Beginning August 13, 2026, patent applicants and owners seeking relief from certain missed deadlines will face heightened evidentiary requirements sooner than under prior USPTO practice. Under a recently issued final rule, a delay exceeding one year will require an explanation establishing that the entire delay was unintentional. The previous threshold was two years.
The change applies to petitions to revive abandoned patent applications, accept delayed maintenance fee payments, accept delayed priority or benefit claims, and excuse missed deadlines involving international design applications. The one-year threshold will also determine when the higher petition fee applies.
For in-house counsel, the practical significance extends beyond the cost or preparation of a petition. The circumstances surrounding an abandoned application or expired patent may later become relevant in licensing, litigation, and transactional due diligence. A petition that includes an incomplete or inaccurate account of the delay can create risks that persist long after the USPTO grants the requested relief.
What Is Changing?
An application ordinarily becomes abandoned by operation of law when an applicant fails to submit a timely and proper response to an Office communication. Abandonment generally occurs when the applicable response period expires, not when the USPTO later issues a Notice of Abandonment. See MPEP §§ 711 and 711.03(c).
Under 37 C.F.R. § 1.137, an applicant seeking revival generally must submit the required reply, pay the applicable petition fee, provide any required terminal disclaimer, and state that the entire delay from the due date of the reply until the filing of a grantable petition was unintentional. Comparable procedures govern delayed maintenance fees under 37 C.F.R. § 1.378 and delayed priority or benefit claims under 37 C.F.R. §§ 1.55 and 1.78.
The regulations have long authorized the USPTO to require additional information whenever the circumstances raise a question about whether the delay was unintentional. In ordinary cases, however, the Office generally relies on the applicant’s certification and the obligation of the person submitting the petition to conduct an inquiry reasonable under the circumstances.
In 2020, the USPTO established a more definite threshold by requiring additional information whenever a petition was filed more than two years after the relevant abandonment, patent expiration, or missed priority or benefit deadline. The USPTO’s June 24, 2026 final rule reduces that period to one year.
Accordingly, a petition filed after August 13, 2026 must include an additional explanation if more than one year has elapsed since the application became abandoned, the patent expired for nonpayment of a maintenance fee, the priority or benefit claim was due, or the applicable deadline in an international design application expired. The rule applies to new petitions filed after the effective date even if the underlying abandonment, expiration, or missed deadline occurred earlier.
The new rule does not impose a one-year deadline for seeking relief. Petitions may still be filed after one year, and the substantive standard remains unintentional delay. What changes is the showing required to establish that standard and the fee that must accompany the petition.
The One-Year Period Is Not a Safe Harbor
The USPTO’s adoption of a one-year threshold does not mean that a petition filed within one year will automatically be accepted without further inquiry. The Office retains authority to require additional information whenever the facts raise a question about whether the entire delay was unintentional.
The relevant period generally begins on the date the required action was due and continues until a grantable petition is filed. This can require an applicant to account for two distinct intervals: the time between abandonment and discovery of the abandonment, and the time between discovery and the filing of a complete petition.
Those intervals can present different factual issues. If the applicant did not discover the abandonment for an extended period, the applicant may need to explain the docketing, communication, or personnel circumstances that allowed the application to remain unnoticed. If the applicant learned of the abandonment but did not immediately seek revival, the applicant may need to explain what occurred during that later period as well.
Prompt action after discovery therefore does not necessarily cure an earlier period during which the application was intentionally allowed to remain abandoned. Likewise, an inadvertent initial failure to respond will not excuse an intentional decision to postpone corrective action after the abandonment is discovered. The required showing concerns the entire period, not merely the event that first caused the missed deadline.
The filing of a petition that is incomplete or otherwise not grantable may also leave the period of delay running. Once a potential abandonment is identified, counsel should confirm the required response, petition fee, statement of unintentional delay, and any other required papers before filing.
