04 - Withdrawal from issue after payment of the issue fee

Deciding Office:  Office of Petitions

In general, these are the steps to follow for filing a petition for withdrawal from issue after payment of the issue fee:

  • A petition for withdrawal from issue after payment of the issue fee of an application must include: 

(1) identification of one of the following reasons

(a) unpatentability of one or more claims, which 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 claims or claims to be patentable;

(b) consideration of a request for continued examination in compliance with 37 CFR 1.114 (for a utility or plant application only): or 

(c) express abandonment of the application (such express abandonment may be in favor of a continuing application, but not a CPA under 37 CFR 1 .53(d)); and

(2) payment of the petition fee as set forth in 37 CFR  1.17(h).

Fees:

For the proper petition fee required for a petition for withdrawal from issue after payment of the issue fee, please consult the current USPTO fee schedule on the Fees and payment page for code 1464/2464/3464 (Large Entity/Small Entity/Micro Entity) under the Patent Petition Fees.

How to file:

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)."

The USPTO cannot ensure that any petition for withdrawal from issue after payment of the issue fee under 37 CFR 1.313(c) will be acted upon prior to the date of patent grant; therefore it is highly recommended that any urgent (i.e., where the issue date is imminent) petition for withdrawal from issue under 37 CFR 1.313(c), after payment of the issue fee, should be filed via:

  • EFS-Web (Web-based Electronic Filing System) accessible through the Electronic Business Center (EBC)
  • direct facsimile transmitted to the Office of Petitions via 571-273-0025;  or
  • direct hand carry to the Customer Service Window (located on the Ballenger Avenue side of the Randolph Building),
    401 Dulany Street, Alexandria, VA 22314); 
  • and immediately after an urgent petition for withdrawal from issue has been filed, the Office of Petitions should be alerted with a follow-up telephone call via 571-272-3282.

For the relevant patent laws and rules applicable to withdrawal from issue after payment of the issue fee, please see:  37 CFR 1.17, Patent application and reexamination processing fees;

  • 37 CFR 1.313, Withdrawal from issue; and
  • MPEP § 1308, Withdrawal from issue.

Forms: 

No form available.  Submit a signed request that includes information listed in Requirements of a petition.

For further assistance, please contact the Petitions Help Desk between 8:30 AM - 5 PM (EDT).