Once the decision to allow an application to patent has been made by the PTO, a Notice of Allowance will be sent out to the applicant. The applicant will then have three months to pay the issue fee. Once the issue fee is paid, the applicant will then be sent a copy of the official patent papers. This chapter discusses the details of these proceedings and the variations that may occur such as; withdrawing from issue, the term lengths of various patents and what happens if the issue fee is not paid on time.

Expect a few questions pertaining to the allowance and issue of patent applications. Pay extra attention to the section on withdrawing from issue and how to handle things if the issue fee isn't paid on time.

1301 Substantially allowable application, special
when an application is in condition for allowance, the application will be considered special
prompt action will be taken to require the correction of formal matters

1302 Final review and preparation for issue
A Notice ofAllowability is sent to the applicant when the application has been allowed and is expected to patent. This is the time for the applicant to celebrate.

an interference search will be performed once an application is ready for allowance:
the examiner checks to see if there are any interfering applications before allowing the application to issue

once allowed, one claim from the application will be selected for issue in Official Gazette:
the broadest claim is selected

Minor corrections:
all final corrections must be made before the patent issues
some slight corrections may be made by the Examiner to formalize the application (i.e., spelling and grammatical errors)

37 C.F.R. 1.121(g) permits the Office to make amendments to the specification, including claims, by examiner's amendments without paragraph/section/claim replacement in the interest of expediting prosecution

when the original drawings cannot be located and the application is otherwise in condition for allowance, a replacement drawing should be obtained from the PTO's records of the application as originally filed

the amendment or cancellation of claims by a formal examiner's amendment is permitted when passing an application to issue where these changes have been authorized by the applicant (or his attorney or agent) in a telephone or personal interview

substantive changes made to the abstract or the specification must be made with the applicant's approval

when a case is otherwise in condition for allowance, the examiner may cancel an obviously nonstatutory claim such as one to "a device substantially as shown and described"

Reasons for allowing the application:

§ 1.104 Nature of examination.
(e) Reasons for allowance. If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. The reasons shall be incorporated into an Office action rejecting other claims of the application or patent under reexamination or be the subject of a separate communication to the applicant or patent owner. The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication.

the examiner's statement of reasons for allowance should not create an estoppel, only applicant's statements should create an estoppel
the failure of the applicant to comment on the examiner's statement of reasons for allowance should not be treated as acquiescence to the examiner's statement
the examiner will make a statement supplying the reasons why the application was allowed if it is not obvious from the prosecution:
this facilitates the evaluation of the scope and strength of a patent by the patentee and the public and may help avoid or simplify any future litigation of a patent
the failure of an applicant to comment on damaging reasons for allowance would give rise to an implication that the applicant or patent owner agrees with or acquiesces in the reasoning of the examiner
that the examiner does not respond to a statement by the applicant commenting on reasons for allowance does not mean that the examiner agrees with or acquiesces in the reasoning of such statement

1303 Notice of allowance

§ 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 threemonth period is not extendable.
(b)An authorization to charge the issue fee or other postallowance 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 to any deposit account identified in a previously filed authorization to charge fees:
(1)An incorrect issue fee; or
(2)A completed Officeprovided issue fee transmittal form (where no issue fee has been submitted).

reference to an issue batch number is no longer necessary since the Office no longer stores and tracks applications according to issue batches

in the case where a Notice of Allowance is returned and a new notice is sent, the date of sending the notice must be changed in the file to agree with the date of such remailing

the applicant must amend, assign, or petition an application within one month after the mailing of the Notice of Allowance

1304 Amendments after D10 notice
applications under "secrecy order" will not be issued, a D10 Notice instead of a Notice of Allowance will be sent to the applicant
"secrecy orders" may be withdrawn after a period of time and a normal allowance will proceed

1306 Issue fee
In a sense, this is the final hurdle for an applicant. After receiving the coveted Notice of Allowance, the applicant must pay the fee required for the application to issue. Once this fee is paid, the applicant will receive letters stating he or she has been granted a bona . fide patent.

Issuance of a patent:
the issue fee and any required publication fee are due 3 months from the date of the Notice of Allowance

§ 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.

the patent will issue once the issue fee is paid:
utility and reissue patents are issued within about four weeks after the issue fee is paid

the issuance of a patent can usually be deferred for one month after the Notice of Allowance is sent for:
negotiation of licenses
extra time for filing in foreign countries
collection of data for filing a CIP application
simultaneous issuance of related applications

in order to defer the issuance of patent, the issue fee must be paid and sent in along with a petition:
it is too late to defer issuance if the application has already received a patent number and issue date
simultaneous issuance of patents is allowed if they are all near the same stage of processing

applicants may fax post allowance correspondence to the correspondence branch in the Office of Patent Publications

Failure to pay issue fee:

§ 1.316 Application abandoned for failure to pay issue fee.
If the issue fee is not paid within three months from the date of the notice of allowance, the application will be regarded as abandoned. Such an abandoned application will not be considered as pending before the Patent and Trademark Office.

the time period set for the payment of the issue fee is statutory and cannot be extended
however, the fee can sometimes be paid late (the application will have become abandoned during this time period)
the applicant will have to follow the rules for reviving an abandoned application

