Deciding Office: Office of Petitions
This petition can be filed as an ePetition. However, an ePetition may not be filed to withdraw a design application from issue.
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 (A request for express abandonment may be in favor of a continuing application. The filing of a continuing application in the form of a continuing application in the form of a CPA under 37 CFR 1.53(d) in a design application inherently includes a request for express abandonment. See 37 CFR 1.53(d)(2)(v) ); 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 for code 1464/2464/3464 (Large Entity/Small Entity/Micro Entity) under the Patent Petition Fees.
How to file:
May be filed as an ePetition. However, an ePetition may not be filed to withdraw a design application from issue.
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:
- Patent Center 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 Office of Petitions on the 7th floor of the Madison West Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call the Office of Petitions at (571) 272-3282 for delivery assistance. Hand-carried papers will be accepted between the hours of 8:30 am to 3:45 pm.
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).
______________________________
The Federal Register is the authoritative source and should be consulted if a need arises to verify the authenticity of the language for any CFR citation. Because fee schedule changes may not be reflected in the most recent version of the MPEP, please consult the USPTO Fee Schedule to determine current fee amounts.