37 C.F.R. § 1.135
Abandonment for failure to reply within time period
(a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the application will become abandoned unless an Office action indicates otherwise.
(b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
(c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.
Notes of Decisions
Cited in 13
cases (2 in the last 5 years), 1970–2021 · leading case: Pfizer, Inc. v. Lee, 811 F.3d 466 (Fed. Cir. 2016).
Pfizer, Inc. v. Lee, 811 F.3d 466 (Fed. Cir. 2016). “Instead of the highly irregular action conjured by the panel majority—an action of uncertain propriety and unlikely responsiveness, an action that could well have backfired, see 37 C.F.R. 1.135(b) (an incomplete reply leads to abandonment of the application); MPEP § 711.”
Struthers Pat. Corp. v. Nestle Co., Inc., 558 F. Supp. 747 (D.N.J. 1981). “37 C.F.R. § 1.135 provides: § 135. Abandonment for failure to respond within time limit.”
Margolis v. Banner, 599 F.2d 435 (C.C.P.A. 1979). “He reasoned that since petitioners’ response to the second office action 9 failed to specify who was the prior inventor, as requested by the examiner, and since that failure was not inadvertent, the application became abandoned for failure to prosecute by virtue of 35 U.”
Exelixis, Inc. v. Kappos, 906 F. Supp. 2d 474 (E.D. Va. 2012). “See 37 C.F.R. § 1.135 . An RCE, which may consist of (but is not limited to) “an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability,” functions to continue the examination of…”
Acme High. Prods. Corp., Cross-Appellee v. The D. S. Brown Co. & Delmont D. Brown, Cross-Appellants, 431 F.2d 1074 (6th Cir. 1970). “§ 133 (1964) ; 37 C.F.R. § 1.135 (a). 3 In any event, prior to the abandonment of the parent application, on June 5, 1964, Crone filed a continuation-in-part application purporting to embody the same invention embodied in the parent.”
Chinsammy v. United States, 95 Fed. Cl. 21 (Fed. Cl. 2010). “”); 37 C.F.R. § 1.135 (a) (2010) (“Abandonment for failure to reply within time period.”
Mary Helen Sears v. Robert Gottschalk, Comm'r of Patents, 502 F.2d 122 (4th Cir. 1974). “§ 133 ; 37 C.F.R. § 1.135 . Patent applications abandoned by default may be revived, however, by a verified statement satisfying the Commissioner of Patents that “the delay was unavoidable.”
Eastman Kodak Co. v. Gerald J. Mossinghoff, Comm'r of Patents & Trademarks, 704 F.2d 1319 (4th Cir. 1983). “§ 133 (1976), and the Patent Office Rules of Practice, 37 C.F.R. § 1.135 (1982). 7 . The issue of whether a party abandoned a patent application which is related to the subject matter of an interference has been determined to be ancillary to priority.”
Star Fruits S.N.C. v. United States, 280 F. Supp. 2d 512 (E.D. Va. 2003). “§ 133 ; 37 C.F.R. § 1.135 . Failure to file a timely reply to an Office Action constitutes abandonment.”
New South Indus., Inc. v. Apache Grounding Corp., 666 F. Supp. 1067 (M.D. Tenn. 1987). “At the time of the PTO events at issue, 37 C.F.R. § 1.135 provided: (c) When action by the applicant is a bona fide attempt to advance the case to final action, and is substantially a complete response to the examiner’s action, but consideration of some matter or compliance with…”
Enzo Therapeutics, Inc. v. Yeda Rsch. & Dev. Co., 477 F. Supp. 2d 699 (E.D. Va. 2007). “§ 133 (emphasis added); see also 37 C.F.R. § 1.135 (2006) (“If an applicant of a patent application fails to reply within the time period provided under § 1.”
Currax Pharm. LLC v. OptiNose AS (Del. Ch. 2021). “53 See MPEP § 711; see also 37 C.F.R. §§ 1.135 , 1.138. 54 See MPEP § 711.”
— 37 C.F.R. § 1.135(b) — 1 case
Pfizer, Inc. v. Lee, 811 F.3d 466 (Fed. Cir. 2016). “Instead of the highly irregular action conjured by the panel majority—an action of uncertain propriety and unlikely responsiveness, an action that could well have backfired, see 37 C.F.R. 1.135(b) (an incomplete reply leads to abandonment of the application); MPEP § 711.”
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