QUESTION

Could I refile for patent protection after the application was abandoned?

Asked on Aug 25th, 2015 on Patents - California
More details to this question:
My Patent Application was abandoned after I did not answer the final Office Action. What recourse might I have? I have the Trade Mark issued on the Idea. Can I refile something for protection?
Report Abuse

4 ANSWERS

Acquisitions Attorney serving Lincoln, NE at Jayne L. Sebby
Update Your Profile
Probably not, unless the reason you didn't answer the final action notice was that you were physically unable to respond due to reasons completely beyond your control.
Answered on Aug 31st, 2015 at 5:24 AM

Report Abuse
Assuming you do not have a pending continuation application based on the same original patent specification and the now abandoned patent application was published, your patent rights to any novel and nonobvious features of your invention are now extinguished. Generally, US utility patent applications are published at approximately 18 months from filing date, unless a nonpublication request was filed with the application. So, presumably your patent application has already published and the public is now fully aware of what your invention is. Thus, your published patent application is now prior art to all subsequent inventors. Furthermore, you would also have lost rights if you do not have a pending application on file within 1 year of any public disclosure, sale or offer for sale of your invention. As for your trademark, that may be the only protection you have and it only protects use of the trademark you are using in association with your product. Without patent protection, you cannot prevent anyone from making, using or selling your invention, as long as they are not also using your trademark and thereby causing a likelihood of confusion in the marketplace. As always, you should consult with an intellectual property attorney to discuss your particular factual scenario and your intellectual property right options.
Answered on Aug 25th, 2015 at 2:38 PM

Report Abuse
Appellate Litigation Attorney serving Boston, MA at Banner & Witcoff, Ltd.
Update Your Profile
Check with a patent attorney - bring all facts, dates, office action for review. Sometimes you can revive an abandoned application - IF - the abandonment was unintentional. The revival petition is expensive. Your trademark registration protects only the mark - the "brand" name of the item - nothing more.
Answered on Aug 25th, 2015 at 2:20 PM

Report Abuse
If it was unintentionally abandoned and only a few months have gone by, the original application may be revived by petition and a fee. A trademark does not protect an idea. Depending on your particular facts, it may be best to file a continuation-in-part after the application is revived.
Answered on Aug 25th, 2015 at 2:18 PM

Report Abuse

Ask a Lawyer

Consumers can use this platform to pose legal questions to real lawyers and receive free insights.

Participating legal professionals get the opportunity to speak directly with people who may need their services, as well as enhance their standing in the Lawyers.com community.

0 out of 150 characters