Can an Abandoned Patent Application be Revived?

The patent system grants inventors exclusive rights to their creations for a limited period. However, applications can be abandoned due to missed deadlines or unforeseen circumstances. This begs the question: can an abandoned patent application be revived? The answer depends on where you filed. Let’s delve into the revival process in the Philippines and the United States (USA).

The Philippines: A Stricter Stance

The Philippines takes a stricter approach to abandoned patent applications. Under the Intellectual Property Code of the Philippines (Republic Act No. 8293), a patent application is deemed abandoned if the applicant fails to respond to an office action or pay the required fees within the prescribed period. Unfortunately, there’s no provision in Philippine law for reviving an abandoned application.

This doesn’t necessarily mean your invention loses all protection. You can still consider alternative options:

• Filing a New Application: This is the most straightforward approach. However, be aware of potential novelty issues. If someone else filed a similar patent application between the abandonment and your new filing, you might face challenges in securing a patent.
• Considering Other Forms of IP Protection: Depending on your invention, you might explore options like copyrights or trademarks. While not as comprehensive as patents, these forms of IP can offer some protection.

The USA: A Second Chance for Unintentional Delays

The United States Patent and Trademark Office (USPTO) offers a more forgiving approach. You can potentially revive an abandoned application by filing a petition for revival under 37 CFR § 1.137. This applies if the abandonment was unintentional. Here are the key requirements:

• Prompt Action: File the petition as soon as possible after discovering the abandonment. The USPTO looks favorably on swift action.
• Unintentional Delay: You must convincingly demonstrate that the delay in responding to the USPTO was not intentional. Acceptable reasons include negligence by an attorney or patent agent, serious illness, or natural disasters.
• Outstanding Reply: Include the response that should have been submitted with the petition.
• Terminal Disclaimer (Optional): If the delay caused the invention to become publicly known, a terminal disclaimer might be required. This limits the patent term to the period after the public disclosure.
• Petition Fee: Pay the required fee set by the USPTO.

Key Differences in the Revival Process

Here’s a table summarizing the key differences between the Philippines and the USA:

Factor	Philippines	USA
Revival Option	Not available	Possible under certain conditions
Unintentional Delay	Not applicable	A key factor for revival
Petition Fee	Not applicable	Required
Alternative Options	New application, Copyright, Trademark	New application

Beyond Revival: Practical Considerations

Even if revival is an option, consider these additional factors:

• Time and Cost: The revival process can be time-consuming and involve legal fees. Weigh the cost against the potential value of the patent.
• Strength of the Invention: Evaluate if the invention still holds novelty and commercial viability.

Seeking Professional Help

Patent law can be complex. Consider consulting a qualified patent attorney or agent in your region. They can advise you on the best course of action based on the specifics of your case.

Conclusion

While the Philippines offers limited options for reviving abandoned applications, the USA provides a path for unintentional delays. However, both scenarios require careful consideration of the time, cost, and potential benefits involved. Remember, an ounce of prevention is worth a pound of cure. Stay vigilant with deadlines and consider consulting professionals to ensure your invention receives the protection it deserves.