What happens if the issue fee has been paid when prosecution is reopened?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs 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. If the issue fee has been paid and prosecution is reopened due to a rejection after allowance, the applicant has several options. According to MPEP 1308.01 : “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.” The applicant can choose to: Request an immediate refund Request the fee be credited to a deposit account Wait for the final outcome of the reopened prosecution If the application is subsequently allowed, the applicant can request that the previously paid issue fee be applied to the new Notice of Allowance. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Previously Paid Issue Fee Can Be Applied to New Allowance MPEP 1308.01 Permitted Previously Paid Issue Fee Can Be Applied Again MPEP 1308 Previously Paid Issue Fee Can Be Reapplied If Application Is Again Found Allowable After Withdrawal From Issue MPEP 1308 Refund or Credit for Reopened Prosecution After Issue Fee Paid MPEP 1308.01 Permitted Request for Refund or Fee Credit Upon Abandonment MPEP 1308.01 Permitted Notice of Withdrawal Required for Paid Issue Fees MPEP 1308 Required Notice of Withdrawal From Issue When Fee Paid MPEP 1308 Required Continuing Application Before Issue Fee Due MPEP 1308 Permitted Payment of Issue Fee Does Not Avoid Publication MPEP 1308 Prohibited RCE Waives Issue Fee Requirement MPEP 1308 Other Related FAQs 5 FAQs Collapse Can a previously paid issue fee be applied to a new Notice of Allowance? What actions does an examiner take after an application is withdrawn from issue? ...