37 C.F.R. § 1.137

Revival of abandoned application, or terminated or limited reexamination prosecution

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(a) Revival on the basis of unintentional delay. If the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to this section to revive an abandoned application or a reexamination prosecution terminated under § 1.550(d) or § 1.957(b) or limited under § 1.957(c).

(b) Petition requirements. A grantable petition pursuant to this section must be accompanied by:

(1) The reply required to the outstanding Office action or notice, unless previously filed;

(2) The petition fee as set forth in § 1.17(m);

(3) Any terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section; and

(4) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

(c) Reply. In an application abandoned under § 1.57(a), the reply must include a copy of the specification and any drawings of the previously filed application. In an application or patent abandoned for failure to pay the issue fee or any portion thereof, the required reply must include payment of the issue fee or any outstanding balance. In an application abandoned for failure to pay the publication fee, the required reply must include payment of the publication fee. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In a nonprovisional utility or plant application filed on or after June 8, 1995, abandoned after the close of prosecution as defined in § 1.114(b), the required reply may also be met by the filing of a request for continued examination in compliance with § 1.114.

(d) Terminal disclaimer. (1) Any petition to revive pursuant to this section in a design application must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application. Any petition to revive pursuant to this section in either a utility or plant application filed before June 8, 1995, must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the lesser of:

(i) The period of abandonment of the application; or

(ii) The period extending beyond twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s) under 35 U.S.C. 120, 121, 365(c), or 386(c) from the date on which the earliest such application was filed.

(2) Any terminal disclaimer pursuant to paragraph (d)(1) of this section must also apply to any patent granted on a continuing utility or plant application filed before June 8, 1995, or a continuing design application, that contains a specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to the application for which revival is sought.

(3) The provisions of paragraph (d)(1) of this section do not apply to applications for which revival is sought solely for purposes of copendency with a utility or plant application filed on or after June 8, 1995, to reissue applications, or to reexamination proceedings.

(e) Request for reconsideration. Any request for reconsideration or review of a decision refusing to revive an abandoned application, or a terminated or limited reexamination prosecution, upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under:

(1) The provisions of § 1.136 for an abandoned application;

(2) The provisions of § 1.550(c) for a terminated ex parte reexamination prosecution, where the ex parte reexamination was filed under § 1.510; or

(3) The provisions of § 1.956 for a terminated inter partes reexamination prosecution or an inter partes reexamination limited as to further prosecution, where the inter partes reexamination was filed under § 1.913.

(f) Abandonment for failure to notify the Office of a foreign filing. A nonprovisional application abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the filing of an application in a foreign country or under a multinational treaty that requires publication of applications eighteen months after filing, may be revived pursuant to this section. The reply requirement of paragraph (c) of this section is met by the notification of such filing in a foreign country or under a multinational treaty, but the filing of a petition under this section will not operate to stay any period for reply that may be running against the application.

(g) Provisional applications. A provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to this section. Subject to the provisions of 35 U.S.C. 119(e)(3) and § 1.7(b), a provisional application will not be regarded as pending after twelve months from its filing date under any circumstances.

[78 FR 62405, Oct. 21, 2013, as amended at 80 FR 17963, Apr. 2, 2015]

Notes of Decisions

Cited in 46 cases (8 in the last 5 years), 1974–2025 · leading case: Aristocrat Technologies Australia PTY Ltd. v. International Game Technology and IGT

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Aristocrat Technologies Australia PTY Ltd. v. International Game Technology and IGT (2007) cand · cites it 26× “137(b) requesting that the application be revived must meet the criteria in the recent revision of 37 CFR 1.137. See 62 Fed.Reg. 53131 (October 10, 1997); 1203 Off.”

Enzo Therapeutics, Inc. v. Yeda Research & Development Co. (2007) vaed · cites it 34× “For the reasons stated herein, the Court GRANTS Enzo’s motion, REMANDS this matter to the Board so that Enzo may have an opportunity to submit new evidence on the question of unintentional abandonment under 37 C.F.R. § 1.137 (b)(3), as required by principles of equity and due…”

Aristocrat Technologies Australia Pty Ltd. v. International Game Technology & IGT (2008) cafc · cites it 3× “It is unclear when Aristocrat received the PTO’s denial, 1 but it later filed a petition to revive the '215 patent application under 37 C.F.R. § 1.137 (b), claiming that the delay in paying the na *660 tional stage filing fee was “unintentional.”

Exela Pharma Sciences, LLC v. Lee (2015) cafc · cites it 6× “Exela argued that the PTO erred in applying its general revival regulation, 37 C.F.R. §1.137 , which provides: Revival of abandoned application, terminated reexamination proceeding, or lapsed patent.”

