| Issue: Fees, Notifications, Applicant Submissions |
Referenced Items (313, 314, 315, 316, 317, 318, 319, 320, 321, 322, 323) |
(322) Filing of Continuing Applications,
Amendments, or Petitions after Payment of Issue Fee
The Patent and Trademark Office (PTO) is changing its patent
publication process such that by July of 1999 the PTO will publish
utility patents within four weeks of payment of the issue fee. See
Patents to Issue More Quickly After Issue Fee Payment, 1220 Off Gaz.
Pat. Office 42 (March 9, 1999). This change will impact the timing of
the filing of continuing applications under 37 CFR 1.53(b). It will also
impact the PTO's ability to consider petitions to accept late priority
papers under 37 CFR 1.55(a), amendments filed under 37 CFR 1.312,
petitions to withdraw an application from issue under 37 CFR 1.313(b),
and petitions to issue a patent to the assignee under 37 CFR 3.81 (b)
(assignment filed after issue fee payment).
The PTO does not currently plan to include design and plant patents in
the new publication process, but the PTO envisions such patents also
being printed much more quickly later in the year.
Change to "Issue Notification" procedure: The PTO currently mails an
Issue Notification, which advises the applicant of the projected patent
number and issue date, approximately four weeks before an application is
expected to issue as a patent.
In order to improve the accuracy of the patent number and issue date
indicated on the Issue Notification under the new publication process, a
patent number and issue date will not be assigned to an application and
an Issue Notification will not be mailed until the issue fee has been
paid and processed by the PTO. For an application including formal
drawings, the PTO will usually process the issue fee about two weeks
after payment. Since the PTO will be publishing patents within four
weeks of payment of the issue fee under the new publication process, the
Issue Notification will be received by applicant less than two weeks
before the application is expected to issue as a patent.
Filing continuing applications: Since a continuing application (a
continuation, divisional, or continuation-in-part) may be filed anytime
before an application is patented or abandoned, applicants will often
wait for the Issue Notification before filing such a continuing
application. Therefore, the PTO strongly advises applicants not to wait
for receipt of an Issue Notification before filing any desired
continuing application. This is because applicants will now receive the
Issue Notification just shortly before the application will issue as
patent (when it may be too late to prepare and file a continuing
application). Applicants are reminded that: (1) the requirement that
there be copendency for an application to obtain any benefit of the
filing date of the prior application is a statutory requirement (35
U.S.C. 120) which the PTO cannot waive; and (2) the patent statute
contains no provisions for restoring a patented application (unlike an
abandoned application) to pending status.
The PTO specifically advises practitioners to be prepared to file any
desired application preferably no later than the date the issue fee is
paid, to avoid issuance of the application before the continuing
application is filed. Obviously, if the application is to be issued as a
patent, any continuing application must be filed under 37 CFR 1.53(b),
and not as a continued prosecution application (CPA) under 37 CFR
1.53(d).
Petitions and amendments submitted after payment of the issue fee: Since
the PTO anticipates that an application will issue as a patent
approximately four weeks after the date the issue fee is paid (assuming
there are no other outstanding requirements), there is little, if any,
time for consideration of amendments or petitions filed after payment of
the issue fee. Thus, the PTO encourages applicants to file any necessary
 Top of Notices (322) December 26, 2023 |
US PATENT AND TRADEMARK OFFICE |
1517 CNOG 1943 |
amendments, assignments, petitions or other papers well prior to the
date of issue fee payment, preferably shortly after the mailing of the
notice of allowance. Amendments, assignments, petitions or other papers
filed after mailing of the notice of allowance (except for petitions
under 37 CFR 1.313(b)) should be addressed to Box Issue Fee, Assistant
Commissioner for Patents, Washington, D.C. 20231. The PTO cannot ensure
that any paper filed after payment of the issue fee will reach the
appropriate PTO official for consideration before the date the
application issues as a patent.
Withdrawal from issue: In the event that it is necessary to file a
petition under 37 CFR 1.313 (b) to withdraw an application from issue
after payment of the issue fee, the PTO strongly recommends that the
petition be clearly marked "Petition under 37 CFR 1.313(b)" and be
either:
(1) Submitted by facsimile to (703) 308-6916; or
(2) Hand-carried to the Office of Petitions.
Otherwise, it is quite possible that the petition will not be brought
before the appropriate deciding official before the date the application
issues as a patent.
The most common petition under 37 CFR 1.313(b) is a petition under 37
CFR 1.313(b)(5) to withdraw an application from issue for abandonment in
favor of a continuing application to permit consideration of an
information disclosure statement (IDS) in the continuing application. In
this event, applicants are encouraged to file the petition under 37 CFR
1.313(b)(5) with a continued prosecution application (CPA) under 37 CFR
1.53 (d) by facsimile to (703) 308-6916. The petition need not be
accompanied by the IDS (if the size of the IDS makes its submission by
facsimile impracticable), but the petition should indicate that an IDS
will be filed in the CPA if an IDS does not accompany the petition under
37 CFR 1.313(b)(5).
Inquiries concerning this notice should be directed to the Office of
Petitions Staff at (703) 305-9282.
STEPHEN G. KUNIN
Deputy Assistant Commissioner
for Patent Policy and Projects
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