Comments on: Q) Rejection After Allowance

By: fengyuwuzu

fengyuwuzu — Mon, 10 Oct 2011 17:59:47 +0000

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(D) Al should file a petition to have the application withdrawn from issuance, citing the finding of additional material prior art as the reason for withdrawal.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).

By: FlashofG

FlashofG — Fri, 22 Jul 2011 21:24:06 +0000

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.

By: Overworkked

Overworkked — Thu, 28 Apr 2011 18:44:53 +0000

Oct 2003 am Repeat Variant on 4/27/2011.

Submitting IDS alone is no bueno to get the reference considered.

By: toomuch23

toomuch23 — Tue, 02 Nov 2010 23:46:39 +0000

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).

By: Keith

Keith — Sat, 14 Nov 2009 18:39:35 +0000

So my guess is that PTO will consider the reference w/o having to pay the fee

By: Keith

Keith — Sat, 14 Nov 2009 18:09:01 +0000

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

By: Art Williams

Art Williams — Tue, 06 Oct 2009 23:26:09 +0000

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

By: matt30

matt30 — Fri, 08 May 2009 14:01:37 +0000

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.

By: patentbar

patentbar — Wed, 20 Aug 2008 00:12:13 +0000

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.”

By: patentbar

patentbar — Tue, 19 Aug 2008 22:26:11 +0000

Thanks for the clarification.