Interim Practice of Mailing a
                         Notice of Publication Fee Due
                     Separate From the Notice of Allowance


   The United States Patent and Trademark Office (USPTO) has
indicated that if an application is subject to publication under 37 CFR
1.211, the Notice of Allowance will require both the issue fee and the
publication fee. See 37 CFR 1.211(e). The USPTO plans to
modify the Notice of Allowance to require both the issue fee and any
required publication fee, but this will not be done until later in the
year. Until then, the USPTO will mail a separate Notice of Publication
Fee Due in any application that has been assigned a projected
publication date and which has been allowed. The Notice of Publication
Fee Due requires payment of the publication fee within three months of
the mail date of the Notice of Publication Fee Due.

   Once an application is placed in the publication queue, the
application will not be withdrawn from publication unless: (1) the
application is abandoned and the abandonment is recognized more than
four weeks before the projected publication date, (2) the application
is placed under Secrecy Order, or (3) the application should not
otherwise be published under 37 CFR 1.211. Since an application that
has been allowed may not necessarily issue as a patent (even if the
issue fee is paid), the USPTO will not withdraw an application from
publication due to the allowance of the application until the
application has issued as a patent. See Changes to
Implement Eighteen-Month Publication of Patent Applications, 65
Fed. Reg. 57023, 57035 (Sept. 20, 2000), 1239 Off.
Gaz. Pat. Office 63, 73 (Oct. 10, 2000) (final rule). This may
result in some applications being issued as patents and subsequently
being published as patent application publications. See
id., 1239 Off. Gaz. Pat. Office at 73.

   Therefore, if the USPTO mails a Notice of Publication Fee Due,
the applicant must pay the publication fee (currently $300) within
three (3) months of the mail date of the Notice of Publication Fee Due
to avoid abandonment of the application. If the USPTO does not publish
the application (e.g., because the patent issued with sufficient time
remaining to remove the application from the publication queue or
because the USPTO recognizes that the application should not be
published), applicant may request that the USPTO refund the publication
fee. However, in the situation where an applicant has paid the issue
fee many months before the projected publication date, the USPTO is
likely to issue the patent with sufficient time remaining to remove the
application from the eighteen-month publication queue, applicant should
consider paying the publication fee by an authorization to charge the
fee to a deposit account. In this situation, the USPTO will not charge
the publication fee if the patent issued with sufficient time remaining
to remove the application from the publication queue. Nevertheless, if
the USPTO mails a Notice of Publication Fee Due, the applicant must pay
the publication fee (or authorize it to be charged to a deposit
account) within three (3) months of the mail date of the Notice of
Publication Fee Due to avoid abandonment of the application. If the
patent issues and the application is not published, applicant need not
pay the publication fee if it is due after the patent issues.

   The USPTO has posted several questions and answers about
eighteen-month-month publication, and the Notice of Publication Fee Due
on the USPTO's Internet Web site. See
http://www.uspto.gov/web/offices/dcom/olia/aipa/infoexch.htm#C
for further information regarding the Notice of Publication Fee
Due.

   Questions concerning this notice should be directed to the
Customer Service Center, Office of Patent Publication, by telephone at
(703) 308-6789 or 1-888-786-0101, or by facsimile at (703) 305-5065.

July 5, 2001                                               STEPHEN G. KUNIN
                                                    Deputy Commissioner for
                                                  Patent Examination Policy