1306 Issue Fee [R-07.2015]
The issue fee and any required publication fee are due 3 months from the date of the Notice of Allowance. The amount of the issue fee and any required publication fee are shown on the Notice of Allowance. The Notice of Allowance will also reflect any issue fee previously paid in the application. The issue fee due does not reflect a credit for any previously paid issue fee in the application. If an issue fee has previously been paid in the application as reflected in the Notice of Allowance, the return of Part B (Fee(s) Transmittal form) will be considered a request to reapply the previously paid issue fee toward the issue fee that is now due. For example, if the application was allowed and the issue fee paid, but applicant withdrew the application from issue and filed a Request for Continued Examination (RCE) and the application was later allowed, the Notice of Allowance will reflect an issue fee amount that is due and the issue fee that was previously paid. Under the changes to 35 U.S.C. 151 in the Patent Law Treaties Implementation Act (PLTIA) (Public Law 112-211), the sum specified in the notice of allowance will constitute the issue fee and any required publication fee, and the Office will proceed to issue a patent when the applicant pays the sum specified in the notice of allowance, regardless of the issue fee and/or publication fee in effect on the date the sum specified in the notice of allowance is paid. Accordingly, applicants are no longer required to pay any balance of the issue fee when there is a fee increase. The amounts due under 35 U.S.C. 41(a) (i.e., the issue fee, but not the publication fee) are reduced by 50 per centum for small entities and 75 per centum for micro entities.
Applicants and their attorneys or agents are urged to use the Fee(s) Transmittal form (PTOL-85B) provided with the Notice of Allowance when submitting their payments. Unless otherwise directed, all post allowance correspondence should be addressed “Mail Stop Issue Fee.”
Where it is clear that an applicant actually intends to pay the issue fee and required publication fee, but the proper fee payment is not made, for example, an incorrect issue fee amount is supplied, or a PTOL-85B Fee(s) Transmittal form is filed without payment of the issue fee, a general authorization to pay fees or a specific authorization to pay the issue fee, submitted prior to the mailing of a notice of allowance, will be allowed to act as payment of the correct issue fee. 37 CFR 1.311(b). In addition, where the deposit account information is added to the Fee(s) Transmittal form (PTOL-85B), but the check box authorizing that the deposit account be charged the issue fee is not checked, the deposit account will still be charged the required issue fee and any required publication fee.
Technology Center personnel should forward all post allowance correspondence to the Office of Patent Application Processing (OPAP). The papers received by the OPAP will be scanned and matched with the appropriate application and the entire application will be forwarded to the appropriate Technology Center for processing.
The payment of the issue fee due may be simplified by using a U.S. Patent and Trademark Office Deposit Account or a credit card payment with form PTO-2038 for such a fee. See MPEP § 509. However, any such payment must be specifically authorized by reference to the “issue fee” or “fees due under 37 CFR 1.18.”
The fee(s) due will be accepted from the applicant, assignee, or a registered attorney or agent, either of record or under 37 CFR 1.34.
The Director has no authority to extend the time for paying the issue fee. Intentional failure to pay the issue fee within the 3 months permitted by 35 U.S.C. 151 does not amount to unintentional delay in making payment.
1306.01 Deferring Issuance of a Patent [R-07.2015]
37 CFR 1.314 Issuance of patent.
If applicant timely pays the issue fee, the Office will issue the patent in regular course unless the application is withdrawn from issue (§ 1.313) or the Office defers issuance of the patent. To request that the Office defer issuance of a patent, 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 it is necessary to defer issuance of the patent.
There is a public policy that the patent will issue in regular course once the issue fee is timely paid. 37 CFR 1.314. It has been the policy of the U.S. Patent and Trademark Office to defer issuance of a patent, upon request, for a period of up to 1 month only, in the absence of extraordinary circumstances or requirement of the regulations (e.g., 37 CFR 1.177) which would dictate a longer period. Situations like negotiation of licenses, time for filing in foreign countries, collection of data for filing a continuation-in-part application, or a desire for simultaneous issuance of related applications are not considered to amount to extraordinary circumstances.
A petition to defer issuance of a patent is not appropriate until the issue fee is paid. Issuance of a patent cannot be deferred after an allowed application receives a patent number and issue date unless the application is withdrawn from issue under 37 CFR 1.313(b) or (c). The petition to defer is considered at the time the petition is correlated with the application file before the appropriate deciding official (MPEP § 1002.02(b)). In order to facilitate consideration of a petition for deferment of issue, the petition should be filed with the Fee(s) Transmittal form (PTOL-85B) and clearly labeled as a Petition to Defer Issue; Attention: Office of Petitions.
1306.02 Simultaneous Issuance of Patents [R-08.2012]
Where applications have been allowed and a Notice of Allowance and Fee(s) Due (PTOL-85) has been mailed in each application, a request for simultaneous issuance will be granted. Unless all the applications have reached this stage of processing, or a specific requirement of the regulations is involved (e.g., 37 CFR 1.177), a request for simultaneous issuance generally will not be granted.
Applicants and their attorneys who desire the simultaneous issue of allowed applications must submit the request to: Mail Stop Issue Fee, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, Attention: Office of Patent Publication.
The request must contain the following information about each allowed application for which simultaneous issue is requested:
- (A) Application number,
- (B) Filing date,
- (C) Name(s) of inventor(s),
- (D) Title of invention, and
- (E) Date of allowance.
Separate copies of the request must accompany each Fee(s) Transmittal (PTOL-85B).
1306.03 Practice After Payment of Issue Fee; Receipt of Issue Notification [R-07.2015]
Under the current publication process, utility and reissue patents are issued within about four weeks after the issue fee and any required publication fee are received in the Office. A patent number and issue date will be assigned to an application and an Issue Notification will be mailed after the issue fee has been paid and processed by the USPTO. Because the Issue Notification may be mailed less than two weeks before the application is expected to issue as a patent, applicants are advised to file any continuing application before receiving the Issue Notification to avoid loss of copendency.
Since the Office cannot ensure that any paper filed after payment of the issue fee will reach the appropriate USPTO official before the date the application issues as a patent, applicants are also encouraged to file any necessary amendments, assignments, petitions, information disclosure statements, or other papers prior to the date of issue fee payment, preferably within one month after the Notice of Allowance has been mailed. See MPEP § 502 for post allowance correspondence.
In order to minimize disruptions and delays in the printing process, the application is not available after the Notice of Allowance has been mailed unless necessary for “Query Printer Waiting”, amendments submitted under 37 CFR 1.312, information disclosure statements, and petitions. Corrected filing receipts will not be mailed after the date of mailing of the Notice of Allowance unless special circumstances exist. Duplicate filing of papers is not recommended (and may be treated as a failure to engage in reasonable efforts to conclude prosecution pursuant to 37 CFR 1.704(c)(10)). The same correspondence should not be mailed and faxed to the Office unless the duplication has been specifically required by the Office. See MPEP § 719.01(a).