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I have an open application with a first OA rejection, which of course is typical. My only intention with this application is to have an open, potentially modifiable application associated with granted patents, in the hope of selling the family. However I don't want to spend any more money and time than absolutely necessary to keep it open. Assuming I ever get any acquisition interest – Which looks better (or, less undesirable) and could be more useful to a potential buyer of a family including an opened application:

  1. An opened application abandoned after the first OA, due to not responding to the OA response deadline, or
  2. An opened application abandoned after the 2nd OA (typically, a "final rejection" that isn't really final, but requires an RCE and associated cost)?

If #2, then best to proceed with some kind of response that will likely fail (while I still have a no-charge option to respond)?

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In either case the application is not really "open" - it is abandoned. To get it revived will take someone asserting that all delay in responding was unintentional. That will not be true in either scenario. You are planning a strategic abandonment and will have a tainted application even if it is revived. If it is ever used in an enforcement a sophisticated accused infringer will figure out what happened in the history of prosecution and it will be a weak point. Spend money filing a string or continuations if you want something that can be built upon.

An alternative for an acquirer who want to improve on or target new claims is for them to file for a reissue of an issued patent on the grounds that the patent is defective. Within two years of grant this can be due to not claiming all you where entitled to! Defective becasue it was not as broad as it could have been.

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  • Clear and helpful, thank you. I have understood that late responses to the OA can be accepted with an extra fee, the fee increasing for additional months of lateness. Do you happen to know how far that can be carried before USPTO declares it abandoned? – Charles May 28 at 20:13
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    The law provides a 6 month max. time period. That is the maximum and will on the OA. 35 U.S.C. 133 Time for prosecuting application. Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto. – George White May 28 at 22:35

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