A Change in Business Strategy Does Not Establish Unintentional Delay
A petition to revive cannot properly be used to reverse an earlier business decision to intentionally abandon an application. If an applicant deliberately decides not to respond to an Office Action and later changes its mind because the technology has acquired commercial value, the intervening delay ordinarily is not unintentional.
The same issue may arise when ownership or prosecution control changes. A purchaser may discover an abandoned application during due diligence and view the application as potentially valuable. The purchaser’s interest, however, does not convert the prior owner’s deliberate abandonment into unintentional delay.
The relevant intent is generally that of the party possessing the right and authority to control prosecution during the period at issue. The MPEP explains that when an applicant assigns its entire interest to another party and the assignee decides not to continue prosecution, the original applicant’s contrary intention is not controlling. A similar issue can arise when a licensee or another party has been given contractual authority over prosecution. See MPEP § 711.03(c)(II)(E).
Assignments, licenses, joint-development agreements, and acquisition documents should therefore identify who has authority to instruct prosecution counsel, who is responsible for prosecution expenses, and who may decide whether an application will be maintained or abandoned. Ambiguity on these points can make it difficult to reconstruct intent years later.
The Higher Fee Will Apply After One Year
The final rule also changes the point at which the higher petition fee under 37 C.F.R. § 1.17(m)(1) applies. After the effective date, a petition filed more than one year after the required action was due will be subject to the higher fee. The fee amounts themselves are not changing at this time.
The current large-entity fee is $2,260 under § 1.17(m)(2) and $3,000 under § 1.17(m)(1). The corresponding small-entity fees are $904 and $1,200, and the micro-entity fees are $452 and $600. See the USPTO fee schedule.
For a valuable patent asset, the difference in fees may be less important than the requirement to place a factual explanation in the prosecution record. The explanation may later be reviewed by a purchaser, licensee, accused infringer, or court. A petition should therefore be prepared as a substantive representation concerning the history of the asset, not as a routine docketing formality.
Establishing an Adequate Supporting Record
Before signing or submitting a petition, counsel should conduct an inquiry reasonable under the circumstances, as required by 37 C.F.R. § 11.18. That inquiry should address the entire period of delay and ordinarily should include the individuals and organizations that controlled the application or patent during that period.
Depending on the facts, the investigation may require review of docketing histories, deadline reports, communications between the client and prosecution counsel, USPTO notices, personnel changes, counsel transitions, and records of assignments or acquisitions. The investigation should establish when the required action was due, when the resulting abandonment or expiration was discovered, who had responsibility for the matter, and why corrective action was not taken sooner.
Transitions between docketing systems, outside counsel, or corporate owners deserve particular attention. A statement that an application “fell through the cracks” may describe the result, but it does not explain why the error occurred or why it remained undiscovered. The Office’s new rule calls for an explanation establishing that the entire delay was unintentional, which may require a more precise chronology.
Privilege should also be considered before the petition is filed. In many cases, the necessary showing can be made through dates, responsibilities, nonprivileged communications, and descriptions of administrative events. The petition need not disclose legal advice merely because counsel was involved. Nevertheless, privilege concerns should not be addressed by offering a vague account that fails to substantiate the required representation.
A Granted Petition Does Not Eliminate Enforcement Risk
The USPTO’s acceptance of a petition is important, but it does not necessarily insulate the resulting patent rights from later scrutiny.
In In re Rembrandt Technologies LP Patent Litigation, 899 F.3d 1254, 1272-73 (Fed. Cir. 2018), the Federal Circuit affirmed a finding of inequitable conduct associated with an inappropriate representation that a prosecution delay was unintentional. The USPTO cited Rembrandt in explaining that inaccurate statements concerning delay may adversely affect later enforcement.
