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If the applicant wishes to have an application withdrawn from issue, he or she must petition the Director under 37 CFR 1.313(a) or file a request for continued examination (RCE) under 37 CFR 1.114 with a submission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Petitions under 37 CFR 1.313(a) to have an application withdrawn from issue should be directed to the Technology Center (TC) Director to which the application is assigned (see MPEP § 1002.02(c)). Unless applicant receives a written communication from the Office that the application has been withdrawn from issue, the issue fee must be timely submitted to avoid abandonment.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

In May of 2012 the Office launched the Quick Path Information Disclosure Statement (QPIDS) Pilot Program. This program allows, under specific circumstances, for the submission of an IDS after payment of the issue fee but prior to patent grant. Information on the QPIDS Program can be found on the USPTO website www.uspto.gov/ patent/initiatives/quick-path-information- disclosure-statement-qpids.

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 Petitions under 37 CFR 1.313(c) to have an application withdrawn after payment of the issue fee should be directed to the Office of Petitions (see MPEP § 1002.02(b)).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 under 37 CFR 1.313(c)(2) 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).

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;
• (C) hand-carried to the Office of Petitions (see MPEP § 1730 for the location); or
• (D) filed via EFS-Web as an ePetition.

Applicants are strongly advised to use EFS-Web, 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.

Once a petition under 37 CFR 1.313(c)(1) or (c)(2) has been granted, the application will be withdrawn from issue, the applicant’s submission(s) will be entered, and the application forwarded to the examiner for consideration of the submission and further action. 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.) and Harley 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 or derivation.

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 Data Management, 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, see MPEP § 1309.02. 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 sent 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 Data Management.

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

A.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 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. This action will change the status of the application to status code 091 (Withdraw From Issue – Awaiting Action) and enter the Withdrawal from Issue letter in the application file and make it of record on the application file contents and forward the application to the examiner for prompt appropriate action (e.g., reopen prosecution, initiate interference proceedings).

B.Withdrawal From Issue After Payment of Issue Fee

If the issue fee has been paid:

• (A) Prepare a “Notice of Withdrawal From Issue under 37 CFR 1.313(b)” indicating that the application has been withdrawn from issue.
• (B) If the application has been assigned a patent number and issue date:
  • (1) Notify the Director of the Office of Data Management and the persons involved in prosecution of the application via email 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 entered into the IFW prior to the issue date to be effective to withdraw the application from issue.
  • (3) The Office of Data Management updates the application status to remove the patent issue data and place the application in status 95.
• (C) Mail and 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, which will update the application status code to change the status of the application to status code 066 (Previous Action Withdrawn – Awaiting Further Action) by using transaction code 1040.
• (D) Forward the application to the examiner for prompt appropriate action (e.g., reopen prosecution, initiate interference proceedings).

III. HANDLING OF APPLICATIONS THAT CONTAIN AN EXAMINER’S AMENDMENT

When an application is withdrawn from issue, either at the initiative of the applicant or by the Office, and the application contains an examiner’s amendment, the claims as amended by the examiner’s amendment are the claims subject to further examination.