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<.
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 After the TC Director has withdrawn the application from issue, the examiner will prepareFor Image File Wrapper (IFW) processing, see IFW Manual.(the Notice of Allowance will reflect an issue fee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is addressed to the Technology Center (TC) Director, requesting that the application be withdrawn from issue for the purpose of applying the new reference.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.
This and the previous couple of post are off topic, nonetheless, here is an example of the question: Oct 2003 am
34. A registered practitioner filed a utility application on February 11, 2002. On April 4,
2002, the practitioner filed an information disclosure statement (IDS) in the application. The
practitioner received a notice of allowance dated January 3, 2003 soon after it was mailed. When
discussing the application with the practitioner on January 21, 2003, and before paying the issue
fee, the client notices for the first time that a reference, which is one of many patents obtained by
the client’s competitor, was inadvertently omitted from the IDS. The client has been aware of
this reference since before the application was filed. The client is anxious to have this reference
appear on the face of the patent as having been considered by the USPTO. Which of the
following actions, if taken by the practitioner, would not be in accord with the patent law, rules
and procedures as related by the MPEP?
(A) Before paying the issue fee, timely file an IDS citing the reference, along with the
certification specified in 37 CFR 1.97(e), and any necessary fees.
(B) Within three months of the mail date of the notice of allowance, without paying
the issue fee, timely file a Request for Continued Examination (RCE) under 37
CFR 1.114, accompanied by the fee for filing an RCE, and an IDS citing the
reference.
(C) Within three months of the mail date of the notice of allowance, without paying
the issue fee, timely file a continuing application under 37 CFR 1.53(b), an IDS
citing the reference, and any necessary fees.
(D) After paying the issue fee, timely file a petition to withdraw the application from
issue to permit the express abandonment of the application in favor of a
continuing application, a continuation application under 37 CFR 1.53(b), an IDS
citing the reference, and any necessary fees.
(E) After paying the issue fee, timely file a petition to withdraw the application from
issue to permit consideration of a Request for Continued Examination (RCE)
under 37 CFR 1.114, the fee for filing an RCE, and an IDS citing the reference.
Answer is (A).
A cannot be the answer since you cant certify under 1.97(e). The answer would have to be E.
@Kass look at the call of the question: WOULD NOT be in accord with the patent law, rules. This is why A is the correct answer.
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
I believe this only applies BEFORE notice of allowance or any action closing prosecution – where you can either submit a statement (i.e. not more than 3 mo etc.) OR submit a fee (i.e. it’s been more than 3 mo and you forgot to submit). A reference discovered after the Notice of Allowance has to be submitted with fee AND statement.
Oct 2003 am Repeat Variant on 4/27/2011.
Submitting IDS alone is no bueno to get the reference considered.
45. Al files an application for a patent. After the Notice of Allowance is mailed and the issue fee has been paid Al discovers a prior art reference which is material to patentability. What should Al do in accordance with the USPTO rules and the procedures set forth in the MPEP?
(A) Al should file a prior art statement under 37 CFR 1.501 that will be placed in the patent file upon issuance of the application as a patent.
(B) Since the issue fee has been paid, Al no longer has a duty to disclose to the Office material prior art. He is under no obligation to submit the prior art reference to the Office.
(C) Since the issue fee has been paid, it is too late to have the examiner consider the reference in this application. Al should file a continuation application to have the reference considered and allow the original patent application to issue as a patent.
(D) Al should file a petition to have the application withdrawn from issuance, citing the finding of additional material prior art as the reason for withdrawal. A continuation application should also be filed with an information disclosure statement containing the reference in order to have the reference considered.
(E) Al should file an amendment under 37 CFR. 1.312 deleting all of the claims which are unpatentable over the reference since an amendment deleting claims is entitled to entry as a matter of right.
ANSWER: (D) is the most correct answer. See 37 CFR § 1.313(b); MPEP §§ 609, subpart (B)(4) and 1308. After payment of the issue fee it is impractical for the Office to consider any information disclosures. As to (A), a prior art statement is applicable only to patent, not application, files. 37 CFR § 1.501. As to (B), duty of disclosure continues until the patent is issued. As to (C), the patent should not be allowed to issue since it may contain invalid claims. As to (E) no amendment is entitled to entry after payment of the issue fee. 37 CFR. § 1.312(b).
got a question like this on 19/04/12
I think that
1st period : within 3 months of filing or before first office action(later one)
-> no statement, no fee, just file with IDS
2nd period : before final OA or NoA(earlier one)
-> statement or fee( if within 3months from recognizing, no fee) with IDS
3rd period : after NoA, before payment of issue fee
-> statement and fee with IDS ( if within 3months)
But, after 3months, CA or RCE with IDS
4th period : after payment of issue fee
-> IDS but not considered
-> a petition for withdrawal and then RCE or CA and IDS
Therfore, my answer is E (toomuch23’s question) and is D(fenguwuzu’s question)
let me know if i’m incorrect!
Mimi, your understanding of IDS is correct, but the answer to toomuch’s question is A, not E. toomuch’s question is asking which procedure is NOT in accordance with the MPEP. Since the prior art reference was known more than 3 months ago, an IDS cannot be filed in the current application, and payment of a fee along with the statement would not be proper in this case (answer A). A continuation app or RCE must be filed along with the IDS before payment of the issuance fee or if the issuance is paid, petition the application from being issued and file a RCE or continuing application with an IDS, making B, C, D, and E all correct procedures under the MPEP.