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711.01 Express or Formal Abandonment [R-2] - 700 Examination of Applications
711.01 Express or Formal Abandonment [R-2]
The applicant (acquiesced in by an assignee of record), or the attorney/agent of record, if any, can sign an express abandonment. It is imperative that the attorney or agent of record exercise every precaution in ascertaining that the abandonment of the application is in accordance with the desires and best interests of the applicant prior to signing a letter of express abandonment of a patent application. Moreover, special care should be taken to ensure that the appropriate application is correctly identified in the letter of abandonment.
A letter of abandonment properly signed becomes effective when an appropriate official of the Office takes action thereon. When so recognized, the date of abandonment may be the date of recognition or a different date if so specified in the letter itself. For example, where a continuing application is filed with a request to abandon the prior application as of the filing date accorded the continuing application, the date of the abandonment of the prior application will be in accordance with the request once it is recognized.
Action in recognition of an express abandonment may take the form of an acknowledgment by the examiner or by the Publishing Division of the receipt of the express abandonment, indicating that it is in compliance with 37 CFR 1.138.
It is suggested that divisional applications be reviewed before filing to ascertain whether the prior application should be abandoned. Care should be exercised in situations such as these as the Office looks on express abandonments as acts of deliberation, intentionally performed.
Applications may be expressly abandoned as provided for in 37 CFR 1.138. When a letter expressly abandoning an application (not in issue) is received, the examiner should acknowledge receipt thereof, and indicate whether it does or does not comply with the requirements of 37 CFR 1.138.
The filing of a request for a continued prosecution application (CPA) under 37 CFR 1.53(d) ** is considered to be a request to expressly abandon the prior application as of the filing date granted the continuing application.
Form paragraph 7.88 may be used to acknowledge proper express abandonments.
**>¶ 7.88 Acknowledge Express Abandonment
This application is abandoned in view of the letter of express abandonment complying with 37 CFR 1.138 filed on [1].
Examiner Note
1. With the exception of express abandonments resulting from the filing of a continued prosecution application under 37 CFR 1.53(d) or when filed with a continuing application, all express abandonments must be signed by all of the inventors, the owners of the entire interest, or an attorney or agent of record.
2. The provisions of 37 CFR 1.34 do not apply to express abandonments unless filed with a continuing application.
<If the letter expressly abandoning the application does comply with 37 CFR 1.138, the examiner should respond by using a "Notice of Abandonment" form PTO-1432, and by checking the appropriate box(es). The examiner's signature should appear at the bottom of the form. If such a letter does not comply with the requirements of 37 CFR 1.138, a fully explanatory letter should be sent.
Form paragraph 7.89 may be used to acknowledge improper express abandonments.
¶ 7.89 Letter of Express Abandonment, Improper
The letter filed on [1] does not comply with the requirements of 37 CFR 1.138, and therefore is not a proper letter of express abandonment.
Examiner Note
The reasons why the letter fails to comply with 37 CFR 1.138 must be fully explained, e.g., the individual signing the express abandonment is not of record. See the "Examiner Note" of form paragraph 7.88.A letter of express abandonment which is not timely filed (because it was not filed within the period for reply), is not acceptable to expressly abandon the application. The letter of express abandonment should be endorsed on the file wrapper and placed in the application file but not formally entered. >For Image File Wrapper (IFW) processing, see IFW Manual.<
The application should be pulled for abandonment after expiration of the *>maximum< permitted period for reply (see MPEP § 711.04(a)) and applicant notified of the abandonment for failure to reply within the statutory period. See MPEP § 711.02 and § 711.04(c).
In view of the doctrine set forth in Ex parte Lasscell, 1884 C.D. 66, 29 O.G. 861 (Comm'r Pat. 1884), an amendment ** canceling all of the claims, even though said amendment is signed by the applicant himself/herself and the assignee, is not an express abandonment. >The Office, however, will not enter any amendment that would cancel all of the claims in an application without presenting any new or substitute claims. See Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001).< Such an amendment is regarded as nonresponsive and **>is not a bona fide attempt to advance the application to final action. The practice set forth in 37 CFR 1.135(c) does not apply to such amendment. Applicant< should be notified as explained in MPEP § 714.03 to § 714.05.
