March 2020

USPTO Increasing Burden on Petitioners in Connection with Petitions to Excuse Delay

The United States Patent and Trademark Office ("USPTO") is increasing the burden on applicants and patent owners when attempting to rectify certain filing delays.

The USPTO rules allow for the filing of a petition to excuse delay in: 1) revival of an abandoned patent application; 2) payment of maintenance fee; and 3) filing of a priority claim. Each of these petitions requires a statement that the entire delay was unintentional. The rules also provide that the Director may require additional information where there is a question whether the delay was unintentional.

Prior to a recently published rule clarification, the USPTO usually relied upon the duty of candor and good faith and accepted the statement that the entire delay was unintentional without requiring further information because the applicant or patentee is obligated to inquire into the underlying facts and circumstances when making this statement. The USPTO regularly granted these petitions based solely on the statement, without requiring any additional information.

The USPTO has recently published a clarification to the rules as they pertain to these petitions. For any petition decided on or after March 2, 2020, the USPTO will require additional information regarding the delay. Accordingly, any applicant or patentee filing: 1) a petition to revive an abandoned application more than two years after the date of abandonment; 2) a petition to accept a delayed maintenance fee more than two years after the date of expiration for nonpayment of a maintenance fee; or 3) a petition to accept a delayed priority claim more than two years after the due date of the priority claim, will be required to provide an additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. The mere statement that the delay was unintentional, while still required, will no longer be sufficient.

This practice clarification from the USPTO highlights the importance of careful docketing and due date monitoring for both patent applications and issued patents.