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1308    Withdrawal From Issue [R-08.2012]

37 C.F.R. 1.313   Withdrawal from issue.

  • (a) Applications may be withdrawn from issue for further action at the initiative of the Office or upon petition by the applicant. To request that the Office withdraw an application from issue, applicant must file a petition under this section including the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why withdrawal of the application from issue is necessary. A petition under this section is not required if a request for continued examination under § 1.114 is filed prior to payment of the issue fee. If the Office withdraws the application from issue, the Office will issue a new notice of allowance if the Office again allows the application.
  • (b) Once the issue fee has been paid, the Office will not withdraw the application from issue at its own initiative for any reason except:
    • (1) A mistake on the part of the Office;
    • (2) A violation of § 1.56 or illegality in the application;
    • (3) Unpatentability of one or more claims; or
    • (4) For interference.
  • (c) Once the issue fee has been paid, the application will not be withdrawn from issue upon petition by the applicant for any reason except:
    • (1) Unpatentability of one of more claims, which petition must be accompanied by an unequivocal statement that one or more claims are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable;
    • (2) Consideration of a request for continued examination in compliance with § 1.114; or
    • (3) Express abandonment of the application. Such express abandonment may be in favor of a continuing application.
  • (d) A petition under this section will not be effective to withdraw the application from issue unless it is actually received and granted by the appropriate officials before the date of issue. Withdrawal of an application from issue after payment of the issue fee may not be effective to avoid publication of application information.

I.   WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE APPLICANT

A.   Prior to the Payment of Issue Fee

If the applicant wishes to have an application withdrawn from issue, he or she must petition the Director under 37 CFR 1.313(a) or file a request for continued examination (RCE) under 37 CFR 1.114 with a submission and the fee set forth in 37 CFR 1.17(e). A submission may be an information disclosure statement (37 CFR 1.97 and 1.98) or an amendment. The RCE practice does not apply to utility or plant applications filed before June 8, 1995 and design applications. See MPEP § 706.07(h), subsections I, II and IX. If an applicant files a RCE (with the fee and a submission), the applicant need not pay the issue fee to avoid abandonment of the application. Applicants are cautioned against filing a RCE prior to payment of the issue fee and subsequently paying the issue fee (before the Office acts on the RCE) because doing so may result in issuance of a patent without consideration of the RCE (if the RCE is not matched with the application before the application is processed into a patent).

Petitions under 37 CFR 1.313(a) to have an application withdrawn from issue should be directed to the Technology Center (TC) Director to which the application is assigned (see MPEP § 1002.02(c)). Unless applicant receives a written communication from the Office that the application has been withdrawn from issue, the issue fee must be timely submitted to avoid abandonment.

Applicant may also file a continuing application on or before the day the issue fee is due and permit the parent application to become abandoned for failure to pay the issue fee (35 U.S.C. 151).

B.   After the Payment of Issue Fee

Once the issue fee is paid, withdrawal is permitted only for the reasons stated in 37 CFR 1.313(c). The status of the application at the time the petition is filed is determinative of whether the petition is considered under 37 CFR 1.313(a) or 37 CFR 1.313(c). Petitions under 37 CFR 1.313(c) to have an application withdrawn after payment of the issue fee should be directed to the Office of Petitions (see MPEP § 1002.02(b)).

In addition to the specific reasons identified in 37 CFR 1.313(c)(1)-(3) applicant should identify some specific and significant defect in the allowed application before the application will be withdrawn from issue. A petition under 37 CFR 1.313(c) based on the reason specified in 37 CFR 1.313(c)(2) can only be filed in utility or plant applications filed on or after June 8, 1995 because the request for continued examination (RCE) practice does not apply to these types of applications filed before June 8, 1995 and design applications. See MPEP § 706.07(h), subsections I and IX. Such a petition along with the petition fee set forth in 37 CFR 1.17(h) must include a request for continued examination in compliance with 37 CFR 1.114 (e.g., a submission and the fee set forth in 37 CFR 1.17(e)). The continued prosecution application (CPA) practice under 37 CFR 1.53(d) only applies to design applications. See MPEP § 201.06(d). To withdraw from issue a utility or plant application, an applicant may wish to file a petition under 37 CFR 1.313(c)(2) with a RCE or under 37 CFR 1.313(c)(3) for the express abandonment of the application in favor of a continuing application under 37 CFR 1.53(b), but not a CPA under 37 CFR 1.53(d).

Any petition filed under 37 CFR 1.313(c) to withdraw an application from issue after payment of the issue fee should be clearly marked “Petition under 37 CFR 1.313(c).” Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be:

  • (A) mailed to “Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450”;
  • (B) transmitted by facsimile to (571) 273-0025; or
  • (C) hand-carried to the Office of Petitions (see MPEP § 1730 for the location).

