-17 at 12:06 pm
I agree that the application has in fact gone abandoned, as a matter of law.

As for filing the petition to revive, I know some attorneys who insist on waiting for a notice of abandonment from the USPTO before filing the petition, out of concern that the PTO could get "confused" in processing a revival petition when their internal database doesn't say the application is abandoned.
Title: Re: Paid Notice of Appeal Fee, Forgot to File Form
Post by: bluerogue on 11-09-17 at 12:08 pm
As for filing the petition to revive, I know some attorneys who insist on waiting for a notice of abandonment from the USPTO before filing the petition, out of concern that the PTO could get "confused" in processing a revival petition when their internal database doesn't say the application is abandoned.

I have had an application that filed a petition to revive before I sent out the notice of abandonment.  There was no issue with the petition being processed.
Title: Re: Paid Notice of Appeal Fee, Forgot to File Form
Post by: lazyexaminer on 11-09-17 at 01:05 pm
As for filing the petition to revive, I know some attorneys who insist on waiting for a notice of abandonment from the USPTO before filing the petition, out of concern that the PTO could get "confused" in processing a revival petition when their internal database doesn't say the application is abandoned.

I have had an application that filed a petition to revive before I sent out the notice of abandonment.  There was no issue with the petition being processed.

Yeah I've seen petitions filed the day after the 6 month date and have never personally seen a problem. I have no doubt that someone somewhere had things messed up by this situation though. The system doesn't always like when things are done out of expected order, though it's usually easily fixed.
Title: Re: Paid Notice of Appeal Fee, Forgot to File Form
Post by: Schmicka on 11-09-17 at 03:21 pm
Thanks everyone!