1306 Issue Fee [R-01.2024]
The issue fee and any required publication fee are due 3 months from the date of the Notice of Allowance. The period for payment of the issue fee and any required publication fee is not extendable, see 37 CFR 1.311(a). 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. The amounts due under 35 U.S.C. 41(a) (i.e., the issue fee, but not the publication fee) are reduced by 60 per centum for small entities and 80 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, even when no additional fee is due. 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 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-01.2024]
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). See MPEP § 1306.03. 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 timely 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 and filed via (A) the USPTO patent electronic filing system; (B) facsimile transmittal to (571) 273-0025; or (C) hand-delivered to the Office of Petitions, see MPEP § 502, subsection (III)(H). Confirmation of receipt of the petition can be made by calling the Petitions Helpdesk. A petition under 37 CFR 1.314 that is not granted prior to issuance of the patent is not effective to withdraw an application from issue or to defer grant.
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-01.2024]
Patents issue shortly after the payment of the issue fee. As a result, applicants have a limited time, after the payment of the issue fee, to file continuing applications, Quick Path Information Disclosure Statements, or petitions under 37 CFR 1.313(c) to withdraw an application from issue. Therefore, the best practice is for applicants to file these submissions as early as possible. Preferably, continuing applications should be filed before the payment of the issue fee. See MPEP § 211.01(b), subsection I.
Effective April 18, 2023, the USPTO began issuing and publishing patent grants electronically via the USPTO patent electronic filing system . Patents are issued on a Tuesday shortly after the patent number is assigned. Issue Notifications are available electronically via the USPTO patent electronic filing system (Patent Center) after the payment of the issue fee, usually on the Wednesday or Thursday before the patent issues. For those applicants who participate in the e-Office action program, the USPTO emails notification of the Issue Notification to the applicant’s designated email address. For more information regarding the e-Office action program, see Electronic Office Action, 1342 Off. Gaz. Pat. Office 45 (June 2, 2009). For those who do not participate in the e-Office action program, the USPTO foresees the possibility that a patent may issue electronically before the applicant receives a mailed Issue Notification. The USPTO encourages applicants to use the e-Office action program to avoid this possibility. Alternatively, once an issue fee has been paid, the application should be diligently monitored for assignment of a patent number and issue date.
In order to minimize disruptions and delays in the publication process, filing of papers should be avoided when feasible 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).
