Allowance and Issue (MPEP 1300)

by patentbar on December 6, 2007 · 5 comments

in MPEP 1300

1300: When an app goes to Allowance and then to Issuance/Publishing:

1302: Small Corrections & Examiner’s amendments to an app ready for issuance:

  1. The examiner will make one last pass looking for small formal mistakes in the app. If the claims have changed due to cancellations or amendments, the examiner may require the applicant to rewrite parts of the app that are confusing to read (without changing the substantive nature).
  2. 1302.03: Notice of Allowability: This notice is sent to the applicant when the app is in condition for allowance.
  3. 1302.04: Examiner’s Amendments: There are 2 kinds of amendments that the examiner can make on his own:
    1. Informal: When there are obvious typos and other errors in grammar the examiner may correct informally. (These only work on old paper apps, on an modern IFW app, they are not allowed)
    2. Formal: These are for similar purposes but are allowed in the new IFW format. Also, a formal amendment may include fees & charges that the examiner amends onto the app to make sure the applicant pays them (like against a charge account).
  4. 1302.05: Correcting Drawings: If the app is OK except for corrections to a drawing, it is forwarded to the Publishing Division (at this point the applicant needs to correct the drawing).
  5. 1302.14: Reasons for Allowance:
    1. Remember, the patent is supposed to have as complete a record as possible of what the invention is, and why it was granted.
    2. The examiner will generally include his own reasons for why the patent was allowed. Remember: These reasons are not subject to estoppel later on (like at a trial or interference), only what the applicant himself actually states is subject to estoppel.
    3. The applicant himself may also have extra reasons for why the app is valid, usually these are only added if the applicant disagrees with the examiner’s reasoning. Since these comments are made by the applicant, they are subject to estoppel.

1303: Notice of Allowance: This is mailed out to the applicant. The date is important since deadlines for paying the issuance & publishing fees start from the day this notice is sent. (37 CFR 1.311)

1306: Issue & Publication Fees: These are due 3 months from the time the notice of allowance gets mailed. Remember: Failure to pay the issue fee results in abandonment!

Deferring Issuance: Under 37 CFR 1.314, the applicant may request a 1 month (30 day) delay in the issue of the patent. Under extraordinary circumstances this may be a longer issue delay (note: delays in order to file an RCE, CPA, or due to licensing negotiations are not extraordinary in nature).

1308: Withdrawing from Issue:

  1. When done by the Applicant: (usually so an RCE or other continuation may occur)
    1. If done before paying the issue fee (and before fee’s due date): Either a petition under 37 CFR .1313(a) or by filing a normal RCE (37 CFR 1.314 & 37 CFR 1.17(e) fee).
    2. If done after paying the issue fee: At this point, the withdrawal is only for causes that are listed in 37 CFR 1.313(c) (like: when 1 or more claims are unpatentable (unequivocal signed statement needed); if the petition is granted an RCE can happen; or express abandonment of the app).

    Termination of Substantive Prosecution

    Review of Disclosure and Examiner’s Amendments – examiner should review app to make sure it complies with all formal and substantive requirements:

  2. clear abstract <=150 words; claim renumbering; perform interference search; list all cited references;
  3. once application is in condition for allowance and an indication of allowability is mailed, the applicant has no further right to substantive examination of application

Notice of Allowability –

  • terminates substantive prosecution
  • if applicant broader claims (anything that would require a new search), must file a continuing app or RCE
  • no amendment as a matter of right
  • applicant has right (not duty) to respond if Examiner gives reason for allowance, but must respond by payment of issue fee
  • application’s in condition for allowance except as to form are considered special and formal matters must be handled w/in 2 months

Formal Notice of Allowance and Fee Due (NOA) –

  • starts three month clock for payment of issue fee
  • if examiner includes reasons for allowance, applicant may respond and if applicant does not respond, he ‘agrees’
  • Applicant has no right to amend, but can: file RCE with fee (stops 3 month clock); file continuing application; or file CPA (for utility/plant before 5/29/2000 or design)
  • Applicant has three months from mailing date of formal NOA to: pay issue feeNO extensions of time – if payment is late, it’s abandoned, must file petition to revive under 1.137; submit formal drawings (no EOT) – drawings CAN be submitted via fax with issue fee; submit response to reasons for allowance; and submit a priority claim

Changing the Application After Allowance

Amendments after NOA –

  • no amendment as matter of right
  • no broader claims allowed – would require a new search
  • before issue fee is paid: need good and sufficient reason why claims were not presented earlier; why amendment is needed; why no more search or examination is required; why claims are patentable; and 2) good and sufficient reason should: amendment is needed for proper disclosure or protection of invention; and amendment requires no substantial amount of work for PTO
  • after issue fee is paid: must have good and sufficient reason (same as above) and petition and fee

Deferring Issuance of Patent –

  • normally available for up to one month – unless extraordinary circumstances
  • to request deferral, applicant needs: petition; fee; showing of good and sufficient reasons why it’s necessary
  • not appropriate unless issue fee is paid

Withdrawal from Issue

Before payment of issue fee:

  • need petition and good and sufficient reason to withdraw app; and fee, unless reasons for withdrawal is PTO’s fault
  • can file a continuing app and permit parent to become abandoned
  • NO PETITION is required if a RCE is filed before issue fee

After payment of issue fee:

