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1303    Notice of Allowance [R-08.2012]

37 C.F.R. 1.311   Notice of Allowance.

  • (a) If, on examination, it appears that the applicant is entitled to a patent under the law, a notice of allowance will be sent to the applicant at the correspondence address indicated in § 1.33. The notice of allowance shall specify a sum constituting the issue fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. The sum specified in the notice of allowance may also include the publication fee, in which case the issue fee and publication fee (§ 1.211(e)) must both be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable.
  • (b) An authorization to charge the issue fee or other post-allowance fees set forth in § 1.18 to a deposit account may be filed in an individual application only after mailing of the notice of allowance. The submission of either of the following after the mailing of a notice of allowance will operate as a request to charge the correct issue fee or any publication fee due to any deposit account identified in a previously filed authorization to charge such fees:
    • (1) An incorrect issue fee or publication fee; or
    • (2) A fee transmittal form (or letter) for payment of issue fee or publication fee.

A Notice of Allowance is prepared and mailed, and the mailing date appearing thereon is recorded on the paper or image file wrapper table of contents.

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 Notice of Allowance and Issue Fee Due form (PTOL-85) has been revised and the revised form is entitled “Notice of Allowance and Fee(s) Due.” Revision of the form was necessary to include the amount of any required publication fee, as provided in 37 CFR 1.211(e) and 1.311, and to more clearly communicate the amount of any patent term extension or adjustment earned under 35 U.S.C. 154(b). As revised, the PTOL-85 form is three pages long, with all three pages being mailed to the applicant and a duplicate being retained in the application file. The first two pages of the revised form include an indication that the publication fee is due, if the application was subject to publication and the publication fee has not already been paid. Part B of the revised form (PTOL-85B) must be returned to the Office with the payment of the issue fee. Applicants are reminded to transmit an extra copy of the PTOL-85B when payment of the issue fee is by way of authorization to debit a Deposit Account. See MPEP § 509.01.

There are different versions of page three of the revised PTOL-85 form, depending upon the filing date of the application and the application type:

  • (A) For applications filed before June 8, 1995, page three will state that “This application was filed prior to June 8, 1995, thus no Patent Term Extension or Adjustment applies.” Utility and plant applications filed before June 8, 1995 are eligible for a 17 year term and thus are not eligible for patent term extension or adjustment under 35 U.S.C. 154(b).
  • (B) For applications filed on or after June 8, 1995 and before May 29, 2000, page three will state that “The Patent Term Extension is _ day(s). Any patent to issue from the above identified application will include an indication of the _ extension on the front page. If a Continued Prosecution Application (CPA) was filed in the above identified application, the filing date that determines Patent Term Extension is the filing date of the most recent CPA.” Utility and plant applications filed on or after June 8, 1995 and before May 29, 2000 may be eligible for patent term extension. See 35 U.S.C. 154(b), effective June 8, 1995, and 37 CFR 1.701.
  • (C) For applications filed on or after May 29, 2000, page three will state that “The Patent Term Adjustment to date is _ day(s). If the issue fee is paid on a date that is three months after the mailing date of this notice, and the patent issues on the Tuesday before the date that is 28 weeks (six and a half months) after the mailing date of this notice, the Patent Term Adjustment will be _ day(s). If a Continued Prosecution Application (CPA) was filed in the above-identified application, the filing date that determines Patent Term Adjustment is the filing date of the most recent CPA.” Utility and plant applications filed on or after May 29, 2000 may be eligible for patent term adjustment. See 35 U.S.C. 154(b), effective May 29, 2000, and 37 CFR 1.702 - 1.705, especially 37 CFR 1.705(a).
  • (D) For reissue applications, page three will state that “A reissue patent is for ‘the unexpired part of the term of the original patent.’ See 35 U.S.C. 251. Accordingly, the above-identified reissue application is not eligible for Patent Term Extension or Adjustment under 35 U.S.C. 154(b).”
  • (E) For design applications, page three will state that “Design patents have a term measured from the issue date of the patent and the term remains the same length regardless of the time that the application for the design patent was pending. Since the above-identified application is an application for a design patent, the patent is not eligible for Patent Term Extension or Adjustment under 35 U.S.C. 154(b).”

For more information about eighteen month publication, publication fees, and patent term adjustment, visit the USPTO Internet web site at www.uspto.gov.

Notice of Allowance and Fee(s) Due (PTOL-85)
Part B - Fee(s) Transmittal (PTOL-85)
Determination of Patent Term Extension or Adjustment under 35 U.S.C. 154(b) (Form PTOL-85 - page 3)
Determination of Patent Term Extension or Adjustment under 35 U.S.C. 154(b) (Application filed after June 7, 1995 but prior to May 29, 2000) (Form PTOL-85 - page 3)
Determination of Patent Term Extension or Adjustment under 35 U.S.C. 154(b) (Application filed on or after May 29, 2000) (Form PTOL-85 - page 3)
Determination of Patent Term Extension or Adjustment under 35 U.S.C. 154(b) (Form PTOL-85 - page 3)
Determination of Patent Term Extension or Adjustment under 35 U.S.C. 154(b) (Form PTOL-85 - page 3) (Design patents)

1303.01   Amendment Received After Allowance [R-08.2012]

If the amendment is filed under 37 CFR 1.312, see MPEP § 714.15 to § 714.16(e). If the amendment contains claims copied from a patent, see MPEP Chapter 2300. Any submissions of replacement drawings filed after allowance should be forwarded to the Office of Patent Publication.

Reference to an Issue Batch Number is no longer necessary because the Office no longer stores and tracks applications according to issue batches.

Any paper filed after receiving the Issue Notification should include the indicated patent number, unless the application has been withdrawn from issue.

1303.02   Undelivered [R-08.2012]

In case a Notice of Allowance is returned, and a new notice is sent (see MPEP § 707.13), the date of sending the notice must be changed in the file to agree with the date of such remailing. If the application is an Image File Wrapper (IFW) application, the original document, a copy of the returned document with any markings, and the remailed document should be retained in the application so that the file history is clear.

1303.03   Not Withheld Due to Death of Inventor [R-08.2012]

The Notice of Allowance will not be withheld due to death of the inventor if the executor or administrator has not intervened. See MPEP § 409.01(f).

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Last Modified: 03/27/2014 10:10:32