Example:
in a situation where a Notice of Allowance setting a three month statutory period for reply was dated and mailed on 4/4/00 to the applicant:
the fee will be late if the:
the issue fee is filed in the PTO on Wed, 10/04/00 and is accompanied by a petition to the Commissioner for a 3 month extension of time as well as a late payment fee
the fee will not be late if the:
issue fee is filed in the PTO on Mon, 7/03/00
issue fee is filed in the PTO on Wed, 7/05/00, since the PTO was closed for a holiday on the 4th of July
issue fee is received Thurs, 7/06/00, but was accompanied by a Certificate of mailing dated Mon, 7/03/00

Making amendments after allowance:

§ 1.312 Amendments after allowance.
No amendment may be made as a matter of right in an application after the mailing of the notice of allowance. Any amendment filed pursuant to this section must be filed before or with the payment of the issue fee, and may be entered on the recommendation of the primary examiner, approved by the Commissioner, without withdrawing the application from issue.

any amendment filed pursuant to 37 C.F.R. 1.312 must be filed before or with the payment of the issue fee
it may or may not be extended

1308 Withdrawal From issue

§ 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.

Petition to withdraw from issue:
the petition to withdrawal from issue must:
show a good and sufficient reason for withdrawing the application
include a withdrawal fee
the Office will not ensure that any petition to withdraw an application from issue, filed after the payment of the issue fee, will be acted upon prior to the scheduled date of the patent grant

after the issue fee has been paid, the only valid reasons for withdrawing an application include:
a mistake by the Office
a violation of the duty to disclose, or a mistake in the application
a specific defect in the application
that the claims are not patentable
for an interference
for abandonment of the application in order to permit consideration of an information disclosure statement in a continuing application
used where new material in relation to patentability has been discovered

if an applicant wants to withdrawal the application, he or she must:
petition the Commissioner
if before the payment of the issue fee; the Group Director will handle it
if after the payment of the issue fee; the Office of Petitions will handle it

Withdrawing by filing a continuing application:
it is possible to withdraw the application from issue and then file a continuing application

the filing of a request for a continued examination (with submission and fee) in an allowed application after the issue fee has been paid without a petition under 37 C.F.R. 1.313 to withdraw an application from issue will not operate to avoid issuance of the application as a patent
a petition must be included if filed after the issue fee has been paid

a petition under 37 C.F.R. 1.313 is not required if a request for continued examination (RCE) is filed prior to the payment of the issue fee

Rejection after allowance:
if a claim was allowed it can only be rejected by the primary examiner, an example includes:
when a new reference pertaining to patentability is found
if the issue fee has already been paid
the applicant can then request a refund
in this situation the application will be withdrawn from issue and the will be prosecution reopened once again

1309 Issue of patent
the recording of the assignment or submission of the assignment of recordation is required for a patent to issue to an assignee

special handling (speeding up) of the issuance of a patent will occur only if:
the Commissioner allows it
an allowed case has an effective filing date of more than 5 years
there is an allowed reissue application
there is an effective filing date earlier than that required for declaring an interference with a copending application claiming the same subject matter
the allowed application of a specific party is involved in a terminated interference

printing the names of the practitioners:
whomever submits the issue fee decides if registered patent attorneys or agents will be listed there may be up to 3 listed on a single patent

Patent terms and extensions:

35 U.S.C. 154 Contents and term of patent; provisional rights.
(2) TERM.Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was bled in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, or 365(c) of this title, from the date on which the earliest such application was filed.

Patent terms:
begin on the date the patent issues
end 20 years from the date the patent application was filed for utility and plant patents
for patents after June 8, 1995 (prior to this date it was 17 years)
end 14 years from the application filing date for design patents
the term of a patent resulting from an application that was filed before 6/8/95 (which is the date that is six months after the date of the enactment of the Uraguay Round Agreements Act) shall be the greater of the following; a 20 year term or 17 years from the grant:
the 20 year term is the greater term
all patents that will issue on an application that is filed before 6/8/95 will automatically have a term that is the greater of the 20 year term, which begins on the date the patent issues and ends 20 years from earliest effective U.S. filing date, or 17 years from patent grant

Term extensions:
term extensions are never more than five years and occur only in cases where:
an interference delays the application
a secrecy order was placed on the material
an appellate review occurred
the patent may not be subject to an originally required terminal disclosure
a patent term initiated after June 8th, 1995 may be extended for up to 5 years due to a successful appeal:
this extension period may be reduced when:
the appellant did not act with due diligence
due diligence means "given forth an effort"
remember, if the applicant just sat around and thought about
reducing his or her invention to practice, diligence was lacking
the date of filing an appeal is within a three year window from the date of filing the application
it is not always necessary to claim priority
an applicant may not want to do so in order to increase the term of his/her patent

Terms for applications filed after the parent:
continued prosecution applications:
will have the serial number of the parent application will not have the same filing date as the parent application
reissue patents:
the term is the unexpired part of the term of the original patent
Late payment of issue fee:
37 C.F.R. 1.317 comes into effect only when the amount paid is insufficient because there was a price increase when the fee was received by the PTO.

§ 1.317 Lapsed patents; delayed payment of balance of issue fee.
If the issue fee paid is the amount specified in the notice of allowance, but a higher amount is required at the time the issue fee is paid, any remaining balance of the issue fee is to be paid within three months from the date of notice thereof and, if not paid, the patent will lapse at the termination of the threemonth period.

37 C.F.R. 1.137 discusses paying an issue fee late:
paying an issue fee late follows the same procedure as that for reviving abandoned applications
the issue fee is basically abandoned and the applicant will have to revive it once the issue fee is paid
the applicant must prove unavoidable or unintentional delay