What’s the difference between withdrawing a patent term extension application and responding to an election requirement?

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.

There’s a significant difference between withdrawing a patent term extension application and responding to an election requirement. The MPEP 2764 notes:

“This is a different situation as compared to MPEP § 2761 where the withdrawal is in response to a requirement for election and not an express withdrawal under 37 CFR 1.770.”

Key differences include:

• An express withdrawal under 37 CFR 1.770 is a voluntary action by the applicant to completely withdraw the application.
• A response to an election requirement (MPEP 2761) involves choosing between different aspects of the application in response to an examiner’s request, not necessarily withdrawing the entire application.
• The procedures and consequences for these actions differ, including potential refund eligibility and the ability to reinstate the application.