MPEP Chapter 1300: Allowance and Issue

Question 1

Notice of Allowance

Answer 1

3 months to pay issue fee, which cannot be extended but can be paid late

Question 2

Late Issue Fee

Answer 2

Must be unintentional
Petition+Fee under Rule 137

Question 3

When Issue Fee is Due

Answer 3

The formal drawings are also due, CANNOT be extended

Question 4

Reasons for Allowance

Answer 4

Examiner may provide reasons for allowance

Applicant can respond for FREE, not required

Question 5

Deferring Issuance

Answer 5

Petition to Defer Issuance is accepted AFTER ISSUE FEE IS PAID

Issue date will be deferred no more than ONE MONTH

Question 6

Withdrawal from Issue

Answer 6

1. Prior to issue fee payment

Petition + Fee by applicant

2. After issue fee paid

PTO can withdraw for mistake, violation of duty to disclose, unpatentability of claims, interference

Applicant can withdraw with petition + fee for abandonment to consider IDS in a RCE or continuining app

Question 7

Patent Term Extensions

Answer 7

For utility and plant apps filed on/after June 8, 1995 and before May 29, 2000

20 year term can be extended up to 5 years for delays in issuance

Extensions for successful appeals, pre-market regulatory review
Extension reduced for applicant not acting with due diligence and any time within 3 years of filing

Question 8

Patent Term Adjustment

Answer 8

For utility and plant patents filed on/after May 29, 2000

3 Categories:
1. Certain Administrative Delays - 14/4/4/4 Rule
2. Overall pendency more than 3 years
3. Delays due to interferences, secrecy, successful appeals

Can be reduced by applicant’s delays

Question 9

14/4/4/4 Rule

Answer 9

PTA

-14 months from initial filing to substantive actions
-4 months to reply to amendment/appeal
-4 months to act after Board decision
-4 months to print patent after issue fee paid

Question 10

Continuing app PTA

Answer 10

Not entitled to PTA in parent

Question 11

PTA Calculations

Answer 11

Done automatically by PTO

Can challenge via petition within 2 months of patent grant (extendable under Rule 136(a))

Can appeal after final PTA determination to the District Court within 180 days of PTA denial

Question 12

Provisional Rights

Answer 12

If application is published, the subsequent patent includes the right to a reasonable royalty for the time period between PUBLICATION and GRANT if:

• Owner of patent provided NOTICE of published app to entity
• Patent claims are substantially IDENTICAL to the claims in published app

Question 13

Publication Fees

Answer 13

Are charged after Notice of Allowance

Question 14

Reasons for Allowance are required in

Answer 14

A Re-examination

Question 15

Design Patent Term

Answer 15

15 years from issue

Question 16

Utility app with priority to prov term

Answer 16

20 years from filing date of non-prov

Question 17

Utility app with priority to foreign app

Answer 17

20 years from filing of utility

Question 18

PCT app that goes into US national phase term

Answer 18

20 years from PCT/IA filing

Question 19

Provisional and foreign contribution to patent term

Answer 19

Do NOT count in patent term

Question 20

Plant Patent Term

Answer 20

Same as utility