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I unintentionally abandoned my non-provisional patent application because I ended up in a still-pending legal dispute with the attorney who filed that application on my behalf (I since have filed a Revocation of Power of Attorney form). By the time I understood what was going on with the application, it was given an "abandoned" status by the USPTO. Unfortunately, that was more than five years ago...

1) Given that the dispute with my attorney is well-documented and in current legal proceedings, is there any recommended way to revive the abandoned application with the USPTO?

2) If not, is it possible for me to simply re-file it as a new non-provisional patent application with the same title and modified/improved claims? (I do not believe any similar applications have been filed but I would do a prior-art search before refiling.)

Thank you.

  • It wasn't published, was it? Interesting question. Unintentional delay can revive normal patents, but provisionals and after five years ... I wouldn't bet on it. I don't think you'll get a definite answer to that as it's a very rare case. Maybe try calling the uspto. – DonQuiKong Dec 27 '17 at 20:53
  • It was in fact published by the USPTO site as publication type "application". – Jazimov Dec 27 '17 at 20:55
  • oh sorry, I didn't see the “non“ and thought it was a provisional. That changes everything. – DonQuiKong Dec 27 '17 at 20:59
  • "Changes everything"--how? Does that mean I have no options or that I do have options? – Jazimov Dec 28 '17 at 1:02
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    it makes your application prior art against your future applications, which is basically pretty bad. I don't know if reviving if possible, but I guess rather not anymore. Let me see if I can compile you an answer later. – DonQuiKong Dec 28 '17 at 5:18
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US patents and applications can be revived if the relevant fees are paid and a statement is made that the delay was unintentional. In theory, there is no time limit on this. See https://www.uspto.gov/patents-application-process/petitions/09-revival-based-unintentional-delay

You could state your case in the petition trying to show that the entire delay was unintentional.

I have no practical experience with this but strongly suspect that five years are to long. However, if you do try, please add an answer here afterwards to tell us how it went.

It does seem to be your best bet as any published application becomes prior art for new applications and the us grace period for your own publications is one year. Therefore your old application will be prior art for a new filing, no exemptions.

  • I will post back here if I have success reviving. I may even try to make an appointment and fly to DC/VA if necessary to explain the detail behind this unusual case. Thanks. – Jazimov Dec 28 '17 at 22:43
  • @Jazimov try calling first ;) oh and in case that's important, you won't be able to get a PCT application or any patent outside the us anymore, even if the us one is revived – DonQuiKong Dec 29 '17 at 5:20

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