Rejection after Allowance
Examiner finds a new prior art reference based on which the claim should be rejected – but the notice of allowance has already been sent. Now what?
1308.01 Rejection After Allowance [R-2]
A claim noted as allowable shall thereafter be rejected only with the approval of the primary examiner. Great care should be exercised in authorizing such rejection. See MPEP § 706.04.
When a new reference is discovered, which obviously is applicable to one or more of the allowed claims in an application in issue, a * >memorandummemorandummemorandum, if the application file is in paper<.
{ 10 comments… read them below or add one }
This question may also be phrased as: “Examiner finds a new prior art reference after allowance that may render the claim unpatentable. Now what?”
Does anyone know the MPEP citation for “When a new reference is discovered, which obviously is applicable to one or more of the allowed claims in an application in issue, a * >memorandummemorandummemorandum, if the application file is in paper<.”
1308.01 Rejection After Allowance [R-2]
A claim noted as allowable shall thereafter be rejected only with the approval of the primary examiner. Great care should be exercised in authorizing such rejection. See MPEP § 706.04.
When a new reference is discovered, which obviously is applicable to one or more of the allowed claims in an application in issue, a * >memorandummemorandummemorandum, if the application file is in papermemorandumTC Director should withdraw the application
from issue as explained in MPEP § 1308. After the TC Director has withdrawn the application from issue, the examiner will prepareFor Image File Wrapper (IFW) processing, see IFW Manual.(the Notice of Allowance will reflect an issue fee amount that is due that is the difference between the current issue fee amount and the issue fee that was previously paid)<. If abandoned, applicant may request refund or credit to a deposit account.
1308.01 Rejection After Allowance [R-2]
A claim noted as allowable shall thereafter be rejected only with the approval of the primary examiner. Great care should be exercised in authorizing such rejection. See MPEP § 706.04.
When a new reference is discovered, which obviously is applicable to one or more of the allowed claims in an application in issue, a memorandum
is addressed to the Technology Center (TC) Director, requesting that the application be withdrawn from issue for the purpose of applying the new reference.
This memorandum should cite the reference, and, if need be, briefly state its application. The memorandum should be submitted with the reference and
the file wrapper, if the application file is in paper. If the examiner’s proposed action is not approved, the memorandum requesting withdrawal from issue should not be placed in the file.
If the request to withdraw from issue is approved, the TC Director should withdraw the application from issue as explained in MPEP § 1308. After the
TC Director has withdrawn the application from issue, the examiner will prepare an Office action stating that the application has been withdrawn from
issue, citing the new reference, and rejecting the claims met thereby.
The action is given a paper number and placed in the file. For Image File Wrapper (IFW) processing, see IFW Manual.
If the issue fee has already been paid and prosecution is reopened, the applicant may request a refund or request that the fee be credited to a deposit account.
However, applicant may wait until the application is either found allowable or held abandoned. If allowed, upon receipt of a new Notice of Allowance, applicant
may request that the previously submitted issue fee be applied (the Notice of Allowance will reflect an issue fee amount that is due that is the difference
between the current issue fee amount and the issue fee that was previously paid). If abandoned, applicant may request refund or credit to a deposit account.
Thanks for the clarification.
From PatentBarQuestions – “Notice of Allowance received but have not paid issue fee. Foreign associate sends a reference that is relevant but not previously considered. Your client does not want to pay for an RCE but will pay to have reference considered. Choices were: – PTO will consider reference w/o having to pay a fee. (I chose this one) – PTO will consider reference only if you pay a fee. – PTO will automatically file an RCE and charge you for it.”
for the question above… You do not need an RCE or continuation unless the reference was transmitted from the foreign office more than three months before the today date given in the facts. However since it is after notice of allowance, I am pretty sure you need to submit the “fee” (to enter the IDS, not RCE fee) PLUS the “statement” about no knowledge of the reference before 3 months in the past.
My present understanding is that an RCE reopens prosecution in a closed application, whereas a continuation creates a new application with a new number, and implies abandonment of the original application.
First, is this right?
Second, what’s the operational difference?
Thanks, Art Williams
The requirements of 37 CFR 1.97 provide for consideration by the Office of information which is submitted within a reasonable time, i.e., within 3 months after an individual designated in 37 CFR 1.56(c) becomes aware of the information or within 3 months of the information being cited in a communication from a foreign patent office in a counterpart foreign application. This undertaking by the Office to consider information would be available throughout the pendency of the application until the point where the patent issue fee was paid
So my guess is that PTO will consider the reference w/o having to pay the fee