MPEP § 1308.01 — Rejection After Allowance (Annotated Rules)
§1308.01 Rejection After Allowance
This page consolidates and annotates all enforceable requirements under MPEP § 1308.01, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Rejection After Allowance
This section addresses Rejection After Allowance. Contains: 1 guidance statement, 3 permissions, and 1 other statement.
Key Rules
Rule 312 Amendment Approval
If the request to withdraw from issue is approved, the TC Director should withdraw the application from issue as explained in MPEP § 1308. After the TC Director has withdrawn the application from issue, the examiner will prepare an Office action stating that the application has been withdrawn from issue, citing any new reference(s), and rejecting the claims based upon the approved new grounds of rejection. See MPEP § 706.07 for guidance on making this rejection final.
If the request to withdraw from issue is approved, the TC Director should withdraw the application from issue as explained in MPEP § 1308. After the TC Director has withdrawn the application from issue, the examiner will prepare an Office action stating that the application has been withdrawn from issue, citing any new reference(s), and rejecting the claims based upon the approved new grounds of rejection. See MPEP § 706.07 for guidance on making this rejection final.
Reopening Prosecution After Allowance
If the issue fee has already been paid and prosecution is reopened, the applicant may request a refund or request that the fee be credited to a deposit account. However, applicant may wait until the application is either found allowable or held abandoned. If allowed, upon receipt of a new Notice of Allowance, applicant may request that the previously submitted issue fee be applied (the Notice of Allowance will reflect an issue fee amount that is due and the issue fee that was previously paid). See MPEP § 1306 regarding request to reapply a previously paid issue fee toward the issue fee that is now due in the same application. If abandoned, applicant may request refund or credit to a deposit account.
Issue Fee Amount
If the issue fee has already been paid and prosecution is reopened, the applicant may request a refund or request that the fee be credited to a deposit account. However, applicant may wait until the application is either found allowable or held abandoned. If allowed, upon receipt of a new Notice of Allowance, applicant may request that the previously submitted issue fee be applied (the Notice of Allowance will reflect an issue fee amount that is due and the issue fee that was previously paid). See MPEP § 1306 regarding request to reapply a previously paid issue fee toward the issue fee that is now due in the same application. If abandoned, applicant may request refund or credit to a deposit account.
Fee Payment Methods
If the issue fee has already been paid and prosecution is reopened, the applicant may request a refund or request that the fee be credited to a deposit account. However, applicant may wait until the application is either found allowable or held abandoned. If allowed, upon receipt of a new Notice of Allowance, applicant may request that the previously submitted issue fee be applied (the Notice of Allowance will reflect an issue fee amount that is due and the issue fee that was previously paid). See MPEP § 1306 regarding request to reapply a previously paid issue fee toward the issue fee that is now due in the same application. If abandoned, applicant may request refund or credit to a deposit account.
Citations
| Primary topic | Citation |
|---|---|
| Fee Payment Methods Issue Fee Amount Reopening Prosecution After Allowance | MPEP § 1306 |
| Rule 312 Amendment Approval | MPEP § 1308 |
| – | MPEP § 706.04 |
| Rule 312 Amendment Approval | MPEP § 706.07 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 1308.01 — Rejection After Allowance
Source: USPTO1308.01 Rejection After Allowance [R-10.2019]
A claim noted as allowable shall thereafter be rejected only with the approval of the primary examiner. Great care should be exercised in authorizing such rejection. See MPEP § 706.04.
When a new rejection is discovered, which obviously is applicable to one or more of the allowed claims in an application in issue, a memorandum is addressed to the Technology Center (TC) Director, requesting that the application be withdrawn from issue for the purpose of applying the new grounds of rejection. This memorandum should cite the rationale for the new rejection, including any new reference(s), and, if need be, briefly state its application. If the examiner’s proposed action is not approved, the memorandum requesting withdrawal from issue should not be placed in the file.
If the request to withdraw from issue is approved, the TC Director should withdraw the application from issue as explained in MPEP § 1308. After the TC Director has withdrawn the application from issue, the examiner will prepare an Office action stating that the application has been withdrawn from issue, citing any new reference(s), and rejecting the claims based upon the approved new grounds of rejection. See MPEP § 706.07 for guidance on making this rejection final.
If the issue fee has already been paid and prosecution is reopened, the applicant may request a refund or request that the fee be credited to a deposit account. However, applicant may wait until the application is either found allowable or held abandoned. If allowed, upon receipt of a new Notice of Allowance, applicant may request that the previously submitted issue fee be applied (the Notice of Allowance will reflect an issue fee amount that is due and the issue fee that was previously paid). See MPEP § 1306 regarding request to reapply a previously paid issue fee toward the issue fee that is now due in the same application. If abandoned, applicant may request refund or credit to a deposit account.