TMEP 1714.01(b): Failure to File a Statement of Use or Extension Request - Notice of Allowance Received
October 2017 Edition of the TMEP
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1714.01(b) Failure to File a Statement of Use or Extension Request - Notice of Allowance Received
To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov.
The procedural requirements for filing a petition to revive an application abandoned for failure to respond to a notice of allowance are listed in 37 C.F.R. §2.66(c). If the applicant received the notice of allowance, the petition must include all of the following:
- (1) The petition fee required by 37 C.F.R. §2.6;
- (2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the statement of use (or request for extension of time to file a statement of use) on or before the due date was unintentional (37 C.F.R. §2.66(c)(2) ). The statement does not have to be verified;
- (3) Either a statement of use under 37 C.F.R §2.88 or a request for an extension of time to file a statement of use under 37 C.F.R §2.89 (37 C.F.R §2.66(c)(2)(i), (ii) ); and
- (4) The required fees for the number of extension requests that the applicant should have filed if the application had never been abandoned (37 C.F.R §2.66(c)(2)(i), (ii) ).
Example 1: If a notice of allowance was issued January 14, 2009, and the applicant did not file a statement of use or extension request by July 14, 2009, the application becomes abandoned. If a petition to revive is filed July 23, 2009, with a statement of use, the petition must include: (1) the fee for the statement of use; (2) the fee for the extension request that was due July 14, 2009; and (3) the petition fee.
Example 2: If a notice of allowance was issued January 14, 2009, and the applicant did not file a statement of use or extension request by July 14, 2009, the application becomes abandoned. If a petition to revive is filed January 23, 2010, without a statement of use, the petition must be accompanied by: (1) the second extension request that was due January 14, 2010, with the filing fee therefor; (2) the fee for the first extension request that was due July 14, 2009; and (3) the petition fee. If the petition is granted, a statement of use or third extension request will be due July 14, 2010.
Unless a statement of use is filed with or before the petition, the applicant must file any further requests for extension of time to file a statement of use that become due while the petition is pending, or file a statement of use (37 C.F.R §2.66(c)(3) ). See TMEP §1714.01(b)(i).
Example: If a notice of allowance was issued January 14, 2009, and the applicant did not file a statement of use or extension request by July 14, 2009, the application becomes abandoned. If a petition to revive is filed January 2, 2010, without a statement of use, the petition must include: (1) the first extension request that was due July 14, 2009, with the filing fee therefor; and (2) the petition fee. In addition, if the petition is pending, the applicant must submit by January 14, 2010 either: (1) a statement of use (with the required fee), or (2) a second extension request (with the required fee) before the petition can be granted.
The USPTO will notgrant a petition to revive an intent-to-use application if granting the petition would extend the period for filing the statement of use beyond thirty-six months after the issuance date of the notice of allowance. 15 U.S.C. §§1051(d)(1) and (2); 37 C.F.R. §2.66(d). In these cases, the petition will be dismissed, and the petition fee will be refunded.
NOTE: Multiple Basis Applications. In a multiple-basis application, if in response to a notice of abandonment the applicant elects to delete the intent-to-use basis and only keep the basis or bases to which the notice of allowance does not pertain, then the applicant does not have to file a statement of use or extension request with the petition, or file any further extension requests while the petition is pending. Instead, applicant may submit with the petition a request to delete the intent-to-use basis or the goods/services/classes to which the intent-to-use basis applies and proceed to registration on the alternative basis or bases for registration for those goods/services/classes supported by such alternative bases.
See TMEP §§1705.04 and 1714.01(d) regarding petition timeliness and TMEP §1705.05 regarding due diligence in monitoring the status of an application.