Astech International, LLC v. Husick (2009) paed · cites it 4× “USPTO, Decision on Petition for Revival Under 37 CFR 1.137(a) and 37 CFR 1.137(b) (Dec.”

Jerold B. Smith and the Cardinal Corporation v. Gerald J. Mossinghoff, Commissioner of Patents and Trademarks (1982) cadc · cites it 4× “1 Abandonment was finally determined by a decision of the Deputy Assistant Commissioner of the PTO dated September 17, 1979, responding to a renewed petition un *535 der 37 CFR 1.137 2 to revive the application.”

Freshub, Inc. v. amazon.com, Inc. (2024) cafc · cites it 3× “1 On January 20, 2017, counsel for Ikan petitioned the PTO to revive the ’291 application under 37 C.F.R. § 1.137 (a). J.A. 17079–80. Reflecting a prerequisite to re- vival, the pre-printed PTO form for the petition, referring to the period reaching back to the due date of the…”

Avanir Pharmaceuticals, Inc. v. Actavis South Atlantic LLC (2013) ded · cites it 7× “l) — due to the terminal disclaimer Plaintiffs should have filed (but did not) under 37 C.F.R. § 1.137 (d)(2). In other words, Defendants assert that, in exchange for revival of the abandoned '053 application, which would allow Plaintiffs to get behind certain prior art,…”

Burandt v. Dudas (2008) cafc · cites it 2× “Moreover, both cases concerned abandoned patent applications pursuant to 37 C.F.R. § 1.137 , rather than reinstatement of expired patents due to nonpayment of maintenance fees pursuant to 37 C.”

Shila Morganroth v. Donald J. Quigg, Honorable, Commissioner of Patents and Trademarks (1989) cafc · cites it 2× “” Eight months after the entry of the district court’s judgment, the appellant filed with the Commissioner a petition to “revive this unintentionally abandoned application,” pursuant to 37 C.F.R. § 1.137 (b), which states, in pertinent part: An application unintentionally…”

Margolis v. Banner (1979) ccpa · cites it 2× “37 CFR 1.137 provides for revival of an abandoned application as follows: An application abandoned for failure to prosecute may be revived as a pending application if it is shown to the satisfaction of the Commissioner that the delay was unavoidable.”

Mary Helen Sears v. Robert Gottschalk, Commissioner of Patents (1974) ca4 · cites it 2× “§ 133 and 37 C.F.R. § 1.137 permit the revival of an abandoned application under certain circumstances.”

Show all 46 citing cases →

— 37 C.F.R. § 1.137(a) — 9 cases

Astech International, LLC v. Husick (2009) paed “USPTO, Decision on Petition for Revival Under 37 CFR 1.137(a) and 37 CFR 1.137(b) (Dec.”

Aristocrat Technologies Australia PTY Ltd. v. International Game Technology and IGT (2007) cand “137(b) requesting that the application be revived must meet the criteria in the recent revision of 37 CFR 1.137. See 62 Fed.Reg. 53131 (October 10, 1997); 1203 Off.”

Aristocrat Technologies Australia Pty Ltd. v. International Game Technology & IGT (2008) cafc “It is unclear when Aristocrat received the PTO’s denial, 1 but it later filed a petition to revive the '215 patent application under 37 C.F.R. § 1.137 (b), claiming that the delay in paying the na *660 tional stage filing fee was “unintentional.”

Enzo Therapeutics, Inc. v. Yeda Research & Development Co. (2007) vaed “For the reasons stated herein, the Court GRANTS Enzo’s motion, REMANDS this matter to the Board so that Enzo may have an opportunity to submit new evidence on the question of unintentional abandonment under 37 C.F.R. § 1.137 (b)(3), as required by principles of equity and due…”

Freshub, Inc. v. amazon.com, Inc. (2024) cafc “1 On January 20, 2017, counsel for Ikan petitioned the PTO to revive the ’291 application under 37 C.F.R. § 1.137 (a). J.A. 17079–80. Reflecting a prerequisite to re- vival, the pre-printed PTO form for the petition, referring to the period reaching back to the due date of the…”

— 37 C.F.R. § 1.137(b) — 9 cases

Astech International, LLC v. Husick (2009) paed “USPTO, Decision on Petition for Revival Under 37 CFR 1.137(a) and 37 CFR 1.137(b) (Dec.”

Adamasu v. Gifford, Krass, Groh, Sprinkle, Anderson & Citkowski, P.C. (2005) mied

— 37 C.F.R. § 1.137(b)(3) — 1 case

New York University v. Autodesk, Inc. (2007) nysd

— 37 C.F.R. § 1.137(c) — 1 case

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