I received the following note from a reader asking if anyone would have suggestions on the following fact pattern:

I am preparing a petition to revive a US application that has gone abandoned, we think unintentionally. There are a number of case specific issues, which are not expressly provided for in MPEP 711.03. In particular, there appears to have been a mis-communication between the agent of record, at the time the application went abandoned, and the Applicant about the importance of a particular limitation in a claim element. The application went abandoned in favor of a subsequently filed CIP to add some limiting language to the specification and claims; this as a result of the mis-communication (and poor advice from the then agent of record). The CIP issued as a patent, but it now turns out that the licensee in charge of manufacturing the product believes that the product covered by the now abandoned application should have been the one to enter the marketplace and not the one covered in the issued patent. Finally, and probably a lost cause in light of MPEP 711.03, the application before it went abandoned went through three rounds of prosecution in which it received numerous 103(a) rejections, all essentially based on the same piece of art. The arguments which were put forth by the agent to address the rejections were inappropriate for this type of rejection, and thus led the Applicant to chose the abandonment route rather than continue prosecution.

Have any of your blog readers encountered such a problem and if so, were they successful in petitioning the Commissioner to revive the application?

A petition to revive must include a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional. I’m not sure if this qualifies as unintentional since the application was intentionally abandoned, just on mistaken information about the rejections. It may be that the only recourse that can correct the claim deficiencies is a broadening reissue application.

The broadening reissue application allows you to go back to the USPTO once the patent is issued whenever there has been an error made and the inventor did not get all of the inventions (or the breadth of the invention) that he or she was entitled to. There are some requirements. First, the error must have been made without any deceptive intent. Second, the broadening reissue application, however, must be filed within two years after the patent issues. After that, it is too late. See 35 U.S.C. §251.

A broadened reissue claim is a claim which enlarges the scope of the claims of the patent, i.e., a claim which is greater in scope than each and every claim of the original patent. If a disclaimer is filed in the patent prior to the filing of a reissue application, the disclaimed claims are not part of the “original patent” under 251. A claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects.

Anyone have other suggestions here?

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