Applicants are strongly advised to transmit by facsimile or hand-carry the petition to the Office of Petitions to allow sufficient time to process the petition and if the petition can be granted, withdraw the application from issue. While a petition to withdraw an application from issue may be granted as late as one day prior to the patent issue date, to avoid publication and dissemination, the petition decision must be granted at least 3 weeks prior to the issue date.

The Office cannot ensure that any petition under 37 CFR 1.313(c) will be acted upon prior to the date of patent grant. See Filing of Continuing Applications, Amendments, or Petitions after Payment of Issue Fee, Notice, 1221 Off. Gaz. Pat. Office 14 (April 6, 1999). Since a RCE (unlike a CPA under 37 CFR 1.53(d)) is not any type of new application filing, the Office cannot grant a petition to convert an untimely RCE to a continuing application under 37 CFR 1.53(b). Therefore, applicants are strongly cautioned to file any desired RCE prior to payment of issue fee. In addition, applicants considering filing a RCE after payment of the issue fee are strongly cautioned to call the Office of Petitions to determine whether sufficient time remains before the patent issue date to consider (and grant) a petition under 37 CFR 1.313(c) and what steps are needed to ensure that a grantable petition under 37 CFR 1.313(c) is before an appropriate official in the Office of Petitions in sufficient time to grant the petition before the patent is issued.

If an application has been withdrawn from issue after the payment of the issue fee and the application is again found allowable, see MPEP § 1306 regarding request to reapply a previously paid issue fee toward the issue fee that is now due in the same application.

II.   WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE

The Director may withdraw an application from issue under 37 CFR 1.313 on his or her own initiative. See BlackLight Power Inc. v. Rogan, 295 F.3d 1269, 1273, 63 USPQ2d 1534, 1537 (Fed. Cir. 2002) (USPTO may withdraw a patent application from issuance after the issue fee has been paid.) andHarley v. Lehman, 981 F. Supp. 9, 12, 44 USPQ2d 1699, 1702 (D.D.C. 1997) (adoption of 37 CFR 1.313(b) permitting applications to be withdrawn from issue under certain narrow circumstances not directly covered by the statute was not unreasonable). 35 U.S.C. 151 provides that upon payment of the issue fee, “the patent shall issue.” Thus, an application cannot be withdrawn from issue after payment of the issue fee consistent with 35 U.S.C. 151 unless there has been a determination that at least one of the conditions specified at 37 CFR 1.313(b)(1) through (4) exist such that the applicant is no longer “entitled to a patent under the law” as provided in 35 U.S.C. 151. See BlackLight Power Inc. v. Rogan, 295 F.3d at 1273, 63 USPQ2d at 1537 (Fed. Cir. 2002) (USPTO is not required to make final determination of unpatentability before withdrawing an application from issue pursuant to 37 CFR 1.313(b)(3), which permits the Office to withdraw an application after payment of the issue fee on ground of “unpatentability of one or more claims.”);Harley v. Lehman, 981 F. Supp. at 11-12, 44 USPQ2d at 1701-02 (D.D.C. 1997)(Commissioner may adopt rules permitting applications to be withdrawn from issue after payment of the issue fee in situations in which the applicant is not entitled to a patent under the law); and see Sampson v. Dann, 466 F. Supp. 965, 973-74, 201 USPQ 15, 22 (D.D.C. 1978)(Commissioner not authorized to withdraw an application from issue after payment of the issue fee on an ad hoc basis, but only in situations which meet the conditions of 37 CFR 1.313(b)).

The authority to withdraw an application from issue at the initiative of the USPTO after payment of the issue fee under 37 CFR 1.313(b) has been delegated to TC Directors (see MPEP § 1002.02(c)). The Office of Petitions has also been delegated the authority to withdraw an application from issue after payment of the issue fee in those situations in which the request for withdrawal from issue is at the initiative of the USPTO by someone other than a TC Director (see MPEP § 1002.02(b)).

35 U.S.C. 151 and 37 CFR 1.313(b) do not authorize the USPTO to withdraw an application from issue after payment of the issue fee for any reason except:

  • (1) a mistake on the part of the Office:
  • (2) a violation of 37 CFR 1.56 or illegality in the application;
  • (3) unpatentability of one or more claims; or
  • (4) for interference.

See 37 CFR 1.313(b).

Examples of reasons that do not warrant withdrawing an application from issue after payment of the issue fee at the initiative of the Office are:

  • (A) to permit the examiner to consider an information disclosure statement;
  • (B) to permit the examiner to consider whether one or more claims are unpatentable; or
  • (C) to permit the applicant to file a continuing application (including a CPA).

