17.3 Allowance, Issue Fee & Withdrawal from Issue

17.3 Allowance, Issue Fee & Withdrawal from Issue

Notice of allowance and issue fee

When the examiner concludes that an application is in condition for allowance, the USPTO sends a notice of allowance identifying the allowed claims and the issue fee. The issue fee must be paid within three months from the mailing date of the notice, and that period is not extendable under Rule 1.136. Failure to pay results in abandonment, subject only to an available revival procedure on the required showing.

The notice can also require publication-fee handling or corrected bibliographic information. The applicant should review the allowed claims, inventorship, title, priority data, entity status, assignments, and drawings promptly. Payment is not a substitute for correcting a known defect, and paying at an improperly reduced entity rate can create a separate problem.

Amendments after allowance

Rule 1.312 governs amendments filed after allowance. Entry is not a matter of right. The Office is more likely to enter an amendment that corrects form, cancels a claim, adopts an examiner’s amendment, or places the record in better condition without requiring substantial additional search or examination. A change that materially broadens or rewrites the invention may require withdrawal from issue and renewed examination, an RCE where available, or a continuation.

An examiner’s amendment records changes authorized by the applicant and can place the case in condition for allowance. Authorization must come from a person entitled to act, and the substance should be accurately recorded. Silence is not blanket authority to rewrite claims.

Information discovered after allowance still implicates Rule 56. The applicant must assess the authorized vehicle rather than assume an ordinary IDS will automatically be considered. Depending on timing and procedural availability, the applicant may seek withdrawal from issue with an RCE and compliant submission, petition under an applicable procedure, or allow issuance and consider a post-grant correction route. The correct answer depends on whether the information raises a material patentability issue and whether prosecution can lawfully be reopened.

Withdrawal from issue under Rule 1.313

Before the issue date, the Office may withdraw an application from issue on its own initiative for a mistake, a violation of duty, unpatentability, or another reason recognized by Rule 1.313. The applicant may petition for withdrawal for limited purposes, including filing an RCE with the required submission and fee, correcting inventorship, or addressing an express Office requirement. The petition should be filed early enough for action; merely submitting it does not stop issuance.

After the issue fee is paid, an applicant cannot use withdrawal as a routine extension of prosecution. If the patent has already issued, Rule 1.313 is no longer available; reissue, certificate practice, supplemental examination, or reexamination may be relevant depending on the defect.

Issue date and continuation copendency

A patent generally issues on the date printed on the patent. For a continuation, divisional, or continuation-in-part to claim benefit under § 120, it must be filed before termination of proceedings in the parent. Current practice treats a continuation filed on the parent’s issue date as copending because the parent remains pending through the beginning of that day; prudent practice files earlier and confirms the electronic acknowledgment.

Once a parent has issued without a timely continuing application, Rule 1.136 cannot recreate copendency. A petition to revive the parent may work only if the statutory and regulatory conditions for revival are independently satisfied; it is not a general continuation-saving device.

Patent grant and post-allowance responsibility

The grant confers enforceable rights subject to the patent’s claims and statutory conditions. The practitioner should report the grant, docket maintenance fees for utility and plant patents, record ownership changes as appropriate, and preserve the file. Design patents do not carry maintenance fees. The duty to keep clients informed continues through the agreed end of representation.

Timeline

The exam’s most common trap is treating allowance as the end of all procedural duties. It is a transition with a strict payment date, limited amendment practice, and a rapidly closing opportunity to correct the record or preserve a continuation.