At the same time, the Federal Circuit has held that improper revival, standing alone, is not an invalidity defense listed in 35 U.S.C. § 282. See Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 543 F.3d 657, 663-64 (Fed. Cir. 2008). These decisions address different issues. Aristocrat limits the use of an alleged procedural defect in revival as a standalone invalidity defense, while Rembrandt illustrates the separate enforceability risk that may arise from a materially inaccurate representation coupled with the other elements of inequitable conduct.
For due-diligence purposes, the distinction is significant. A granted petition should not be treated as conclusive proof that no enforceability issue exists. For a material asset, counsel should assess whether the petition’s explanation is complete, whether it is consistent with the available records, and whether the relevant individuals conducted an adequate investigation before making the certification.
Reinstated Patents May Present Additional Third-Party Issues
Delayed maintenance fees raise a further concern that differs from revival of an abandoned application. Under 35 U.S.C. § 41(c)(2), a patent reinstated after expiration for nonpayment of a maintenance fee may be subject to statutory intervening rights. The statute protects certain activities occurring after the six-month grace period but before acceptance of the delayed maintenance fee, and it authorizes courts to permit continued activity when equitable considerations support that result.
Consequently, reinstatement does not necessarily restore the patent owner to the same position it would have occupied if the maintenance fee had been timely paid. Before asserting or valuing a reinstated patent, counsel should determine whether potentially relevant products were made, purchased, offered for sale, used, or imported during the lapse period.
This consideration is particularly important in freedom-to-operate and acquisition analyses. A company may have reasonably relied on the public record showing that the patent had expired. The patent’s later reinstatement does not automatically erase all consequences of that reliance.
Practical Implications for Patent Owners and In-House Counsel
The immediate priority is to review applications, patents, and priority claims for which a corrective petition may already be under consideration. Because the rule applies to new petitions filed after August 13, 2026, an applicant or patent owner approaching or exceeding the new one-year threshold should evaluate promptly whether a grantable petition can properly be filed.
More generally, companies should periodically reconcile their internal docket with the records of outside prosecution counsel. Reconciliation is particularly useful following acquisitions, portfolio transfers, changes in outside counsel, personnel departures, or migration to a new docketing platform. These are common points at which responsibility can become unclear or data can be lost.
Companies should also preserve clear records of deliberate abandonment decisions. Such records can prevent an improper revival attempt and help distinguish an intentional portfolio decision from a missed deadline caused by an administrative or communication error.
When an abandoned application, expired patent, or omitted priority claim is discovered, the investigation should begin immediately. Counsel should identify the responsible parties, preserve relevant records, determine the actual date on which the right was lost, and document the date and circumstances of discovery. Delay in beginning that investigation may itself become part of the period that must be explained.
Finally, due diligence involving a revived application or reinstated patent should extend beyond confirming that the USPTO granted the petition. The analysis should consider the factual basis for relief, the identity of the party controlling prosecution, the consistency of the explanation with the available records, and, for reinstated patents, the possibility of intervening rights.
Takeaways
The USPTO has not eliminated relief for unintentionally missed deadlines or imposed an absolute one-year limit on corrective petitions. It has, however, moved the point for mandatory heightened scrutiny and the higher petition fee from two years to one year.
The central lesson is not merely that revival petitions should be filed sooner. Instead, patent owners should maintain systems capable of identifying missed deadlines promptly and preserving the evidence needed to explain what occurred. If relief becomes necessary, the petition should be treated as a substantive submission that may later be examined by the USPTO, a transaction counterparty, an accused infringer, or a court.
For patent owners seeking relief from missed deadlines, prompt action and a well-documented explanation of the entire period of delay can reduce the risk of heightened USPTO scrutiny and future enforceability concerns. Contact Conley Rose to discuss how your organization can evaluate abandoned applications, expired patents, and delayed priority claims under the USPTO’s revised revival standards.
This article is provided for general informational purposes and does not constitute legal advice. The availability and consequences of revival, reinstatement, or acceptance of a delayed priority or benefit claim depend on the particular facts and should be evaluated with qualified patent counsel.