By Donald Zuhn –

The U.S. Patent and Trademark Office has published a final rule in the Federal Register (an unpublished version of the notice, which will be published on June 24, can be found here), in which the Office states that it is “revising its practice of requiring additional information for delays in taking certain actions in patent applications and patents from requiring additional information for delays exceeding two years to requiring additional information for delays exceeding one year.” 

The notice indicates that in a prior Federal Register notice published a little more than six years ago, the Office had clarified its practice with respect to situations requiring additional information about whether a delay in seeking the revival of an abandoned application, acceptance of a delayed maintenance fee payment, or acceptance of a delayed priority or benefit claim was unintentional (see “USPTO Issues Clarification Regarding Petitions Based on Unintentional Delay“).  In particular, the prior notice indicated that the Office would require additional information when a petition to revive an abandoned application was filed more than two years after the date the application became abandoned, or when a petition to accept a delayed maintenance fee payment was filed more than two years after the date the patent expired for nonpayment, or when a petition to accept a delayed priority or benefit claim was filed more than two years after the date the priority or benefit claim was due.

In the final rule published today, the Office notes that it “has decided to shorten the two-year period for requiring additional information to one year,” explaining that “[i]f the period of delay is more than one year, there is a sufficient concern that the entire delay may not be unintentional and thus warrant a requirement for an additional explanation of the circumstances surrounding the delay.”  The Office also notes that the change from a two-year period to a one-year period “aligns with USPTO efforts to reduce application pendency and promote efficient patent operations by encouraging applicants to regularly monitor patent files and promptly take corrective actions when needed.”  The notice states that “[p]rompt, corrective actions are more likely to be associated with unintentional delay and assist in streamlining examination.”

The notice cautions stakeholders that “[n]othing in this notice should be construed as an indication that the USPTO will only require additional information in consideration of a petition” filed more than one year after the date an application became abandoned, the date a patent expired, the due date of a priority or benefit claim, or the expiration of the time limit in connection with the requirements pertaining to an international design application.

The new rule will take effect on August 13, 2026, and will apply to any new petition filed after the effective date.  The notice indicates that the two-year period triggering the fees under 37 C.F.R. §§ 1.17(m)(1) and 1.17(m)(2) will be changed to a one-year period.