LOTHAR SCHUARTZ, etc. vs.

THE HONORABLE COURT OF APPEALS (SPECIAL FIFTH DIVISION) and THE

BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER
GR No. 113407, July 12, 2000

Facts:

Petitioners applied for registration of patents to the Bureau of Patents & Trademark through a law firm.

For lack of some requirements, the law firm was informed through correspondence called “office actions.”
However, for failure to respond to the office actions within the prescribed time which is 4 months from the
date of the office action, notices of abandonment were sent to each applicant.

Said notices of abandonment were discovered when the law firm made an inventory of documents from the
lawyers entrusted with patent application. By the time they filed a petition to revive the patent applications, a
period of more than 4 months had elapsed from the time of the date of abandonment.

Illustration:
Patent Date of Date of Date of
application Office Abandonment petition
(earliest to Action to revive
latest)
xxxxx-01 Jun 18, Oct 21, 1986 Mar 3,
1986 1988
… … … …
xxxxx-08 Jul 23, Sep 24, 1987 Mar 14,
1987 1988

The Director of Bureau of Patents denied the petition for revival because they were filed out of time. On
appeal, the CA dismissed the petition for review for it was filed beyond the 15-day reglementary period to
appeal.

Issue:

Granting their appeal was done within the reglementary period, can petitioners’ revival of their patent
applications be given due course?

Ruling:

No. The petition to revive the patent applications should be denied.

The applicable Rules of Practice in Patent cases at that time provides:

“Section 111. Abandonment for failure to respond within time limit.

(a) If an applicant fails to prosecute his application within four months after the date when the last official
notice of any action by the Office was mailed to him, or within such shorter time as may be fixed (Rule 112),
the application will become abandoned.”

Still, an abandoned application may be given due course as provided in the said rule, to wit:

“Section 113. Revival of abandoned application.- An application abandoned for failure to prosecute may be
revived as a pending application within four months from the date of abandonment upon good cause shown,
upon the payment of the required fee and upon tender of the proposed response to the last office action. An
application not revived within the specified period shall be deemed forfeited.”
In the case at bar, the patent lawyers failed to act on the office actions sent to them and so their applications
were deemed abandoned after the lapse of 4 months from the sending of the office actions. They also failed to
revive the application within the 4-month period from the date of abandonment. Hence, their applications are
deemed forfeited by the time they filed the petition to revive the applications.