An attorney or agent not of record in an application may file a withdrawal of an appeal under 37 CFR 1.34(a) except in those instances where such withdrawal would result in abandonment of the application. In such instances the withdrawal of appeal is in fact an express abandonment.
>I. < AFTER NOTICE OF ALLOWANCE
If a letter of express abandonment is being submitted in an allowed application, the express abandonment should be accompanied by a petition to withdraw from issue under 37 CFR 1.313 and the fee set forth in 37 CFR 1.17(h). Also see MPEP § 1308. The express abandonment may not be recognized by the Office unless it is actually received by appropriate officials in time to **>withdraw the application from< issue. 37 CFR 1.313 provides that an allowed application will not be withdrawn from issue except by approval of the *>Director of the USPTO<, and that after the issue fee has been paid, it will not be withdrawn upon petition by the applicant for any reason except those reasons listed in 37 CFR 1.313(c), which include express abandonment of the application. An application may be withdrawn from issue for express abandonment of the application in favor of a continuing application. The petition under 37 CFR 1.313 accompanied by the petition fee should be addressed to the Office of Petitions. If the petition and the letter of abandonment are received by appropriate officials in sufficient time to act on the petition and remove the application from the issue process, the letter of abandonment will be acknowledged by the Office of Patent Publication after the petition is granted. >Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be:
(A) mailed to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450;
(B) transmitted by facsimile transmission to (703) 872-9306; or
(C) hand-carried to the Office of Petitions, Crystal Plaza 4, 2201 South Clark Place, Room 3C23, Arlington, VA 22202.
Applicants are strongly encouraged to hand-carry the petition to the Office of Petitions to allow sufficient time to process the petition and if the petition can be granted, withdraw the application from issue.<
See MPEP § 711.05 and § 1308. In cases where 37 CFR 1.313 precludes giving effect to an express abandonment, the appropriate remedy is a petition, with fee, under 37 CFR 1.183, showing an extraordinary situation where justice requires suspension of 37 CFR 1.313.
>II. < TO AVOID PUBLICATION OF APPLICATION
A petition under 37 CFR 1.138(c) for express abandonment to avoid publication of the application (see 37 CFR 1.211(a)(1)) accompanied by the petition fee set forth in 37 CFR 1.17(h) **>may be:
(A) mailed to Mail Stop Express Abandonment, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450;
(B) transmitted by facsimile transmission to the Pre-Grant Publication Division at (703) 305-8568; or
(C) hand-carried to the Pre-Grant Publication Division, 2231 Crystal Drive, Room 905, Arlington, VA 22202.
Because a petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized and acted on by the Pre-Grant Publication Division in sufficient time to avoid publication, applicants should use either method (B) or (C) in all instances where the projected publication date is less than 3 months from the date of the petition.< This will increase the chance of such petition being received by the appropriate officials in sufficient time to recognize the abandonment and remove the application from the publication process. The petition will be granted when it is recognized in sufficient time to avoid publication of the application. The petition will be denied when it is not recognized in time to avoid publication. Generally, a petition under 37 CFR 1.138(c) will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication. It is unlikely that a petition filed within four weeks of the projected date of publication will be effective to avoid publication. Also note that withdrawal of an application from issue after payment of the issue fee may not be effective to avoid publication of an application under 35 U.S.C. 122(b). See 37 CFR 1.313(d).
APPLICATION IN INTERFERENCE
A written declaration of abandonment of the application signed only by an attorney or agent of record, when the application sought to be expressly or formally abandoned is the subject of an interference proceeding under 35 U.S.C. 135, is not effective to terminate the interference, and will not be considered until after ex parte prosecution is resumed. In order to be effective to terminate an interference proceeding, an abandonment of the application must be signed by the inventor with the written consent of the assignee where there has been an assignment.
>IV. < FORM FOR FILING EXPRESS ABANDONMENT
** >Copies of the appropriate forms< for use in filing an express abandonment under 37 CFR 1.138 in favor of a continuing application >(form PTO/SB/24)< or to avoid publication of the application *>(form PTO/SB/24A) are< reproduced below.
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