1109 Withdrawal of SIR Request [R-5]
37 C.F.R. 1.296 Withdrawal of request for publication of statutory invention registration.** >
A request for a statutory invention registration, which has been filed, may be withdrawn prior to the date of the notice of the intent to publish a statutory invention registration issued pursuant to § 1.294(c) by filing a request to withdraw the request for publication of a statutory invention registration. The request to withdraw may also include a request for a refund of any amount paid in excess of the application filing fee and a handling fee of $130.00 which will be retained. Any request to withdraw the request for publication of a statutory invention registration filed on or after the date of the notice of intent to publish issued pursuant to § 1.294(c) must be in the form of a petition accompanied by the fee set forth in § 1.17(g). <
If a request to withdraw a SIR is filed in a nonprovisional application which contains a SIR request before a Notice of Intent to Publish Statutory Invention Registration has been mailed, the examiner handling the SIR should ascertain whether any outstanding rejection under 35 U.S.C. 112 is present in the application. If so, the examiner should require a timely reply to the rejection using a Response to Request to Withdraw Request for a Statutory Invention Registration, form SIR-K. After a timely reply to the rejection is received, the request to withdraw the SIR request will ordinarily be granted and the application forwarded for further examination to whichever art unit would ordinarily examine the art area in which the application is classifiable.
Any request to withdraw a SIR filed after the mailing date of the Notice of Intent to Publish Statutory Invention Registration must be in the form of a petition ** accompanied by the fee set forth in 37 CFR 1.17(g). The TC Director responsible for the art unit handling the SIR will inform the applicant of the decision on the petition via a form SIR-K or Response to Petition under 37 CFR 1.295(a), form SIR-H.
Note that an original SIR application can be abandoned in favor of a continuing application for a patent, claiming the filing date of the earlier filed application, by filing an express abandonment of the original application and a timely request or petition to withdraw the request for a SIR prior to publication of the SIR.