An application may be removed from the Office of Patent Publication, without it being withdrawn from issue under 37 CFR 1.313(b), to permit the examiner to consider an information disclosure statement or whether one or more claims are unpatentable. Only if such consideration results in a determination that one or more claims are unpatentable does 37 CFR 1.313(b) authorize the application to be withdrawn from issue. If uncertainty exists as to whether prosecution will in fact be re-opened, the uncertainty must be resolved before the application is withdrawn from issue. If there is a question whether an application must be withdrawn from issue and no TC Director is available to decide whether withdrawal from issue is appropriate and to sign the withdrawal Notice, the application should be hand-carried to the Office of Petitions for decision on whether withdrawal from issue is appropriate and to effect the withdrawal.

Any notice withdrawing an application from issue after payment of the issue fee must specify which of the conditions set forth in 37 CFR 1.313(b)(1) through (4) exists and thus warrants withdrawal of the application from issue. Any petition under 37 CFR 1.181 to review the decision of a TC Director to withdraw an application from issue after payment of the issue fee will be decided by the Deputy Commissioner for Patent Examination Policy.

If an application has been withdrawn from issue after the payment of the issue fee and the application is again found allowable, see MPEP § 1306 regarding request to reapply a previously paid issue fee toward the issue fee that is now due in the same application.

  Procedure to be followed when an application is withdrawn from issue

The procedure set forth below is to be followed when a TC Director withdraws an application from issue. This processing is to be done in the Technology Center without the need to send the application to the Office of Patent Publication.

First, determine (via PALM) whether the issue fee has been paid, and whether the application has been assigned a patent number and issue date.

1.   Withdrawal From Issue Before Payment of Issue Fee

If the issue fee has not been paid and the deadline for payment has not expired:

  • (A) Prepare, date stamp, and mail a “Withdrawal from Issue” letter signed by the TC Director to the applicant to effectuate the withdrawal from issue, using form paragraph 10.01. A copy of the “Withdrawal from Issue” letter should be sent to the Office of Patent Publication.
  • (B) Change the status of the application to status code 066 (Previous Action Withdrawn - Awaiting Further Action). Enter the Withdrawal from Issue letter in the application file and make it of record on the application file contents.
  • (C) Stick an Issue Information Label (Form 2016) on the file wrapper over the filled-in boxes on the file wrapper that contain issue information. If the application is an Image File Wrapper (IFW) application, this step is not done; instead a new Issue Classification sheet will be completed if the application is subsequently allowed.
  • (D) Forward the application to the examiner for prompt appropriate action (e.g., reopen prosecution, initiate interference proceedings).

¶ 10.01    Withdrawal From Issue, Fee Not Paid

In re Application of [1]:Appl. No.: [2]:: WITHDRAWAL FROM ISSUEFiled: [3]: 37 CFR 1.313For: [4]:

The purpose of this communication is to inform you that the above identified application is being withdrawn from issue pursuant to 37 CFR 1.313.

The application is being withdrawn to permit reopening of prosecution. The reasons therefor will be communicated to you by the examiner.

U.S. Patent and Trademark Office records reveal that the issue fee and the publication fee have not been paid. If the issue fee and the publication fee have been submitted, the applicant may request a refund, or may request that the fee be credited to a deposit account. However, applicant may wait until the application is either again found allowable or held abandoned. If the application is allowed, upon receipt of a new Notice of Allowance and Fee(s) Due, applicant may request that the previously submitted issue fee and publication fee be applied toward payment of the issue fee and publication fee in the amount identified on the new Notice of Allowance and Fee(s) Due. If the application is abandoned, applicant may request either a refund or a credit to a specified Deposit Account.

The application is being forwarded to the examiner for action.

______________________

[5]

Director,

Technology Center [6]

[7]

Examiner Note:

  • 1. This letter is printed with the USPTO letterhead and must be signed by the TC Director.
  • 2. DO NOT use this form letter if the issue fee and publication fee have been paid.
  • 3. In bracket 7, insert the correspondence address of record.

2.   Withdrawal From Issue After Payment of Issue Fee

If the issue fee has been paid:

