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Patent Abandonment: Why It Matters

By January 3, 2022January 4th, 2022No Comments

When inventors, patent lawyers, and IP teams talk about patent abandonment, there are multiple practices they could be referring to. A patent or patent application can be abandoned at multiple points during its lifetime.

Often, this abandonment is strategic. Gaining and maintaining a patent is expensive; if the commercial potential is not enough to cover USPTO fees and legal expenses, a patent may be abandoned. However, abandonment may also simply be an oversight. Regardless of why a patent was abandoned, this topic should be of interest to innovative businesses. Once a patent is abandoned, the technology is no longer protected from competitors.

What is an abandoned patent?

When an inventor is granted a patent, they have exclusive rights to the protected technology for 20 years. However, the USPTO requires the assignee to pay maintenance fees throughout the life of the patent. If the assignee fails to do so, they essentially abandon the patent and, therefore, the protection offered by the patent.

After a patent is abandoned in this way, it is possible to “revive” the patent. The assignee must pay their maintenance fee as well as a petition and petition fee. This is only an option if the petitioner states the patent abandonment was unintentional. This process becomes more difficult more than two years after abandonment, when the USPTO begins to doubt that the abandonment was unintentional.

Abandoning a Patent Application

There are multiple ways a patent application can be abandoned. The first leaves no room for question whether the abandonment was intentional or not. “Express abandonment” occurs when the applicant requests to abandon their patent application with a written statement. “Abandonment for failure to reply within time period” is less cut and dry. This means that the applicant did not reply to a notice from the USPTO, or failed to pay the issuance fee, in a timely manner. Much like failing to pay a maintenance fee, this type of abandonment can be reversed with a declaration stating the delay was unintentional. If the declaration is submitted more than two years after the initial patent abandonment, the USPTO may ask for more information.

Patent applications are published 18 months after their earliest priority date, unless the applicant requests otherwise. This is true whether the application is granted or abandoned. In fact, according to recent research, “the USPTO cites abandoned patent applications more often than issued patents.” This detail is important, because an inventor may, without meaning to, create an invention disclosure with no legal protection. On the other hand, a competitor can now utilize the technology within the published application without infringing on a patent.

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