Under what circumstances will an application not be withdrawn from issue for an amendment entry?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

An application will not be withdrawn from issue for the entry of an amendment in certain circumstances. The MPEP specifies:

“The application will not be withdrawn from issue for the entry of an amendment that would reopen the prosecution if the Office action next preceding the notice of allowance closed the application to further amendment.”

This occurs when the previous Office action:

• Indicated the patentability of all claims, or
• Allowed some claims and finally rejected the remainder.

In these cases, further prosecution on the merits is considered a matter of grace, not right, as stated in Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11, 453 OG 213 (Comm’r Pat. 1935).