  • (A) Prepare, sign, date stamp, and mail a “Notice of Withdrawal From Issue under 37 CFR 1.313(b)” to the applicant indicating that the application has been withdrawn from issue (using one of the form letters WDR-TCB1, WDR-TCB2, WDR-TCB3, or WDR-TCB4).
  • (B) If the application has been assigned a patent number and issue date:
    • (1) Prepare a “Withdrawal from Issue of” memorandum using the form memorandum WDR-MEMO. E-mail the memorandum to the Director of the Office of Patent Publication and the persons copied on the memorandum to inform them that the application has been withdrawn from issue.
    • (2) The “Notice of Withdrawal From Issue under 37 CFR 1.313(b)” letter to applicant must be signed, date stamped, and mailed no later than the Monday before the issue date to be effective to withdraw the application from issue.
    • (3) Remove the patent number from the file wrapper.
  • (C) Change the status of the application to status code 066 (Previous Action Withdrawn - Awaiting Further Action) by using PALM transaction code 1040. Enter the “Notice of Withdrawal From Issue under 37 CFR 1.313(b)” and the “Withdrawal from Issue of” memorandum, if applicable, in the application file and make it of record on the application file contents.
  • (D) Stick an Issue Information Label (Form 2016) on the file wrapper over the filled-in boxes on the file wrapper that contain issue information. If the application is an IFW application, this step is not done; instead a new Issue Classification sheet will be completed if the application is subsequently allowed.
  • (E) Forward the application to the examiner for prompt appropriate action (e.g., reopen prosecution, initiate interference proceedings).

1308.01   Rejection After Allowance [R-08.2012]

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 and the issue fee that was previously paid). See MPEP § 1306 regarding request to reapply a previously paid issue fee toward the issue fee that is now due in the same application. If abandoned, applicant may request refund or credit to a deposit account.

1308.02   For Interference Purposes [R-08.2012]

It may be necessary to withdraw a case from issue for reasons connected with an interference. For the procedure to be followed, see MPEP Chapter 2300 .

1308.03   Quality Review Program for Examined Patent Applications [R-08.2012]

The Office of Patent Quality Assurance administers a program for reviewing the quality of the examination of patent applications. The general purpose of the program is to improve patent quality and increase the likelihood of patents being found to be valid.

The quality review is conducted by Review Quality Assurance Specialists on a randomly selected sample of allowed applications from each examiner. The sample is computer generated under the office-wide computer system (PALM), which selects a predetermined number of allowed applications from each examiner per year for review . A subsample of the selected allowed applications are both reviewed and independently searched by the reviewers. The only applications excluded from the sample are those in which there has been a decision by the Board of Patent Appeals and Interferences, or by a court.

The Review Quality Assurance Specialist independently reviews each sampled application assigned to his or her docket to determine whether any claims may be unpatentable. The Review Quality Assurance Specialist may consult with, discuss, or review an application with any other reviewer or professional in the examining corps, except the professional who acted on the application. The review will, with or without additional search, provide the examining corps personnel with information which will assist in improving the quality of issued applications. The program shall be used as an educational tool to aid in identifying problem areas in the examining Technology Centers (TCs).

Reviewed applications may be returned to the examining TCs for consideration of the reviewer’s question(s) as to adequacy of the search and/or patentability of a claim(s).

If, during the quality review process, it is determined that one or more claims of a reviewed application are unpatentable, the prosecution of the application will be reopened. The Office action should contain, as an opening, form paragraph 13.04.

¶ 13.04    Reopen Prosecution - After Notice of Allowance

Prosecution on the merits of this application is reopened on claim [1] considered unpatentable for the reasons indicated below:

[2]

Examiner Note:

  • 1. This paragraph should be used when a rejection is made on any previously allowed claim(s) which for one reason or another is considered unpatentable after the Notice of Allowance (PTOL-85) has been mailed.
  • 2. Make appropriate rejection(s) as in any other action.
  • 3. In bracket 1, identify claim(s) that are considered unpatentable.
  • 4. In bracket 2, state all appropriate rejections for each claim considered unpatentable.

If the issue fee has already been paid in the application, the application must be withdrawn from issue by the Office of Patent Publication, and the action should contain not only the above quoted paragraph, but also form paragraph 13.05.

¶ 13.05    Reopen Prosecution - Vacate Notice of Allowance

Applicant is advised that the Notice of Allowance mailed [1] is vacated. If the issue fee has already been paid, 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. If abandoned, applicant may request refund or credit to a specified Deposit Account.

Examiner Note:

  • 1. This form paragraph must be used when the prosecution is reopened after the mailing of the Notice of Allowance.
  • 2. In bracket 1, insert date of the Notice of Allowance.

Quality Assurance forms and papers are not to be included with Office actions, nor should such forms or papers be retained in the file of any reviewed application whether or not prosecution is to be reopened. The application record should not indicate that a review has been conducted by Quality Assurance.

Whenever an application has been returned to the TC under the Quality Assurance Program, the TC should promptly decide what action is to be taken in the application and inform the Office of Patent Quality Assurance of the nature of that action by use of the appropriate form. If prosecution is to be reopened or other corrective action taken, only the forms should be returned to the Office of Patent Quality Assurance initially, with the application being returned to the Office of Patent Quality Assurance when action is completed. In all other instances, both the application and the forms should be returned to the Office of Patent Quality Assurance.

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