  • petition and good and sufficient reason; fee, unless PTO’s fault
  • no withdrawal unless: PTO mistake; illegality or inequitable conduct; one or more unpatentable claims; for interference; OR abandonment to consider IDS in continuing application

Issuance of Patent

Payment of Issue Fee –

  • three months to pay (watch for holidays and weekends) NO EOT
  • must pay amount due as of payment date, not the date of notice of allowance
  • if not paid or insufficiently paid, abandoned
  • issue fee and publication fee and formal drawings can be made via fax
  • authorization to charge issue fee to deposit account can only be filed after the mailing of the NOA. An incorrect fee or fee form w/o payment will be treated as request to charge deposit account; authorization must be written
  • fee can be paid late if: 1) delay is unavoidable: file petition; fee; issue fee; showing that entire period was unavoidable; and (for all design apps and other apps filed before 6/8/95) a terminal disclaimer for period of abandonment; or 2) delay is unintentional: same, but showing that entire delay was unintentional

Effect of Issue Date –

  • patent rights become fully enforceable
  • cannot file continuing apps, CPAs or RCEs
  • starts two year clock for broadening reissue claims
  • starts one year clock for others to copy claims for an interference
  • maintenance fee due dates calculated from issue date
    1 TexPatBarNo Gravatar May 5, 2009 at 11:54 am

    I’m having trouble reconciling the answer for April 2001 AM #17 with MPEP 1302.14 (Reasons for Allowance). According to the MPEP (and this study guide) an applicant’s failure to respond to an examiner’s reason for allowance CANNOT give rise to an inference of acquiescence. But the answer to #17 states just the opposite. Am I missing something??

    2 LizzieNo Gravatar May 5, 2009 at 3:45 pm

    The MPEP does not actually say it CANNOT as answer A in Q17:

    From MPEP 1302.14:
    The failure of applicant to comment on the examiner’s statement of reasons for allowance should not be treated as acquiescence to the examiner’s statement. Any inferences or presumption are to be determined on a case-bycase basis by a court reviewing the patent, the USPTO examining the patent in a reissue application or a
    reexamination proceeding, the Board of Patent Appeals and Interferences reviewing the patent in an interference proceeding, etc.< Applicant may set forth his or her position if he or she disagrees with the examiner’s reasons for allowance.

    As a reference:
    Q17. Which of the following statements involving an examiner’s statement of reasons for
    allowance in a Notice of Allowance dated February 8, 2001, is in accordance with USPTO rules
    and procedure?
    (A) Failure by applicant or patent owner to file a statement commenting on the
    reasons for allowance cannot give rise to any implication that the applicant or
    patent owner agrees with or acquiesces in the reasoning of the examiner.
    (B) If applicant files a statement commenting on the reasons for allowance, failure by
    the examiner to respond to applicant’s statement gives rise to the implication that
    the examiner agrees with applicant’s statement.
    (C) If applicant files a statement commenting on the reasons for allowance, failure by
    the examiner to respond to applicant’s statement does not give rise to any
    (D) (A) and (C)
    (E) None of the above.

    A17. ANSWER: (C) is the correct answer. 37 CFR § 1.104(e) (effective November 7, 2000);
    “Changes To Implement the Patent Business Goals; Final Rule,” 65 FR 54604, 54633
    (September 8, 2000). As stated in 65 FR at 54633, middle column, “In view of the recent case
    law dealing with prosecution history, the failure of an applicant to comment on damaging
    reasons for allowance would give rise to a presumption of acquiescence to those reasons…”
    Thus, (A) is incorrect. 65 FR at 54633, middle column, also provides, “That the examiner does
    not respond to a statement by the applicant commenting on reasons for allowance does not mean
    that the examiner agrees with or acquiesces in the reasoning of such statement.” Thus (B) is
    incorrect. (D) is incorrect because (A) is incorrect. (E) is incorrect because (C) is correct.

    3 AlanNo Gravatar September 29, 2010 at 12:01 am

    The most recent version of the MPEP 1302.14 clarifies the statement quoted by Lizzie from Rev 8 version 4 of the MPEP:

    “The examiner’s statement of reasons for allowance is the personal opinion of the examiner as to why the claims are allowable. The examiner’s statement should not create an estoppel. Only applicant’s statements should create an estoppel. The failure of applicant to comment on the examiner’s statement of reasons for allowance should not be treated as acquiescence to the examiner’s statement. >See Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1347, 75 USPQ2d 1369, 1373 (Fed. Cir. 2005).”

    This would tend to indicate that answer on the Feb 14, 2001 test is out of date. Be especially careful when studying some of the older tests.

    4 RodneyNo Gravatar January 20, 2011 at 3:58 pm

    My Question: If you don’t pay the issue fee the application goes abandoned. You can petition to revive the application. Do you give up a portion of the patent term as a condition of revival. It seems 37 CFR 1.137 covers this area. My reading of 1.137 would be only applications filed before 1995 need to include a terminal disclaminer to revive the application. (see 1.137 d)

    5 RosaNo Gravatar June 28, 2011 at 11:05 am

    I spoke to the Examiner in a case where we just paid the Issue Fee. We prepared formalized drawings – even though the drawings in the current case were accepted by the Examiner. The Examiner said sure – that he had no problem with us submitting formalized drawings – he was not sure, however, on how we should proceed. If I send a “communication” attached to the formal drawings – would that be alright? Again, the Issue Fee has already been paid. thanks for your answer

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