Question 1

Can an applicant submit an Information Disclosure Statement (IDS) after a notice of allowance?

Accepted Answer

Yes, an applicant can submit an Information Disclosure Statement (IDS) after a notice of allowance. However, there are specific requirements and potential consequences. According to MPEP 1308.01:

"If an IDS is submitted after the mailing of a notice of allowance, it must comply with the requirements of 37 CFR 1.97(d)."

These requirements include:

Filing the IDS before or with payment of the issue fee
Including a statement specified in 37 CFR 1.97(e)
Paying the fee set forth in 37 CFR 1.17(p)

If the IDS meets these requirements, the examiner will consider the cited art and determine if it necessitates reopening prosecution.

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Question 2

What is the typical timeframe for receiving a Notice of Allowance after a Notice of Allowability?

Accepted Answer

The timeframe for receiving a Notice of Allowance (PTOL-85) after a Notice of Allowability (Form PTOL-37) is generally within three months. However, if you don't receive the Notice of Allowance within this period, it may be appropriate to make a status inquiry.

The MPEP states: A Notice of Allowability, Form PTOL-37, is routinely mailed in every application determined to be allowable. Thus, the mailing of a form PTOL-37 in addition to a formal Notice of Allowance and Fee(s) Due (PTOL-85) in all allowed applications would seem to obviate the need for status inquiries even as a precautionary measure where the applicant may believe the new application may have been passed to issue on the first examination. (MPEP 203.08)

However, the MPEP also notes an exception: As an exception, a status inquiry would be appropriate where a Notice of Allowance (PTOL-85) is not received within three months from receipt of form PTOL-37.

If you haven't received your Notice of Allowance after three months from receiving the Notice of Allowability, it's advisable to check the status of your application through Patent Center or contact the Application Assistance Unit.

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Question 3

What are the consequences of filing an IDS after the mailing of a notice of allowance?

Accepted Answer

What are the consequences of filing an IDS after the mailing of a notice of allowance?

Filing an Information Disclosure Statement (IDS) after the mailing of a notice of allowance can have significant consequences:

The application will be withdrawn from issue
The IDS will be considered by the examiner
If the examiner determines that the application is still allowable, the application may be returned to issue
If the examiner determines that one or more claims are no longer allowable, the applicant will be notified and the claims will be rejected

As stated in MPEP 609.04(b): "If an IDS is filed after the mailing date of a Notice of Allowance under 37 CFR 1.311, the application will be withdrawn from issue." This emphasizes the importance of timely IDS submission to avoid potential delays in patent issuance.

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Question 4

Are there additional fees for amendments after notice of allowance?

Accepted Answer

Yes, there may be additional fees for amendments after notice of allowance, particularly if the amendment adds claims. According to MPEP 714.16(c):

"If the amendment under 37 CFR 1.312 adds claims (total and independent) in excess of the number previously paid for, additional fees are required. The amendment is not considered by the examiner unless accompanied by the full fee required."

It's important to note that these fees are in addition to any fees already paid during the prosecution of the application. Applicants should consult the current USPTO fee schedule and MPEP 607 for specific fee information.

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Question 5

Can a previously paid issue fee be applied to a new Notice of Allowance?

Accepted Answer

Yes, a previously paid issue fee can be applied to a new Notice of Allowance under certain circumstances. According to MPEP 1308.01:

"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)."

This situation might occur when:

An application was withdrawn from issue after the issue fee was paid
Prosecution was reopened
The application was subsequently found allowable again

The MPEP further directs: "See MPEP § 1306 regarding request to reapply a previously paid issue fee toward the issue fee that is now due in the same application." This section provides more detailed guidance on the process of reapplying the fee.

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Question 6

What happens if an application is in condition for allowance but lacks a proper oath or declaration?

Accepted Answer

For applications filed on or after September 16, 2012, if an application is in condition for allowance but lacks a proper oath or declaration, the USPTO has a specific procedure. According to MPEP 1303:

"The Office will issue a 'Notice of Allowance and Fee(s) Due' (PTOL-85) together with a 'Notice of Allowability' (PTOL-37) including a 'Notice Requiring Inventor's Oath or Declaration' (PTOL-2306) requiring the applicant to file an oath or declaration in compliance with 37 CFR 1.63, or substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor, no later than the date of payment of the issue fee to avoid abandonment."

It's crucial to respond to this notice properly and timely to prevent the application from being abandoned.

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Question 7

What happens if a reissue application is not ready for publication as a patent at the time the Notice of Allowance is mailed?

Accepted Answer

If a reissue application is not ready for publication as a patent at the time the Notice of Allowance is mailed, the following process occurs:

The application is withdrawn from issue.
The application is returned to the examiner.
Appropriate corrective action is taken by the examiner.
A new Notice of Allowance is mailed when the application is ready for publication.

This process is outlined in MPEP 1456, which states: "If the reissue application is not ready for publication as a patent at the time the Notice of Allowance is mailed, the application must be withdrawn from issue, returned to the examiner, appropriate corrective action taken, and a new Notice of Allowance mailed when the application is ready for publication."

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Patent Law FAQ

This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.

MPEP 200 – Types and Status of Application; Benefit and Priority (1)

What is the typical timeframe for receiving a Notice of Allowance after a Notice of Allowability?

Patent Law (2)

What is the typical timeframe for receiving a Notice of Allowance after a Notice of Allowability?

What are the consequences of filing an IDS after the mailing of a notice of allowance?

What are the consequences of filing an IDS after the mailing of a notice of allowance?

Patent Procedure (2)

What is the typical timeframe for receiving a Notice of Allowance after a Notice of Allowability?

What are the consequences of filing an IDS after the mailing of a notice of allowance?

What are the consequences of filing an IDS after the mailing of a notice of allowance?