711.04(a) Date of Abandonment [R-07.2022]

Created On
byChhabra Law Firm

Applications are not ordinarily reviewed for possible abandonment until the maximum permissible period for which an extension of time under 37 CFR 1.136(a) plus 1 month has expired.

The applications should be carefully scrutinized by the appropriate examiner to verify that they are actually abandoned. A check should be made of files containing a decision of the Patent Trial and Appeal Board for the presence of allowed claims to avoid erroneously treating the proceedings as terminated (see MPEP § 1214.06, subsections II-IV for proper treatment of any claims that stand allowed).

If the application is abandoned, the date of the abandonment is after midnight of the date on which the set shortened statutory period, including any extensions under 37 CFR 1.136, expired. This is normally the end of the 3-month shortened statutory period.

The following examples in which no retroactive extension of time is sought and no reply is filed by the applicant illustrate the expiration of the shortened statutory period and corresponding date the abandonment in different situations:

  • 1. A non-final Office action was mailed on May 15, 2019 and set a 3 month shortened statutory period that expired on Thursday, August 15, 2019, which was a normal business day when the Office was open. In this situation, the date of abandonment is Friday, August 16, 2019.
  • 2. A non-final Office action was mailed on May 16, 2019 and set a 3 month shortened statutory period that expired on Friday, August 16, 2019, which was a normal business day when the Office was open. In this situation, the date of abandonment is Saturday, August 17, 2019.
  • 3. A non-final Office action was mailed on May 17, 2019 and set a 3 month shortened statutory period that expired on Saturday, August 17, 2019. Monday, August 19, 2019 was a normal business day when the Office was open. In this situation, the date of abandonment is Tuesday, August 20, 2019. The period for reply is extended to Monday, August 19, 2019 due to 35 U.S.C. 21 and 37 CFR 1.7. See MPEP § 710.05.
  • 4. A non-final Office action was mailed on May 31, 2019 and set a 3 month shortened statutory period that expired on Saturday, August 31, 2019. Monday, September 2, 2019 was a federal holiday. Tuesday, September 3, 2019, was a normal business day when the Office was open. In this situation, the date of abandonment is Wednesday, September 4, 2019. The period for reply is extended to Tuesday, September 3, 2019 due to 35 U.S.C. 21 and 37 CFR 1.7. See MPEP § 710.05.